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Atlas Copco Aktiebolag v. Kentaur Trade & Marketing Consultancy, Henri H.J. van Muyden [2005] GENDND 1439 (24 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Atlas Copco Aktiebolag v. Kentaur Trade & Marketing Consultancy, Henri H.J. van Muyden

Case No. D2005-0593

1. The Parties

The Complainant is Atlas Copco Aktiebolag, Nacka, Sweden, represented by Fredrik Lund, United States of America.

The Respondent is Kentaur Trade & Marketing Consultancy, Henri H.J. van Muyden,
Limburg, Netherlands.

2. The Domain Name and Registrar

The disputed Domain Name <atlas-copco.info> is registered with BulkRegister.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2005. On June 9, 2005, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the Domain Name at issue. On June 9, 2005, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for the Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for the 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 June 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2005.

The Center appointed Jon Lang as the sole panelist in this matter on August 3, 2005. 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 Domain Name <atlas-copco.info> was created on October 4, 2001. The Complainant in this proceeding, Atlas Copco Aktiebolag, is a Swedish Corporation, incorporated in 1873. The business of the Complainant and its subsidiaries (“the Atlas Copco Group”) includes the development and manufacture of compressed air equipment, pneumatic tools, construction equipment, mining equipment and assembly systems. Atlas Copco Group’s products are sold under various brands including the “Atlas Copco” brand in several countries including the Netherlands in which the Respondent is located. The Complainant’s primary websites are at “www.atlascopco.com” and “www.atlascopco-group.com”. The Complainant is the owner of various registered trademarks and service marks in various countries including a Benelux trademark registration for the mark ATLAS COPCO and a Benelux trademark registration for the mark COPCO. The Respondent appears to be a trade and marketing consultancy that registers various domain names including domain names that include famous or well-known marks of third parties (or a slight variant thereof). For instance, the domain name <michelin-guide.info> and the domain name <ciba-geigi.com> are both registered in the name of the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the Domain Name is virtually identical to the Complainant’s ATLAS COPCO trademark, its corporate name and domain names, the only difference being that the Domain Name contains a hyphen between the words “Atlas” and “Copco” which the Complaint submits is not a distinguishing feature for the purposes of proceedings under the Policy. The Complainant therefore submits that the Domain Name is identical or confusingly similar to the Complainant’s trademark as well as the Complainant’s corporate name and domain names.

The Complainant also submits that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent is in no way affiliated with the Complainant and registered the Domain Name several years after the Complainant registered its trademark. The Complainant also submits that the Respondent has neither used nor prepared to use the Domain Name in connection with a bona fide offering of goods or services and that the website associated with the Domain Name is a generic website that states “welcome to atlas-copco.info” and consists of no more than a series of links to information on such matters as finance, education, entertainment, real estate, etc. The Complainant submits that a website consisting of no more than a series of links does not constitute bona fide use. The Complainant notes that the Respondent is not known by the Domain Name and moreover cannot be making a legitimate non-commercial or fair use of the Domain Name given the nature of the website. Moreover, the Complainant submits that given that the Domain Name is identical or confusingly similar to the Complainant’s trademark, corporate name and domain names, it creates a false impression that the Respondent’s website is somehow associated with or endorsed by the Complainant and therefore the Respondent’s use of the Domain Name cannot constitute “fair use”. In all the circumstances, the Complainant submits, the Respondent has no rights or legitimate interests in respect of the Domain Name.

The Complainant asserts that the Respondent has offered to sell the Domain Name to it for 549 Euros and also for an amount of 499 Euros (by letter dated December 4, 2002). The Complainant submits that both sums are in excess of any domain name registration fees charged by domain name registrars in the normal course. The Complainant submits that this is indicative of the Respondent having registered the Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name for valuable consideration in excess of costs associated with the Domain Name and that therefore the Respondent has registered and used the Domain Name in bad faith. The Complainant also submits that there is a pattern of conduct on the part of the Respondent of registering domain names to prevent owners of trademarks or service marks which those domain names incorporate from reflecting their marks in corresponding domain names. The Complainant goes on to note that the Respondent has registered a range of domain names to incorporate third party trademarks and corporate names including <michelin-travel.info> and <ciba-geigi.com> referred to earlier and, given this pattern of conduct, it should be inferred that the Respondent has registered the Domain Name <atlas-copco.info> to prevent the Complainant from using its mark in a corresponding domain name.

