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Maxon Motor AG v. Kentech Ltd. [2005] GENDND 545 (28 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Maxon Motor AG v. Kentech Ltd.

Case No. D2005-0600

1. The Parties

The Complainant is Maxon Motor AG, Sachseln, Switzerland, represented by Kaufmann Rüedi & Partner, Switzerland.

The Respondent is Kentech Ltd., Eldoret, Kenya.

2. The Domain Name and Registrar

The disputed domain name <maxonmotors.com> is registered with Domain Contender, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2005. On June  10, 2005, the Center transmitted by email to Domain Contender, LLC a request for registrar verification in connection with the disputed domain name. On the same day, the registrar, Domain Contender, LLC 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 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 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 6, 2005.

The Center appointed Irina V. Savelieva as the Sole Panelist in this matter on July 14, 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 Paragraph 7 of the Rules.

4. Factual Background

The Complainant, Maxon Motor AG, is a renown Swiss company specialised in development, manufacturing and sales of high precision drive components and systems. It established its worldwide recognition in 1997, with the equipment of Mars Rover ‘Sojourner’ with Maxon’s DC motor. Since 1960, the Complainant is marketing high precision drive components and systems under the trademark “Maxon motor”.

The Complainant holds a number of trademark registration “Maxon” at national (Switzerland, USA) and international levels.

The Complainant has registered domain name <maxonmotor.com> (registered on November 22, 1995), <maxonmotor.de>, <maxonmotor.co.uk> and <mahonmotor.ch>.

The disputed domain name <maxonmotors.com> has been previously registered by Domain Deluxe, Hong Kong. After Domain Deluxe registration was not renewed the Complainant attempted to register the disputed domain name. However, on February 18, 2005, the disputed domain names had been already registered by the Respondent. The Complainant proposed to the Respondent several time to purchase the disputed domain names. The Respondent did not answer.

The Respondent is currently using the disputed domain name for its website. The home page contains a list of topics which of them when clicked on refers to various websites. In the right hand corner there is a button “Buy this domain!” which when clicked on connect to a website “www.kenyatech.com”.

5. Parties’ Contentions

A. Complainant

(a) The disputed domain name <maxonmotors.com> is confusingly similar to the trademark of the Complainant:

- The Complainant has registered trademark “Maxon” at national (Switzerland, USA) and international levels since 1969.

- The names “Maxon” and “Maxon motor” are known worldwide, in particular after 1997, when the Mars Rover ‘Sojouner’ was equipped with Complainant’s DC motor.

- The disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name does not need to be identical to the trademark at issue, the likelihood of confusion is established when a complainant’s mark is contained in a respondent’s domain name (e.g. Cellular One Group v. the Design factory WIPO Case No. D2000-1670).

- The use of complainant’s trademark in a disputed domain name in connection with a generic term does not eliminate the confusing similarity.

- The Respondent’s domain name contains exact trademark “Maxon” of the Complainant. The Respondent uses it together with the generic term “motors” which is a descriptive element for the Complainant’s area of business. The disputed <maxonmotors.com> is likely to cause confusion among consumers familiar with the Complainant’s “Maxon” mark and area of business.

- The disputed domain name is confusingly similar to the Complainant’s unregistered common law trademark “Maxon motor”. The latter was acquired by the Complainant through use and is protected as such (e.g. Uitgeverij Crux v. W. Frederic Isler WIPO Case No. D2000-0575 and other WIPO cases).

- The words “Maxon motor” have become a distinctive identifier associated with the Complainant and its good and services. A search for “maxonmotor” through the search engine Google refers in the first ranks exclusively to the Complainant and its several subsidiaries.

- The only difference between the disputed domain name and common law trademark “Maxon motors” is one letter ‘s” which represents only a slight difference and might mislead the Internet users as to the fact that the disputed domain name is linked to the Complainant, its goods and services.

- The Complainant submits that the disputed domain name is confusingly similar to the Complainant trademark as the minor difference is spelling has no legal significance.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name:

- There is no indication that the Respondent is known under the disputed domain name.

