Complainant is Somar Corporation, Japan, represented by KUBOTA, Japan.
Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / BV intergroup trading, bvintergrouptrading, Netherlands. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2021. On April 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 23, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 28, 2021. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 21, 2021. The Center appointed Frederick M. Abbott as the sole panelist in this matter on June 2, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background Complainant is the owner of registrations for the word trademark SOMAR on the trademark register of the Japan Patent Office (“JPO”), including registration number 2638436, registration dated March 31, 1994, in international classes (ICs) 1 and 17, covering plastics and plastic semi-worked products, as further specified; registration number 3148753, registration dated April 30, 1996, in IC 42, covering, inter alia, examination of industrial use antiseptics and fungicides, and; registration number 3282731, registration dated April 18, 1997, in IC 37, covering, inter alia, maintenance or repair of coating machines. Complainant is owner of registration at the European Union Intellectual Property Office (“EUIPO”) for the word trademark SOMAR, registration number 018118610, registration dated February 5, 2020, in ICs 1, 2, 3, and 17, covering, inter alia, industrial chemicals and plastics, paints, soaps and plastic semi-worked products. Complainant is owner of registration at the United Kingdom Intellectual Property Office (“UKIPO”) for the word trademark SOMAR, registration number UK00918118610, registration dated February 5, 2020, in ICs 1, 2, 3, and 17. Complainant was established in Japan in 1948, and adopted the company name Somar Corporation in 1984. Complainant manufactures and distributes fine chemical products, resin products and coating products. Complainant owns affiliated entities in a number of countries, including in the Netherlands. Complainant’s affiliate in the Netherlands is named “Somar Europe B.V.”. According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the disputed domain name was registered by Respondent on July 29, 2020. Respondent has used the disputed domain name to direct Internet users to a website headed with the term Somar EuropeBV, and listing an address in Amsterdam identical to that of Complainant’s Dutch affiliate. A telephone number with a Dutch country-code is included on the home page of the website. The home page includes photographs of various fine chemical products (including, e.g., detergent chemicals) that are said to be available from Respondent, and provides information concerning production volumes. The English-language website includes a number of syntax errors that would not be typical of a substantial international business organization. The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties’ Contentions A. Complainant Complainant alleges that it owns rights in the trademark SOMAR and that the disputed domain name is confusingly similar to that trademark. Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not making a legitimate noncommercial or fair use of the disputed domain name; (2) Respondent is not an authorized distributor, reseller or promotional partner of Complainant; (3) Respondent’s website does not disclaim affiliation with Complainant, and; (4) the only purpose of Respondent’s website is to deceive relevant consumers otherwise seeking Complainant and its products. Complainant argues that the disputed domain name was registered and is being used in bad faith because: (1) Respondent must have known of Complainant’s trademark rights when it registered and used the disputed domain name; (2) by using Complainant’s trademark and the actual name of Complainant’s Dutch affiliate on its website Respondent intentionally attempted to attract Internet users for commercial gain by creating confusion as to the source, sponsorship, affiliation or endorsement by Complainant of Respondent’s website; (3) Respondent’s website does not disclaim affiliation with Complainant, and; (4) Respondent’s use of a privacy protection shield may constitute a factor indicating bad faith. Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)). The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. Courier delivery to Respondent was successfully completed to the address provided in Respondent’s record of registration. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and (ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar Complainant has provided evidence of rights in the trademark SOMAR including by registration at the JPO, EUIPO and UKIPO, and through use in commerce. See Factual Background, supra. Respondent has not contested Complainant’s assertion of trademark rights. The Panel determines that Complainant holds rights in the trademark SOMAR. The disputed domain name fully incorporates Complainant’s distinctive trademark, adding the term “europebv” and the “.com” Top-Level Domain (“TLD”). It is sufficient for a finding of confusing similarity in the circumstances of this proceeding that Complainant’s trademark is readily identifiable in the disputed domain name. The fact that the disputed domain name adds terms that are identical to those used in the name of Complainant’s Dutch affiliate does not interfere with a finding of confusing similarity. The Panel determines that Complainant owns rights in the trademark SOMAR and that the disputed domain name is confusingly similar to that trademark. B. Rights or Legitimate Interests Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5.A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not replied to the Complaint, and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests. Respondent’s use of the disputed domain name to direct Internet users to a website intentionally designed to convey the impression that it is owned, operated and/or affiliated in some manner with Complainant when the facts are to the contrary does not establish rights or legitimate interests in the disputed domain name in favor of Respondent. Respondent’s use of the disputed domain name does not otherwise manifest rights or legitimate interests. The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”. These include that, “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location”. Respondent has created a website (associated with the disputed domain name) that is deliberately designed to convey the impression that it is operated by or otherwise affiliated with Complainant. Presumably Internet users that contact Respondent through the information provided on the website would be induced to purchase products from Respondent believing that the products are supplied by Complainant. There is no information before the Panel regarding whether any products might be delivered by Respondent (even though not supplied by Complainant), or whether the intention of Respondent is only to solicit the transfer of funds from deceived purchasers to Respondent. In either case, Respondent has used Complainant’s trademark in the disputed domain name intentionally for purposes of commercial gain to establish Internet user confusion regarding Complainant as source, sponsor, affiliate or endorser of the website operated by Respondent. Respondent was manifestly aware of Complainant’s rights in its trademark when it registered the disputed domain name and undertook its deceptive course of action. Such use of Complainant’s trademark in the disputed domain name constitutes bad faith within the meaning of the Policy. The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, Frederick M. Abbott
Sole Panelist
Date: June 9, 2021
Full & Egal Universal Law Academy