The Complainant is Uni-cleaner Europa ApS, Denmark, represented by Thomas Martin LLP, Denmark.
The Registrant is Miltek Environmental Equipment Limited, Ireland.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2021, via email. On November 12, 2021, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On November 12, 2021, IEDR transmitted by email to the Center its verification response confirming that the Registrant is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceeding commenced on December 14, 2021. In accordance with the Rules, paragraph 5.1, the due date for Response was January 11, 2022. On January 10, 2022, the Center received an email communication from the Registrant requesting an extension of the due date for Response. The due date for Response was subsequently extended to January 21, 2022, but the Registrant did not submit any response. Accordingly, the Center informed the Parties the commencement of Panel Appointment process on January 27, 2022.
The Center appointed Adam Taylor as the sole panelist in this matter on February 1, 2022. 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 BackgroundThe Complainant is part of a group of companies that supplies waste handling equipment under the name “Mil-tek”.
The Complainant owns a figurative European Union (EU) trade mark No. 5729652 for the stylised word “Mil-tek” plus device, filed on February 19, 2007, registered on February 28, 2008, in classes 3, 7 and 22.
The Complainant has licensed another group company, Mil-tek Denmark A/S, to use and sublicense the Complainant’s trade mark in connection with the supply of waste handling equipment. References to “the Complainant” below include this company unless otherwise stated.
The Complainant owns various domain names containing the word “miltek” including
The disputed domain name was registered on March 18, 2003.
On October 31, 2003, the Complainant entered into a franchise agreement (“the Franchise Agreement”) with an Irish company related to the Registrant1 called Mil-tek South East Ltd (“MSE”) The Franchise Agreement contained a clause stating that MSE was entitled to use the name “Mil-tek” and any associated trade marks and logos solely for the purpose of marketing the Complainant’s products.
The Franchise Agreement was terminated on June 30, 2018.
As of February 1, 2021, the Registrant used the disputed domain name for a website that was branded with the Complainant’s logo and offered the Complainant’s products for sale, as well as, according to the Complainant, those of the Complainant’s competitors.
On February 25, 2021, the Complainant sent a cease and desist letter to the Registrant. The Registrant did not respond.
As of September 29, 2021, the disputed domain name resolved to a website branded “GREEN EQUIPMENT”, which stated that, as of 2021, the Registrant was trading as “Green Equipment” and that “… we still stock used Mil-tek machines for sale or rent, as well as parts, service, consumables and other machines from brands such as Orwak, Bramidan, etc.”. The site invited users to visit the new Green Equipment website.
5. Parties’ Contentions A. ComplainantThe following is a summary of the Complainant’s contentions.
The Complainant’s trade mark is a protected Identifier for the purposes of the IEDR Policy.
The Registrant has no rights in law or legitimate interests in respect of the disputed domain name.
The Registrant is not a party to any contracts with the Complainant and neither the Registrant nor MSE have any licence to use the Complainant’s marks. The Franchise Agreement did not entitle MSE to transfer any right to use the Complainant’s marks to the Registrant or anyone else.
Any legal right of MSE to register and use the disputed domain name in connection with marketing and sale of the Complainant’s products ended on termination of the Franchise Agreement. In any case, the Franchise Agreement could not have provided any legitimate interest to the Registrant to register the disputed domain name or use it to conflict with, or infringe, the Complainant’s trade mark.
The Registrant cannot claim any legitimate interest based on the fact that the disputed domain name includes the word “Miltek”, because rights based solely on a registrant’s own name can only be claimed by individuals with respect to personal names, not to legal entities with respect to legal names assumed for commercial purposes.
The disputed domain name is being used in bad faith.
Following receipt of the Complainant’s cease and desist letter, instead of responding to it, the Registrant renewed the disputed domain name and also used it to direct visitors to a website that offered products competing with those of the Complainant.
Accordingly, the Registrant is using the disputed domain name to attempt to attract Internet users to a competing website by creating confusion with the Complainant’s trade mark.
B. RegistrantThe Registrant did not reply to the Complainant’s contentions, despite its request for an extension of the due date for Response.
6. Discussion and FindingsUnder paragraph 1.1 of the IEDR Policy, the Complainant is required to prove that:
- the disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights;
- the Registrant has no rights in law or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered or is being used in bad faith.
A. Identical or Misleadingly SimilarUnder paragraph 1.3.1 of the IEDR Policy, “protected identifiers” include “trade and service marks protected in the island of Ireland”.
The Complainant owns a figurative EU trade mark consisting of the stylised word “Mil-tek” plus device. This has effect within the island of Ireland and therefore constitutes a protected identifier.
The disputed domain name is misleadingly similar to the Complainant’s trade mark as it comprises the textual element of the Complainant’s mark, excluding the hyphen. Section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)2 states that assessment of confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark and that design or figurative/stylised elements which are incapable of representation in domain names are largely disregarded.