- The Complainant has not licensed or otherwise permitted the Respondent to use its trademark “Maxon motor” or to apply for any domain name incorporating this mark.

- The Respondent does not use the disputed domain name for a bona fide offering of goods and services. The Respondent use of the disputed domain name consists only of diverting the Internet uses to the Respondent’s website.

- The respondent operates a business of registering and selling domain names which their previous holders accidentally failed to register.

- The Complainant submits that there is sufficient prima facie evidence that the Respondent does not have rights or legitimate interested in the disputed domain name.

(c) The domain name was registered and is being used in bad faith:

- The Respondent is involved in business of registering domain names which their previous holders accidentally failed to register and it is clear that the Respondent is engaged in a pattern of cybersquatting (with reference to a similar case against the same respondent (Bart van den Bergh Merk-Echt v. Kentech Company. Inc. WIPO Case No. D2005-0127).

- Several attempts to contact the Respondent failed and the Complainant assumes that the Respondent has provided false contact details.

- The Respondent intentionally attempts to attract the Internet users to its website for commercial gain by creating a likelihood of confusion,

- The Respondent has registered the disputed domain name for the sole purpose of disrupting the Complainant’s business,

- The Respondent did not answer the Complainant’s offer to sell the disputed domain name for USD 250.00 and later for USD 500.00 respectively. The circumstances clearly indicate that the Respondent has registered the domain name <maxonmotors.com> for the purpose of selling it higher than its out-of-pocket costs directly related to the domain name.

- The Respondent is clearly typosquatting the Complainant’s trademark for commercial gain by offering to sell the disputed domain name through its website and linking this domain name with various information concerning “DC motors”, etc. which is indeed the Complainant’s main business.

- consumers are further mislead and would be induced to believe that the Respondent has connections with the Complainant (direct nexus or affiliation) and that the Respondent is carrying out activities endorsed by the Complainant and offered at the same level of quality and reliability.

- The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

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 based 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 registered trademark MAXON at national level:

- in Switzerland No 371410 registered on March 21, 1989 (renewal of previous trademark registration No 241047 of April 14, 1969) in international classes 7, 8, 9, 10, 12, 20, 21 and 28;

- in the USA No 1019754 registered on September 2, 1975 and No 1281271 registered on June 12, 1984 and No 1310777 registered on December 25, 1984 and at international level trademark registration No 3622228 in international classes 7, 8, 9, 11, 12, 20, 21, and 28 (Annex 4 to the Complaint).

The Complainant also submits that the mark MAXON MOTOR is a common law mark which had been in use since 1960 and reflected on all types of printed and advertising materials by the Complainant (Annex 5 to the Complaint). The websearch through the search engine Google results in Complainant’s and its subsidiaries websites to be on the top of the list (Annex 6 to the Complaint). The Complainants refers to a number of WIPO cases in support of its submission that the mark MAXON MOTOR has been established as a common law trademark and the Complainant’s rights to it should be recognised for the purpose of current UDRP proceedings.

The Complainant has registered domain name <maxonmotor.com> (registered on November 22, 1995), <maxonmotor.de>, <maxonmotor.co.uk> and <mahonmotor.ch>.

The Panel finds that the Complainant has registered trademark MAXON at national and international levels since 1969. As for unregistered trademark MAXON MOTORS being in use since 1960, the Panel accepts it as common law trademark. Based on numerous WIPO cases, the Panel believes that Paragraph 4(a)(i) of the Policy does not require a trademark to be registered by a governmental authority, the reference to the “rights” in this Paragraph includes both registered and unregistered trade marks (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 “maxon motor” should be regarded as common law trademark. The first criteria for a common law trademark 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 business¹.

The Panel finds that the Complainant has proved the rights to registered trademark MAXON and unregistered (common law) trademark MAXON MOTOR.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark MAXON and common law MAXON MOTOR. The fact that the disputed domain name has one additional letter ‘s’ to make the word plural, in the Panel view, does not change the overall situation.