Furthermore, the Complainant submits that the Domain Name creates a likelihood of confusion with the Complainant’s trademark, corporate name and domain names as to the source, sponsorship, affiliation or endorsement of the Domain Name, the Respondent’s website or products or services at the Respondent’s on-line location. The Complainant submits that it matters not whether use of the Domain Name has been made by the Respondent or a third party, or whether the Respondent derives any financial benefit from the use - the Respondent, as the registrant, controls the Domain Name and the use that can be made thereof. Moreover, the Complainant submits that a WHOIS search, which reveals the Respondent as the registrant of <atlas-copco.info>, may well lead to a person (using the WHOIS search tools) to believe that the Respondent is associated with the Complainant.

The Complainant submits that the Respondent had actual (or constructive) knowledge of the ATLAS-COPCO trademark (and corporate name and domain names), such submission being supported by the fact that the Domain Name is virtually identical to the Complainant’s trademark and corporate name, and is a “coined” term made up by the Complainant. Even if there was no actual knowledge, the Complainant submits constructive knowledge by virtue of the trademark registration appearing in an easily searchable trademark database.

B. Respondent

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

6. Discussion and Findings

The Complainant must show, for the purposes of paragraph 4(a) of the Policy, that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; that the Respondent has no rights to or legitimate interests in the Domain Name; and that it was registered and is being used in bad faith. All three elements must be established for a Complainant to succeed.

A. Identical or Confusingly Similar

The Complainant has referred to two previous panel decisions, Nintendo of America Inc., v. This Domain Is For Sale, WIPO Case No. D2000-1197 and RiskWise L.L.C. v. Domain Strategy Inc., WIPO Case No. D2002-0125, in support of its assertion that the hyphen between “Atlas” and “Copco” is an insignificant difference for the purposes of the Policy and that accordingly the Domain Name is identical or confusingly similar to the Complainant’s trademark. This Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark in which it has rights for the purposes of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy, at paragraph 4(c), sets out examples of circumstances which, if found by a panel to be proved, demonstrates that the respondent has rights or legitimate interests in a domain name for the purposes of paragraph 4(a)(ii) of the Policy. These are as follows: (i) before notice of the dispute, there was use of, or demonstrative preparations to use, the domain name or a name corresponding to the domain name in connection with bona fide offering of goods or services; or (ii) the Respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark right; or (iii) the 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 trademark or service mark at issue. There are other ways of demonstrating rights to or legitimate interests in a domain name.

The Complainant contends that the Respondent has no connection with the Complainant and is not therefore authorised in any way to use the Complainant’s trademark. There is no evidence to suggest that the Respondent has used or prepared to use the Domain Name in connection with a bona fide offering of goods or services before or after notice of the dispute came to his attention. The Panel accepts for the purposes of this proceeding that a website consisting of no more than a series of links does not constitute bona fide use, at least in the circumstances in which the Respondent is using the confusingly similar Domain Name. Even if there were a more active use of the Domain Name over and above the use which the Respondent is making of it (or authorising), it is difficult to see how such use could be bona fide given the confusing similarity of the Complainant’s trademark and the Domain Name and the lack of connection between the Respondent and the Complainant.

There is no evidence to suggest that the Respondent has been known by the Domain Name.

The Panel finds that the use of the Domain Name cannot be regarded as “legitimate non-commercial or fair use” - clearly the website to which the Domain Name resolves is of a commercial nature whatever the financial arrangements behind it.

The Respondent has failed to file a Response and this Panel accepts the submissions of the Complainant based upon the panel decision in Diebold, Incorporated v. Paul Terwilliger, WIPO Case No. D2003-0416, that where a complainant has asserted that a respondent has no rights or legitimate interests in a domain name it is encumbent upon the respondent to provide evidence rebutting this assertion because this information is uniquely within the knowledge and control of the respondent. The Respondent has defaulted and has put forward no evidence whatsoever to support an assertion that it has any rights or legitimate interests in the Domain Name and there is nothing in the evidence before the Panel that could be regarded as being in any way supportive of such an assertion. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out, by way of example, a non-exhaustive list of circumstances which, if found to be present by a panel, should be treated as evidence of registration and use of a domain name in bad faith.

