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Clariant AG. v. Comm-Trade.com [2004] GENDND 700 (25 June 2004)

1. The Parties

The Complainant is Clariant AG., Muttenz, Switzerland, represented by Braun & Partner, Switzerland.

The Respondent is Comm-Trade.com, Bern, Switzerland.

2. The Domain Name and Registrar

The disputed domain name <clariant.info> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2004, against Comm-Trade.com GmbH. On May 12, 2004, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. The same day, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response indicating that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 17, 2004. 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 19, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 9, 2004.

The Center appointed Theda König Horowicz as the sole panelist in this matter on June 14, 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 the Rules, paragraph 7.

4. Factual Background

According to the Complainant’s web site “www.clariant.com”, Clariant AG is a Swiss Company specialized in chemicals which is active worldwide through Group Companies.

The Complainant is the owner of Swiss, International and other National registrations for the trademark “CLARIANT” for various goods and services notably relating to the chemical industry.

The domain name <clariant.info> was registered on July 22, 2002, by Comm-Trade.com and connected to the web site “www.lonza.ch”. The web site “www.lonza.ch” is operated by and presents the activities of Lonza AG, a competitor of Clariant AG. By email of April 19, 2004, Lonza AG confirmed to the Complainant that they did not register the domain name <clariant.info> and that they have not taken any steps in order for said name to be linked to their web site “www.lonza.ch”.

The Complainant’s counsel sent a cease and desist letter to the Respondent on April 23, 2004, asking for the transfer of <clariant.info>. The Respondent answered via email the same day that he was willing to orally discuss this issue directly with Clariant AG, but that he would not anymore respond to further letters or claims from its counsel.

5. Parties’ Contentions

A. Complainant

The Complainant says that the domain name <clariant.info> is identical or confusingly similar to numerous registrations it owns for the trademark “CLARIANT”, including in Switzerland.

The Complainant further states that the Respondent has no rights or legitimate interests in the domain name <clariant.info> as he is not known by the domain name and as he is not using the domain name for his own purposes but is forwarding the domain name to the web site of one of the Complainant’s competitor, thus diverting consumers and tarnishing the Complainant’s trademarks.

Furthermore, the Complainant alleges that the Respondent has registered and is using the domain name <clariant.info> in bad faith, to harm the Complainant’s business by misleading potential or existing customers to a competitor’s web site with the final purpose of receiving valuable consideration in excess of the Respondent’s out-of-pocket costs.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy directs the Complainant to prove each of the following:

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

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

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

A. Identical or Confusingly Similar

The Respondent’s domain name <clariant.info> includes in its entirety the Complainant’s registered trademark “CLARIANT”. The Respondent’s domain name is thus confusingly similar to the Complainant’s trademark.

The Complaint therefore meets the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has described why the Respondent would not have rights or legitimate interests in respect of the domain name at issue. The Respondent has not taken the opportunity given to him under these proceedings to explain his reasons for registering <clariant.info>. The Panel finds that the arguments invoked by the Complainant to deny the Respondent any rights or legitimate interests in respect of the domain name <clariant.info> are sufficient.

Accordingly, the Complainant succeeds in establishing the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy contains a non-exhaustive list of circumstances constituting evidence of the registration and use of a domain name in bad faith.

The Complainant notably invokes paragraph 4(b)(i) relating to the circumstance where a domain name is acquired by the respondent primarily for the purpose of being transferred to the complainant for valuable consideration in excess of documented out-of-pocket costs.

To evidence this allegation, the Complainant refers only to an email sent by the Respondent to the counsel of the Complainant, in which the Respondent indicates that it is willing to orally discuss the domain name issue directly with Clariant AG, but that it would not answer any further letters or written claims by Clariant AG’s counsel.

The Panel considers that this fact is far not sufficient to prove that the circumstance of paragraph 4(b)(i) is fulfilled.

However, the Panel finds it credible that the Respondent has chosen to register and use the domain name at issue to attract Internet users to the web site of a Complainant’s competitor, circumstance which constitutes bad faith registration and use under the Policy, as pointed out in other WIPO decisions. See NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768; Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319.

In this regard, the Panel notes that both parties are located in Switzerland and that the Complainant has proven to own notably Swiss registrations for the trademark “CLARIANT” which is also its business name. The Panel infers that, at the time of registration of the name, the Respondent knew of the Complainant, which has a reputation in Switzerland in the field of chemicals.

Furthermore, it is evidenced that the Respondent forwarded the domain name <clariant.info> to the web site “www.lonza.ch”. The public seeking information on Clariant AG was thus directed when consulting “www.clariant.info” to a web site promoting the activities of Lonza AG, a Swiss Company which competes with the Complainant.

Considering the above, the Panel finds that he must have known that he was attracting Internet users to the web site of a competitor of Clariant AG.

For these reasons and absent from a response by the Respondent, the Panel considers that the Complaint meets the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <clariant.info> be transferred to the Complainant.

Theda König Horowicz
Sole Panelist

Dated: June 25, 2004