The Panel agrees with the Complainant’s arguments that result may, therefore, be that the disputed domain name would be directly associated in the mind of the consumers with the Complainant’s trademarks.

The Panel refers to a number of past UDRP decisions, which confirm that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002 and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802 and many others).

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 trademark or trade name MAXON or MAXON MOTOR.

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 up to 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 Respondent does not use the domain name in connection with the bona fide offering of goods and services, according to the standards set out in Oki Data Americas, Inc. v. ASD, Inc. (WIPO Case No. D2001-0903).

According to the documents submitted by the Complainant and subsequent finding of the Panel the home page of the website under the disputed domain name <maxonmotors.com> displays a list of topics which of them when clicked on refers to various websites. In the right hand corner there is a button “Buy this domain!” which when clicked on connect to a website “www.kenyatech.com” (Annex 10 to the Complaint). The website itself does not offer any goods or services, it provides merely links to other websites.

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.

The Panel recalls that the Respondent registered the disputed domain name on February 18, 2005 (Annex 2 to the Complaint). The Complainant’s products “Maxon motor” are known since 1960, and with Mars Rover have acquired truly international recognition since 1997.

The Panel believes that the Respondent knew about the Complainant’s name, registered trademark MAXON and common law trademark MAXON MOTOR at the time of disputed domain name registration.

Afterwards, regarding these facts, it is the Panel’s view that the Respondent most probably registered the disputed domain name with awareness of the Complainant’s products and its quality and reputation.

Thus, the Panel finds that the Respondent’s use of the disputed domain name 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 purpose of confusing the public and diverting public attention from the Complainant’s official website to the Respondent’s website for potential commercial gain.

According to the evidence submitted by the Complainant the home page of the website under the disputed domain name <maxon motors.com> displays a list of topics linked to various website and an offer to buy domain names linked to the Respondent’s website “www.kenyatech.com”.

The Panel finds that the Respondent’s website could have attracted potential attention from the public through the website affiliation with the Complainant’s products and services. At the same time it has created a confusion with the Complainant’s product and trademark as to the source, sponsorship, affiliation or endorsement of its website. The Panel’s independent verification has shown that the Respondent continues to use the disputed domain name for a website in the same manner.

The Panel finds that the Complainant presented circumstantial evidence that the Respondent was and is in violation of provisions of Paragraph 4(b)(iv) of the Policy.

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. The Respondent most likely knew of the Complainant’s product and showed be aware of the trademark MAXON and common law trademark MAXON MOTOR. 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 disputed domain name has been registered by the Respondent in bad faith.

The fact that the Respondent’s use of the disputed domain name has created a confusion with the Complainant’s product and trademark under Paragraph 4(b)(iv) of the Policy indicates that the disputed domain name has been used and is still used in bad faith.

In addition, the Panel accepts the argument of the Complainant that the Respondent appears to be in business of buying and selling domain name through its website “www.kenyatech.com”. Therefore, the Panel holds that 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 (under Paragraph 4(b)(ii) of the Policy). The Complainant’s refers to the previous UDRP case (Bart van den Bergh Merk-Echt v. Kentech Company. Inc. WIPO Case No. D2005-0127) against the same Respondent which indicated that the Respondent is engaged in cybersquatting as a pattern.

The Panel finds sufficient evidence that the Respondent registered the disputed domain name for the purpose of selling it as it is clearly shown at the home page of its website.

The fact that the Complainant’s offers to sell the domain name for reasonable amount of USD250.00 and USD500.00 accordingly were not accepted or answered by the Respondent, in the Panel’s view, indicates the Respondent’s intention to sell the disputed domain name for the amount much higher that out-of-pocket costs directly associated with the registration of the domain name. Thus, the Panel believes that the Respondent is in violation of Paragraph 4(b)(i) of the Policy.

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 and is using the disputed domain name in bad faith.

7. Decision

The 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 <maxonmotors.com> be transferred to the Complainant.

Irina V. Savelieva
Sole Panelist

Dated: July 28, 2005