The Complainant is Linde Aktiengesellschaft, Germany, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is IT Admin, Yellow Network Limited, United Kingdom. 2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2019. On the same day, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On October 14, 2019, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”). In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 15, 2019. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was November 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2019. The Center appointed Luca Barbero as the sole panelist in this matter on December 3, 2019. 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 ADR Rules, Paragraph B(5). 4. Factual Background The Complainant is a subsidiary of Linde Public Limited, a United Kingdom-based multinational industrial gas and chemical engineering company, and the holding company of BOC Limited (hereinafter, “BOC”), a company founded in 1886 and providing industrial, medical and specialty gases in the United Kingdom and Ireland. BOC is also the owner of the trademark ENTONOX, which is used to identify a ready-to-use medical gas mixture, developed in 1961, that consists of 50% nitrous oxide and 50% oxygen and can be used in all situations where analgesia and sedation with rapid onset and offset is sought. The Complainant is the owner of the Canadian trademark registration No. TMA148779 for ENTONOX (word mark), registered on January 6, 1967. BOC is the owner of several trademark registrations for ENTONOX, including the following, as per trademark certificates submitted as annexes to the Complaint: - European Union trademark registration No. 005414371 for ENTONOX (word mark), registered on October 18, 2007, in international classes 5 and 10; - International trademark registration No. 1426769 for ENTONOX (word mark), registered on August 8, 2018, in international classes 5 and 10; - New Zealand trademark registration No. 76979 for ENTONOX (word mark), registered on September 28, 1965, in international class 5. The Complainant is also the owner of the domain name The disputed domain name The Complainant contends that disputed domain name With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is not commonly known by the disputed domain name and that it has in no way licensed, authorized or permitted the Respondent to register a domain name which incorporates the trademark ENTONOX. Moreover, the Complainant highlights that the disputed domain name is being used to redirect Internet users to a website featuring links to third party websites, some of which are direct competitors of the Complainant and that, in doing so, the Respondent is presumably gaining pay-per-click revenues. In view of this and of the fact that the disputed domain name is also being offered for sale for an amount well in excess of the documented out-of-pockets costs, the Complainant asserts that the Respondent is not using the disputed domain name to provide a bona fide offering of goods or services, and that it has not made a legitimate noncommercial or fair use of the disputed domain name. Lastly, the Complainant points out that, not only was the disputed domain name registered on October 25, 2011, which is significantly after the date of registration of the Complainant’s registration of the domain name With reference to the circumstances evidencing bad faith, the Complainant asserts that by registering the disputed domain name, confusingly similar to both the trademark ENTONOX and the Complainant’s domain name Moreover, the Complainant underlines that, at the time of registration of the disputed domain name, the Respondent knew or at least should have known, of the existence of the Complainant’s trademark and that, generally speaking, the registration of domain names containing well-known trademarks in itself constitutes bad faith. The Complainant asserts that, by creating a likelihood of confusion between the Complainant’s trademark and the disputed domain name, leading to misperceptions as to the source, sponsorship, affiliation or endorsement of its website, the Respondent intentionally attempted to attract Internet users to its website, with the intent to capitalize on the fame and goodwill of the Complainant’s trademark in order to increase traffic to its website for the Respondent’s own financial gain. The Complainant further notes that the Respondent has also ignored the Complainant’s multiple attempts to resolve the dispute outside the present administrative proceeding. The Complainant concludes that, considering all the above circumstances, it is more than likely that the Respondent knew and targeted the Complainant’s trademark and that, accordingly, the Respondent should be found to have registered and used the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to Article 22(1)(a) of the Commission Regulation (EC) No. 874/2004 (hereinafter, the “Regulation”), an ADR procedure may be initiated by any party where the registration is speculative or abusive within the meaning of Article 21. Article 21(1) of the Regulation, provides that a registered domain name shall be subject to revocation where it is identical or confusingly similar to a name in respect of which a right is recognized or established by national and/or Community law and where it: (a) has been registered by its holder without rights or legitimate interests in the name; or (b) has been registered or is being used in bad faith. Article 22(11) of the Regulation states that “the ADR panel shall decide that the domain name shall be revoked, if it finds that the registration is speculative or abusive as defined in Article 21. The domain name shall be transferred to the complainant if the complainant applies for this domain name and satisfies the general eligibility criteria set out in Article 4(2)(b) of Regulation (EC) No 733/2002.” This provision is reflected in paragraph B(11)(b) of the ADR Rules, stating that the sole remedies available pursuant to an ADR proceeding where the respondent is the domain name holder in respect of which domain name the complaint was initiated shall be limited to revocation or to the transfer of the domain name to the complainant provided that it satisfies the eligibility criteria established for the registration of .eu domain names. A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law Article 10(1) of the Regulation contains a list of rights which may fulfill the definition of “name in respect of which a right is recognized or established” provided in Article 21(1) of the Regulation. Said list includes, inter alia: “registered national and community trademarks, geographical indications or designations of origin, and, in as far as they are protected under national law in the Member-State where they are held: unregistered trademarks, trade names, business identifiers, company names, family names, and distinctive titles of protected literary and artistic works.” Paragraph B(11)(d)(1)(i) of the ADR Rules determines that the Panel shall issue a decision granting the remedies requested in the event that the Complainant proves “The domain name is identical or confusingly similar to a name in respect of which a right is recognized by the national law of a Member State and/or Community law”. In the case at hand, the Complainant proved that its wholly owned subsidiary BOC, which is the owner of European Union trademark registrations for ENTONOX (word mark). Therefore, for