The country code Top-Level Domain “.ie”, is also excluded from this comparison.
The Panel therefore finds that the Complainant has established the first element of paragraph 1.1 of the IEDR Policy.
B. Rights in Law or Legitimate InterestsAs explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that a respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Registrant to use its trade mark.
Paragraph 3.1 of the IEDR Policy gives examples of circumstances which, if proved, suffice to demonstrate that a registrant possesses rights or legitimate interests in the disputed domain name.
As to paragraph 3.1.1 of the IEDR Policy, the Registrant is reselling the Complainant’s own goods. The consensus view of UDRP panels – as expressed in section 2.8 of WIPO Overview 3.0 – is that to establish a good faith offering in such circumstances, a respondent must comply with certain conditions (the “Oki Data requirements”).
In this case, the Registrant has failed to comply with the Oki Data requirements to use the site to sell only the trademarked goods or services and to accurately and prominently disclose the Registrant’s relationship with the trade mark holder. Indeed, the February 2021 version of the Registrant’s site, which was branded with the Complainant’s logo, plainly set out to impersonate the Complainant.
The Registrant has not appeared in this proceeding to rely on the Franchise Agreement but, even if it had done so, it is difficult to see how the Franchise Agreement could have benefitted the Registrant given that: (1) the Registrant was not itself a party to the agreement; (2) the Registrant continued using the disputed domain name after the Franchise Agreement ended in 2018; and (3) it did so in a manner that plainly conflicted with the Oki Data requirements – as well as with the obligations in the Franchise Agreement itself to use the name “Mil-tek” and any associated trade marks and logos solely for the purpose of marketing the Complainant’s products.
Furthermore, UDRP panels have found that domain names identical to a complainant’s trade mark – which is effectively the case here – carry a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.
Accordingly, the Panel considers that the Registrant’s use of the disputed domain name cannot be said to have been in good faith for the purposes of paragraph 3.1.1 of the IEDR Policy.
Nor is there any evidence that paragraphs 3.1.2 or 3.1.3 of the IEDR Policy apply in the circumstances of this case. As the Complainant rightly observes, the Registrant’s use of “Miltek” in its corporate name does not assist it in connection with paragraph 3.1.2 of the IEDR Policy, which applies only where the domain name corresponds with “the personal name or pseudonym” of the Registrant.
However, the Panel notes that the factors listed within paragraph 3.1 of the IEDR Policy are without limitation. In the Panel’s view, the question arises as to whether the Registrant’s corporate name, Miltek Environmental Equipment Limited, could point towards rights in law or legitimate interests of the Registrant in the disputed domain name. However, in order to benefit from such rights or legitimate interests, the use of the disputed domain name must not have been deceitful or sought to take advantage unfairly of its similarity with third-party trade mark rights. Whereas the Registrant has used the disputed domain name for a website that was branded with the Complainant’s logo and offered the Complainant’s products for sale, and, according to the Complainant, those of the Complainant’s competitors.
In addition, the disputed domain name later resolved to a website branded “GREEN EQUIPMENT”, which stated that, as of 2021, the Registrant was trading as “Green Equipment” and that “… we still stock used Mil-tek machines for sale or rent, as well as parts, service, consumables and other machines from brands such as Orwak, Bramidan, etc.”. Such use of the disputed domain name does not amount to a good faith offering of products under the IEDR Policy, and in the circumstances of this case, the Registrant’s corporate name does not constitute rights or legitimate interests in the disputed domain name on the part of the Registrant.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Registrant.
For the above reasons, the Panel concludes that the Complainant has established the second element of paragraph 1.1 of the IEDR Policy.
C. Registered or Used in Bad FaithUnder paragraph 1.1 of the IEDR Policy, the Complainant is required to establish either registration or use in bad faith.
As explained above, the Panel considers that the Registrant has used a domain name that is likely to make a misrepresentation to users that any associated website is connected with the Complainant.
Furthermore, as also discussed above, the Registrant has failed to comply with the Oki Data requirements in that it used the disputed domain name for a website that offered and/or promoted competing goods or services and did not accurately and prominently disclose the Registrant’s relationship with the trade mark holder.
The Panel concludes from the foregoing that the Registrant has used the disputed domain name in bad faith in accordance with paragraph 2.1.4 of the IEDR Policy. The Registrant has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s protected identifier.
For the above reasons, the Panel concludes that the Complainant has established the third element of paragraph 1.1 of the IEDR Policy.
7. DecisionFor all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain name
Adam Taylor
Sole Panelist
Dated: February 21, 2022
1 The Panel notes that the address given for MSE in the Franchise Agreement was the same as that used by the Registrant to register the disputed domain name.
2 Although WIPO Overview 3.0 is directed to the UDRP, given the similarity between the UDRP and the Policy, it is appropriate to have regard to these principles except to the extent that the Policy diverges from the UDRP.