ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION ProfilGruppen Extrusions AB v. Mitra Mohammadi West Case No. D2024-4043 1. The Parties The Complainant is ProfilGruppen Extrusions AB, Sweden, represented by Abion AB, Sweden. The Respondent is Mitra Mohammadi West, United States of America. 2. The Domain Name and Registrar The disputed domain name
is registered with Realtime Register B.V. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2024. On October 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 3, 2024, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 3, 2024, 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 October 4, 2024. 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 October 4, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2024.
page 2 The Center appointed David Stone as the sole panelist in this matter on October 31, 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. 4. Factual Background The Complainant is a long-established Swedish company, which develops and manufactures customized aluminum extrusions and components. The Complainant has an annual turnover of over USD 200 million. Among others, the Complainant owns the following registered trademarks (the “Marks”): - PROFILGRUPPEN: Swedish trademark registration no. 328152 registered on August 28, 1998 in international classes 6, 7, 37 and 40; and - : European Union trademark registration no. 018356377 registered on May 6, 2021 in international classes 6, 40 and 42. The Complainant is also the owner of the domain name registered on December 11, 1996. The disputed domain name was created on August 29, 2024. At the time of filing the Complaint and as of the date of this decision, the disputed domain name was parked with Hostinger. The Complainant sent a cease-and-desist letter to the Respondent on September 23, 2024. 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 contends that, under the first element, the disputed domain name is at least confusingly similar to the Complainant’s Marks as the only difference between them is that the letters “I” and “L” have switched positions. The Complainant contends that, under the second element, the Respondent has not been authorized by the Complainant to use the Marks and does not own any trademark rights in the name “PROFLIGRUPPEN”. There is no evidence that the Respondent is commonly known by the disputed domain name and no evidence of any legitimate use of the disputed domain name for any activity or business related to “PROFLIGRUPPEN”. The Complainant contends that, under the third element, given the Complainant is a well-known company and the Marks have a substantial and widespread reputation, it is highly unlikely that the Respondent chose the confusingly similar disputed domain name without knowledge of the Complainant’s activities and Marks. The Complainant also contends that Mail Exchange servers have been activated for the disputed domain name and that this suggests there is a critical risk of the Respondent causing serious and irreparable harm to the Complainant’s reputation. The Respondent did not reply to the Complainant’s cease and desist letter. B. Respondent The Respondent did not reply to the Complainant’s contentions.
page 3 6. Discussion and Findings 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 Mark 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. Panels have found that domain names which consist of common, obvious, or intentional misspellings of trademarks are confusingly similar to the relevant mark. Examples of such typos include: (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters, (iii) the use of different letters that appear similar in different fonts, and (iv) the inversion of letters and numbers. WIPO Overview 3.0, section 1.9. The Panel finds that the Mark is recognizable within the disputed domain name despite the inversion of “I” and “L” because the disputed domain name contains sufficiently recognizable aspects of the relevant mark. 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. 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. 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.
page 4 In the present case, the Panel notes that the Complainant is well established, and that the Respondent has registered the disputed domain name, which comprises a subtle misspelling of the Marks alongside the same generic Top-Level Domain as a domain used by the Complainant. The disputed domain name is confusingly similar to the Marks for the reasons already given. 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. The Panel finds that the Respondent’s use of the misspelling in the disputed domain name signals an intention on the part of the Respondent to confuse users seeking or expecting the Complainant. The disputed domain name resolves to a parked page. Panels have also found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. The Panel notes the reputation of the Complainant’s Marks, and the composition of the disputed domain name, and finds that in the circumstances of this case the present passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. Further, the Respondent has not attempted to refute any of the Complainant’s contentions, which casts additional doubt on the nature of its conduct. WIPO Overview 3.0, section 3.2.1. 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. /David Stone/ David Stone Sole Panelist Date: November 14, 2024
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