the purposes of this proceeding, the Complainant has the right to invoke the European Union trademark ENTONOX. See Microsoft Corporation and Microsoft Limited v. Greenlight Tech Services Limited,WIPO Case No. DEU2018-0026. As established in several prior cases, in the assessment of identity or confusing similarity, the “.eu” ccTLD can be disregarded, being a mere technical requirement for registration. The Panel notes that the trademark ENTONOX is entirely reproduced in the disputed domain name, with the mere addition of the “.eu” ccTLD which, as stated above, is not relevant for the purposes of this assessment. Therefore, the disputed domain name is clearly identical to a trademark in which the Complainant has established rights for the purposes of the ADR Rules. Accordingly, the Panel finds that the Complainant has proven that the disputed domain name is identical to a name in respect of which they have rights, according to the first requirement of Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(i) of the ADR Rules. B. Rights or Legitimate Interests According to Article 21(2) of the Regulation and Paragraph B(11)(e) of the ADR Rules, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate a respondent’s rights or legitimate interests in a domain name: (1) prior to any notice of the dispute, the respondent has used the domain name or a name corresponding to it in connection with the offering of goods or services or has made demonstrable preparations to do so; (2) the respondent, being an undertaking, organization or natural person, has been commonly known by the domain name, even in the absence of a right recognized or established by national and/or Community law; (3) the respondent is making a legitimate and non-commercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognised or established by national and/or Community law. A complainant is required to make a prima facie case that the respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. In the present case, the Panel finds that the Complainant has made out a prima facie case and that the Respondent, by not submitting a Response, has failed to provide any elements to establish rights or legitimate interests in the disputed domain name. It is clear that the Complainant has no relation with the Respondent and has not authorized it to use the trademark ENTONOX or the disputed domain name. In addition, there is no indication before the Panel that the Respondent might be commonly known by the disputed domain name. Furthermore, the Panel finds that, in light of the Respondent’s use of the disputed domain name in connection with a pay-per-click website where the disputed domain name is offered for sale, the Respondent has not used, or made preparations to use, the disputed domain name in connection with the offering of goods or services prior to any notice of the dispute and is not making a legitimate and non-commercial or fair use of the disputed domain name, without intent to mislead consumers or harm the reputation of the Complainant’s distinctive signs. In light of the foregoing and in absence of a Response, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to the second requirement of Article 21 (1) of the Regulation and Paragraph B(11)(d)(1)(ii) of the ADR Rules. C. Registered or Used in Bad Faith According to Article 21(1)(b) of the Regulation, a complainant is required to demonstrate that a domain name has been registered or used in bad faith. Article 21(3) of the Regulation and Paragraph B(11)(f) of the ADR Rules provide a non-exhaustive list of circumstances which, if found by the Panel to be present, may be evidence of the registration or use of a domain name in bad faith: (1) circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name to the holder of a name in respect of which a right is recognized or established by national and/or Community law, or to a public body; or (2) the domain name has been registered in order to prevent the holder of such a name in respect of which a right is recognized or established by national and/or Community law, or a public body, from reflecting this name in a corresponding domain name, provided that: (i) the Respondent has engaged in a pattern of such conduct; or (ii) the domain name has not been used in a relevant way for at least two years from the date of registration; or (iii) there are circumstances where, at the time the ADR Proceeding was initiated, the Respondent has declared its intention to use the domain name, in respect of which a right is recognized or established by national and/or Community law or which corresponds to the name of a public body, in a relevant way but failed to do so within six months of the day on which the ADR Proceeding was initiated; (3) the domain name was registered primarily for the purpose of disrupting the professional activities of a competitor; or (4) the domain name was intentionally used to attract Internet users, for commercial gain to the Respondent’s website or other on-line location, by creating a likelihood of confusion with a name on which a right is recognized or established, by national and/or Community law, or it is a name of a public body, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the Respondent; or (5) the domain name is a personal name for which no demonstrable link exists between the Respondent and the domain name registered. The Panel notes that, in light of the prior registration and use of the trademark ENTONOX in connection with the Complainant’s products, the widely known character of the trademark in its specialized sector and the identity of the disputed domain name with the trademark ENTONOX, the Respondent was more likely than not aware of the Complainant and its trademark when it registered the disputed domain name. Moreover, the Respondent’s redirection of the disputed domain name to a website displaying pay-per-click links also referring to the products traded by the Complainant under the trademark ENTONOX suggests that the Respondent indeed registered the disputed domain name with the Complainant’s trademark in mind. The Panel also finds that, in light of the content of the website to which the disputed domain name resolves, the disputed domain name was intentionally used to attract Internet users, for commercial gain, to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark, as to the source, sponsorship, affiliation or endorsement of the website or the websites linked thereto. The Respondent’s offer of the disputed domain name for sale to public at an amount which exceeds the out-of-pocket costs and its failure to file a Response in the present administrative proceeding are additional circumstances which demonstrate the Respondent’s bad faith. In view of the above, the Panel finds that the disputed domain name was registered and is being held in bad faith and thus, the Complainant has also met the requirement of Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(ii) of the ADR Rules. 7. Decision For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name Luca Barbero 1 The remedy sought is transfer of the disputed domain name to the Complainant. As the Complainant is established and located within the European Union, it satisfies the general eligibility criteria for registration of the disputed domain name, as set out in Article 4(2)(b) of the Regulation (EC) No 733/2002.
Sole Panelist
Date: January 1, 2020
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