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Polaron Engineering Limited v. Yeremia Prihandono [2004] GENDND 626 (8 May 2004)

1. The Parties

The Complainant is Polaron Engineering Limited, a British company, with offices in Watford, Hertfordshire, United Kingdom, represented by Gorvins Solicitors, with offices in Stockport, Cheshire, United Kingdom.

The Respondent is Yeremia Prihandono of Bandung, Indonesia.

2. The Domain Names and Registrar

The domain name in dispute is <polaron.com>.

The Registrar for the disputed domain name is Primus Telecommunication Australia Pty Ltd. of Melbourne, Victoria, Australia.

3. Procedural History

The Complainant filed the Complaint with the WIPO Arbitration and Mediation Center (the "Center") on February 10 and 11, 2004 (by e-mail and post accordingly) against Yeremia Prihandono. On February 11, 2004, the Center transmitted by email to Primus Telecommunication Australia Pty Ltd. a request for registrar verification in connection with the domain name in dispute. On February 12, 2004, the Registrar transmitted by email to the Center its response stating that the Registrant of the disputed domain name was Yeremia Prihandono and that the Registrar has not received a copy of the Complaint. The Registrar further confirmed that the Uniform Domain Name Dispute Resolution Policy was applicable to the domain name <polaron.com>.

In accordance with Paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint by e-mail and courier at the addresses showed in the Registrar's Whois database, and the proceedings commenced on February 20, 2004. In accordance with the Paragraph 5(a) of the Rules the due date for Response was March 11, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 18, 2004.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on April 8, 2004. 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 Paragraph 7 of the Rules.

On April 19, 2004, the Panel issued the Procedural Order No. 1 ordering the Complainant to provide additional documents regarding its trade mark POLARON, its business activity and evidence of the website "www.polaron.com" forwarding traffic on to the website of a rival company Futronix.

The Panel indicated that it would issue its decision within 10 days of the receipt of the supplementary documents from the Complainant. The supplementary documents were submitted on April 28, 2004.

4. Factual Background

The Complainant, Polaron Engineering Ltd., is one of the companies representing a group of companies, which include the Complainant, Polaron Controls Limited, Polaron Communication Limited, Polaron Cortina Limited, Polaron CVT Limited, Polaron Schaevitz Limited and Polaron Components Limited. In 1963, the Complainant launched a range of scientific equipment under the name Polaron, which included electron microscope grids and pulsed nuclear magnetic resonance equipment. In 1974, the Polaron group started manufacturing and selling lighting control systems (i.e. dimming system). The Polaron group of companies are now operated by Polaron Plc, a public limited company based in the United Kingdom and listed on the Alternative Investment Market.

Three of the four divisions of Polaron Plc are operating using the name Polaron, including:

- lighting control systems and audio visual products,

- pressure and movement sensors,

- ultra high vacuum systems.

The Complainant supplies lighting control system throughout the world to a large group of customers in locations such as the United Arab Emirates, Oman, Egypt, Malaysia, China, Hong Kong, the Philippines, Bahrain, Jamaica, Russia, Saudi Arabia, Indonesia and the United Kingdom.

The Complainant owns domain name <polaron.co.uk>, which is used for a website offering goods produced under the name Polaron.

On October 20, 2003, the Chief Executive Officer of Polaron Engineering Ltd. received an email correspondence from one of the trading partners and customers that there was a redirect on the website "www.polaron.com" to the website of the company Futronix (at "www.futronix.net" or "www.futronix.info"). Company Futronix is a direct competitor of the Complainant in the area of lighting equipment.

On November 3, 2003, the Complainant addressed this problem to Citec Asia Company Limited, an authorized re-seller of domain names on behalf of the Registrar, and after that the forwarding of traffic to a competitor's website stopped.

5. Parties' Contentions

A. Complainant's Summarized Contentions

- The disputed domain name <polaron.com> is identical to the unregistered trade mark Polaron used by the Polaron group of companies. The name Polaron is synonymous with scientific equipment and the companies of Polaron group are the only companies that actively trade in the control systems industry under the name Polaron.

- The Complainant owns the domain name <polaron.uk> and website located at "www.polaron.co.uk".

- The Respondent has no rights or legitimate interests in respect of the disputed domain name.

- The Respondent has never been commonly known by the disputed domain name and has not acquired any trade mark or service mark relating to the name Polaron.

- The Respondent used the domain name <polaron.com> in such a way that the website located at "www.polaron.com" was forwarding traffic on to the website of the Complainant's competitor Futronix ("www.futronix.info"), a company supplying similar products in Australia.

