ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Alimak Group Management AB v. po wah ma Case No. D2023-4679 1. The Parties The Complainant is Alimak Group Management AB, Sweden, represented by Abion AB, Sweden. The Respondent is po wah ma, Australia. 2. The Domain Name and Registrar The disputed domain name
is registered with Launchpad.com Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2023. On November 10, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing additional contact details. The Center sent an email communication to the Complainant on November 15, 2023, 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 amendment to the Complaint on November 16, 2023. 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 the Respondent of the Complaint, and the proceedings commenced on November 24, 2023. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2023. The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on January 11, 2024. 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.
page 2 4. Factual Background The Complainant is a global provider of sustainable vertical access, founded in Sweden in 1948. The Complainant is the owner of several trademark rights on ALIMAK, covering goods and services related to facade access, construction, industrial, wind and height safety and productivity solutions, as follows: Australian trademark registration No. 1147003 for ALIMAK HEK & design, registered on August 16, 2005, in classes 7, 37 and 42; Australian trademark registration No. 262493 for ALIMAK, in class 7, registered on October 6, 1972; International trademark registration No. 1125691 for ALIMAK, in class 7, registered on February 13, 2012. The Complainant is the owner of the domain name , registered on March 26, 2015. The Respondent was identified as po wah ma, from Australia. The disputed domain name was registered on September 22, 2023 and resolves to an inactive website. However, the Respondent has communicated via an e-mail address created with the disputed domain name with the Complainant’s local distributor in Panama, impersonating an employee of the Complainant, requesting payment with fake documents, as evidenced in Annex 5 (email dated September 22, 2023). 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. The Complainant argues that the disputed domain name is confusingly similar to the trademarks ALIMAK. The disputed domain name resolves to an inactive website. However, e-mails were sent, impersonating the Complainant, requesting payment with fake documents. . There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. That being the case, the Complainant finds that the disputed domain name is used to take unfair advantage of the Complainant’s rights for commercial gain, since Internet users and the Complainant’s clients would inevitably associate the content of the e-mails related to the disputed domain name with the Complainant. Moreover, the Complainant stresses that the Respondent is not commonly known by the disputed domain name or “alimaka”. According to the Complainant, it has prior rights over the trademarks ALIMAK, and has not authorized the registration and use of the disputed domain name. The Complainant also argues that the Respondent was aware of the Complainant’s rights and has clearly registered the disputed domain name to target the Complainant’s trademark, and that the registration of the disputed domain name was conducted in bad faith.
page 3 The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied: (i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; and (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. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
page 4 Having reviewed the available record, the Panel finds 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 rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Panels have held that the use of a domain name for illegal activity as applicable to this case: phishing, impersonation/passing off can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In the present case, the Panel notes that at the time the disputed domain name was registered, the Respondent was clearly aware of the ALIMAK trademarks as the Complainant’s trademark registrations as well as its domain name predate the registration date of the disputed domain name. The Panel notes that the Respondent sent fraudulent emails to the Complainant’s distributors impersonating the Complainant and asking for undue payment. Panels have held that the use of a domain name for illegal activity, here, sending fraudulent emails, phishing, impersonation/passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. Furthermore, the composition of the disputed domain name including the term “group” further increases the risk of affiliation with the Complainant and the Complainant’s prior domain name, which also contains the word “group”, and clearly indicates targeting of the Complainant. The Panel can also draw adverse inferences from the Respondent’s failure to take part in the present proceeding. WIPO Overview 3.0 at section 4.3. The Panel finds that the Complainant has established the third element 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 be transferred to the Complainant. /Mario Soerensen Garcia/ Mario Soerensen Garcia Sole Panelist Date: January 25, 2024
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