The first example in paragraph 4(b) is where there are circumstances indicating that the respondent has registered a domain name primarily for the purposes of selling, renting or otherwise transferring it to the Complainant who is the owner of the corresponding trademark for valuable consideration in excess of documented out-of-pocket expenses. In the circumstances, such behaviour should be regarded as evidence of the registration and use of the domain name in bad faith. In this particular case, the Respondent has offered to sell the Domain Name to the Complainant for varying amounts of money, all in excess of what would be regarded as proper out-of-pocket expenses incurred in connection with a domain name. There is no evidence from the Respondent to counter the submission of the Complainant that the Respondent registered the Domain Name for the primary purpose of selling, renting, etc. and in the absence of such evidence, this Panel accepts the assertions of the Complainant and finds that the Domain Name was registered and has been used in bad faith.

For the sake of completeness, this Panel will deal with some of the other assertions of the Complainant in relation to bad faith. The second example of circumstances indicative of bad faith registration and use is where the respondent has registered a domain name in order to prevent the owner of the trademark from reflecting its mark in a corresponding domain name provided that there has been a pattern of such conduct by the respondent. The Complainant refers to a number of other domain name registrations in the name of the Respondent incorporating third party trademarks and/or corporate names, (some examples of which have been given earlier). The Complainant also refers to the Panel decision in Bellevue Square Managers, Inc. v. Redmond Web and Branden F. Moulton, WIPO Case No. D2000-0056 in which it was held that registration of just three domain names incorporating third party marks was sufficient for the inference to be drawn that there was a pattern of conduct. Whether or not there should be a threshold requirement of three domain name registrations incorporating third party marks before a “pattern of conduct” can be found, this Panel finds, given the several instances of prior registrations referred to by the Complainant incorporating third party marks (or words likely to be confusingly similar to third party marks), that the Respondent has registered the Domain Name in order to prevent the Complainant from reflecting its mark in a the corresponding Domain Name and that there is evidence of a pattern of similar conduct in the past. In this Panel’s view, whether the domain names incorporate third party marks precisely, or instead some confusingly similar mis-spelling thereof, matters not for the purposes of deciding whether there is a pattern of conduct.

The Complainant goes on to base a submission on the fourth example of circumstances under Paragraph 4(b) of the Policy, namely that by using the Domain Name the Respondent has intentionally attempted to attract for commercial gain internet users to its website by creating a likelihood of confusion with the Complainant’s mark, as to the source, sponsorship, affiliation or endorsement of the Respondent’s site or the products or services thereon. This Panel is of the view that the Domain Name does create the likelihood of confusion alleged. Internet users entering the Domain Name would expect to arrive at the Complainant’s website. Instead they will be diverted to an on-line location without any connection with the Complainant and it must be assumed, in the circumstances, that whatever the precise financial arrangements that surround the website to which the Domain Name resolves the Respondent, as the registrant (being in control of the use that can be made of the Domain Name) will derive some form of commercial gain from the arrangements. For these reasons, the Panel also finds bad faith registration and use based on this submission.

The Complainant also submits that the Respondent had actual knowledge of the ATLAS COPCO trademark given that the Domain Name is virtually identical to the trademark and its corporate name which is in fact a “coined” term made up by the Complainant. The Complainant also submits that even if the Respondent did not have actual knowledge, by virtue of the Complainant’s trademark registration, the Respondent would have constructive knowledge and that the Respondent’s knowledge, whether actual or constructive, is further evidence of his bad faith (as is his inactivity in relation to the Domain Name). This Panel makes no finding in relation to these other submissions. The Panel is satisfied that the Complainant has made out its submissions on bad faith registration and use referred to earlier in this Decision and finds, for the purposes of the Policy, that the Respondent has registered and used the Domain Name in bad faith.

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, <atlas-copco.info> be transferred to the Complainant.

Jon Lang
Sole Panelist

Dated: August 24, 2005