- The Respondent's website "www.polaron.com" contained the words "unreliable control system" which appeared before forwarding traffic on to Futronix's website. This constitutes a deliberate attempt to tarnish the Complainant's rights in the unregistered trade mark Polaron so that the Internet users will be under the impression that the word Polaron is associated with "unreliable control systems".

- The forwarding of the Internet users to the competitor's website is an unfair use because this is a way to make commercial gain by misleadingly diverting customers who are seeking out the products of the Complainant to a website belonging to a competitor.

- The disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant by tarnishing the name Polaron by linking it to the words "unreliable control system" and by forwarding it to the website of a rival.

- By forwarding the Internet users to the website of a competitor the Respondent attempted to attract commercial gain for Futronix.

- The disputed domain name <polaron.com> should be transferred to the Complainant.

B. Respondent's Summarized Contentions

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

The Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under Paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.

However, as noted, the Respondent failed to file any reply to the Complaint and has not sought to answer the Complainant's assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present its case, and the Panel will proceed to a decision on the Complaint.

The Respondent's default does not automatically result in a decision in favour of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Pursuant to Paragraph 15(a) of the Rules the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondent's failure to reply to the Complainant's assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel's decision is based upon the Complainant's assertions and evidence and inferences drawn from the Respondent's failure to reply.

Identical or Confusingly Similar

The Complainant has described what he calls "unregistered trade mark Polaron", which is a name used by the Complainant since 1963, to initially identify a range of scientific equipment, which included electron microscope grids and pulsed nuclear magnetic resonance equipment and later used for other goods such as lighting control systems and its business generally. The group of companies controlled by a public limited liability company Polaron includes Polaron Engineering Ltd. (Complainant), Polaron Controls Limited, Polaron Communication Limited, Polaron Cortina Limited, Polaron CVT Limited, Polaron Schaevitz Limited and Polaron Components Limited.

The Panel finds that the Complainant has the rights to the name Polaron, which may be either described as a common law trade mark or unregistered trade mark. Based on numerous WIPO cases, the Panel believes that Paragraph 4(a)(i) of the Policy does not require a trade mark to be registered by a governmental authority, the reference to the "rights" in this Paragraph includes both registered and unregistered trade marks, in particular it should be accepted with respect to well-known business and other names in the common law countries (see Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset, WIPO Case No. D2002-1058, Jones Apparel Group Inc. v. Jones Apparel Group.com, WIPO Case No. D2001-1041, Phillip Berber v. Karl Flanagan and KP Enterprises, WIPO Case No. D2000-0661, Consitex S.A. v. Mr. Hugo Bazzo, WIPO Case No. D2003-0520, Savino Del Bene Inc. v. Graziano Innocenti Gennari, WIPO Case No. D2000-1133, Adobe Systems v. Domain OZ, WIPO Case No. D2000-0057, CSA Int'l v. Shannon, WIPO Case No. D2000-0071 and many others). The name Polaron should be regarded as protected by common law in the United Kingdom. As Lord Halsbury put it: "nobody has any right to represent his goods as the goods of somebody else"¹. The first criteria for a common law trade mark may be identified as goodwill or reputation attached to the goods or services, which is associated in the mind of the purchasing public with particular business².

The Panel also notes that the Complainant owns the domain name <polaron.co.uk> and corresponding website.

The Respondent has not filed any reply to the Complaint or contested the Complainant's assertions. The Respondent did not present any evidence of having rights in the trade mark or trade name Polaron.

In the circumstances, the Panel finds that the Complainant has rights in the common law trade mark Polaron.

The disputed domain name is identical to the Complainant's trademark Polaron.

The Panel infers the Complainant has satisfied its burden of proof under Paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

The Complainant contends the Respondent has no rights or legitimate interests in the disputed domain name.

Even though the Respondent has not filed any reply to the Complaint and has not contested the Complainant's assertions, it is upon the Panel to consider whether the Respondent's use of the disputed domain name demonstrates rights or legitimate interests in the domain name.

According to Paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a Respondent's rights or legitimate interests in a domain name:

(i) Respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant's marks.

The Respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under Paragraphs 4(c)(i-iii) of the Policy. By not responding to the Complainant's contentions the Respondent in this proceeding has never attempted to show its rights and legitimate interests.

Firstly, there is no evidence that before any notice of a dispute with the Complainant, the Respondent was using the disputed domain name for a legitimate offer of goods and services.

The Complainant points out that the disputed domain name has only been used to display the words "unreliable control system" and to further forwarding traffic on to the website of a competitor (Annex A and B to supplementary documents).

