The Complainant is Indutrade AB, Sweden, represented by Ports Group AB, Sweden.
The Respondent is Caleb Love, Caleb Love, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2021. On June 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 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 the Complainant on June 9, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 12, 2021. The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on June 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2021. The Center appointed Assen Alexiev as the sole panelist in this matter on August 9, 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 The Complainant is an international industrial group that develops and acquires companies with high-tech know-how. The Complainant is the owner of the following trademark registrations for the sign “INDUTRADE” (the “INDUTRADE trademark”): − the Benelux trademark INDUTRADE with registration No. 653771, filed on December 12, 1999 for services in International Classes 35, 39, 40 and 42; The disputed domain name was registered on March 24, 2021. It is currently inactive. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is confusingly similar to its INDUTRADE trademark, because the disputed domain name contains the sequence “indutrade-se”, where “indutrade” is identical to the INDUTRADE trademark, while the “se” element indicates a connection with Sweden. The INDUTRADE trademark is thus clearly recognizable within the disputed domain name. According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because it has no rights in the INDUTRADE trademark and the Complainant has not given the Respondent any permission to use it as a domain name. The Complainant maintains that the usage of the disputed domain name suggests that it was registered with the INDUTRADE trademark in mind to commercially profit from misleading consumers searching for information about the Complainant’s business. The Complainant further states that there is no evidence that the Respondent has been commonly known by the disputed domain name or is making a legitimate noncommercial or fair use of it. The Complainant contends that the disputed domain name was registered and is being used in bad faith. It notes that its INDUTRADE trademark was registered and has been used long before the disputed domain name was registered, and the Respondent must have had knowledge of this trademark and of the Complainant’s business when registering the disputed domain name. The Complainant submits that the disputed domain name was registered to commercially profit from the likelihood of confusion between the INDUTRADE trademark and the disputed domain name in order to draw traffic to the associated website. The fact that the disputed domain name includes the Complainant’s trademark misleads visitors to believe that the Respondent is the owner of the trademark and thus it takes advantage of the trademark’s goodwill for commercial gain. The Complainant also notes that the Respondent has not taken steps to prevent confusion of Internet users by making clear that it is not the owner of the INDUTRADE trademark. The Complainant states that on April 22, 2021 it sent a cease-and-desist letter to the Respondent, but did not receive a reply. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the 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. By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”. The Respondent has however not submitted a Response and has not disputed the Complainant’s contentions and evidence in this proceeding. A. Identical or Confusingly Similar The Complainant has provided evidence and has thus established its rights in the INDUTRADE trademark for the purposes of the Policy. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the Top-Level Domain (“TLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” TLD section of the disputed domain name. The disputed domain name incorporates the INDUTRADE trademark entirely in combination with the element “se”, which is an abbreviated indication for the geographical term “Sweden”, where the Complainant is based. The INDUTRADE trademark is easily recognizable in the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See sections 1.7 and 1.8 of the WIPO Overview 3.0. In view of the above, the Panel finds that the disputed domain name is confusingly similar to the INDUTRADE trademark in which the Complainant has rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, because it has no trademark rights in it and has not been authorized by the Complainant to use the INDUTRADE trademark, and because the Respondent is not commonly known by the disputed domain name and is not making a legitimate noncommercial or fair use of it. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not submitted a Response and has not alleged that it has rights or legitimate interests in the disputed domain name and has not disputed the Complainants’ allegations in this proceeding. The disputed domain name is confusingly similar to the INDUTRADE trademark and contains the element “se”, which is an indication for Sweden, where the Complainant is based, so the combination of these elements creates a strong connection to the Complainant. The Respondent has not provided a plausible explanation of its choice of the disputed domain name, and it is currently inactive. In view of the above, and in the lack of any contrary evidence, the Panel accepts that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant and of the INDUTRADE trademark, has registered the disputed domain name in an attempt to take advantage of this goodwill to attract Internet users by creating a mistaken impression in them that the disputed domain name is somehow related to the Complainant. In the lack of any authorization by the Complainant, such conduct does not appear to be giving rise to rights or legitimate interests of the Respondent in the disputed domain name. Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” The disputed domain name incorporates INDUTRADE trademark in combination with the element “se”, which refers to Sweden – the country where the Complainant is based. This creates a strong connection to the Complainant and a risk that Internet users may be led to wrongly believe that the disputed domain name is related to the Complainant. The Respondent has not submitted any explanation about the registration of the disputed domain name and about its plans to use it, and in view of its composition, the Panel is not aware of any use of the disputed domain name that would be legitimate unless authorized by the Complainant. Taking the above into account, the Panel accepts that it is more likely than not that the Respondent has registered the disputed domain name with knowledge of the Complainant and targeting the INDUTRADE trademark to take advantage of the similarity of the disputed domain name with the INDUTRADE trademark. This supports a finding of bad faith registration of the disputed domain name under the Policy. The disputed domain name is inactive. As discussed in section 3.3 of the WIPO Overview 3.0, from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. The Panel finds that several of these factors are present in the case at hand. The Respondent has failed to submit a Response and to provide any evidence of actual or contemplated good-faith use, and as discussed above, in view of the composition of the disputed domain name, consisting of the Complainant’s INDUTRADE trademark and an indication for the country where the Complainant is based, any good faith use to which the disputed domain name may be put without the Complainant’s consent appears implausible. Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith. 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 Assen Alexiev
− the European Union trademark INDUTRADE with registration No. 015067861, registered on May 18, 2016 for services in International Classes 35, 36 and 42; and
− the United Kingdom trademark INDUTRADE with registration No. UK00915067861 registered on May 18, 2016 for services in International Classes 35, 36 and 42.
Sole Panelist
Date: August 26, 2021
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