The Panel finds no evidence that Respondent was using or is using the disputed domain name for a legitimate offering of goods and services.

Secondly, as for the Respondent's proof under Paragraph 4(c)(ii) of the Policy there is no evidence that the Respondent has been commonly known by the disputed domain name.

There is no information that the Respondent may be known under the disputed domain name as its business name or its company name. The Complainant contends the Respondent is not commonly known by the disputed domain name <polaron.com>.

The Panel recalls that the Respondent registered the disputed domain name on February 11, 2001. The Complainant is known under the name Polaron since 1963, in many countries of the world, in particular through its website "www.polaron.co.uk".

The Panel believes that the Respondent knew about the Complainant's common law trade marks and business name.

Afterwards, regarding these facts, it is in the Panel's view that the Respondent could have set out to register the disputed domain name since it might be aware of the Complainant's business interests in the disputed domain name.

Thus, the Panel finds that the Respondent's use of the disputed domain name as a link to a website of a competitor does not constitute a bona fide offering of services under Paragraph 4(c)(i) the Policy, on the contrary, it proves that the disputed domain name has been used in bad faith (see below).

Furthermore, the Panel draws an adverse inference from the Respondent's failure to respond to the Complaint.

The Panel finds the Complainant has carried out its burden of proof to show that the Respondent has no legitimate rights or interests in the disputed domain name.

Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a Respondent has registered and used a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.

The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain name was registered and used primarily for the purposes of disrupting the business of the Complainant by tarnishing the name Polaron through linking it to the words "unreliable control system" and by forwarding it to the website of a competitor. In addition, according to the Complainant, the forwarding on of the Internet users to the rival's website is an attempt to make commercial gain by misleadingly diverting customers who are seeking out the products of the Complainant to a website belonging to a competitor and thus attracting commercial gain for Futronix.

The Complainant submitted the copies of an email correspondence between the Chief Executive Officer of Polaron Engineering Ltd. Mr Joe Stelzer and one of the trade partners and customers, Lightfactor Sales Limited where on October 10, 2003, the latter informed about the website "www.polaron.com" and that it had re-direct to the website of Futronix. According to Mr. Joe Stelzer when he visited the website the only content of the site on the first entering were the words "unreliable control system" and after a short while Mr. Stelzer was automatically forwarded onto the website "www.futronix.net" and/or "www.futronix.info". The Complainant did not present any printouts of the website or proof of re-direct to Futronix website. After November 3, 2003, when the Complainant addressed this problem to Citec Asia Company Limited, an authorized re-seller of domain names on behalf of the Registrar, the words "unreliable control system" on the website "www.polaron.com" disappeared and the forwarding of traffic to Futronix website stopped.

The Panel's independent search shows that currently there is no website at "www.polaron.com". It is clear that the Respondent discontinued using the disputed domain name for displaying the words "unreliable control system" and tore-direct to the Futronix website.

The Panel finds that the Complainant presented circumstantial evidence that the Respondent was in violation of provisions of Paragraph 4(b)(iii) and Paragraph 4(b)(iv). The fact that the Respondent discontinued the above-mentioned activity, in the Panel's view, should not be interpreted as eliminating bad faith.

The Panel holds that the Respondent "has registered the disputed domain name in bad faith". The Respondent does not conduct any legitimate business activity using the disputed domain name. It is also difficult to conceive a situation, in which the Respondent would have been unaware of the Complainant's website and common law trade name. These findings, together with the finding that the Respondent has no rights or interests in the domain name, lead the Panel to conclude that the domain name <polaron.com> has been registered by the Respondent in bad faith.

The above, and the fact that the domain name <polaron.com> does not resolve to a website or any other on-line presence indicate that the disputed domain name is being used in bad faith.

The fact that the Respondent failed to respond to the Complaint, in the Panel's view, adds to the arguments in favour of the Respondent's bad faith.

The Panel finds the Complainant has shown that the Respondent registered the disputed domain name in bad faith.

7. Decision

The Administrative Panel decides that the Complainant has proven each of the three elements in Paragraph 4(a) of the Policy. In accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the disputed domain name <polaron.com> be transferred to the Complainant.

Irina V. Savelieva
Sole Panelist

Dated: May 8, 2004

¹ Reddaway v. Banham [1896] A.C. 199 at 204, 13 R.P.C. 218 at 224.

² See W.R. Cornish. Intellectual Property: Patents, Copyright, Trade marks and Allied Rights. Fourth Edition, Sweet and Maxwell, 1999, p. 619-651.