WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novelis PAE v. Alupro Worldwide
Case No. D2005-0843
1. The Parties
The Complainant is Novelis PAE, Voreppe, France, represented by Cabinet Germain & Maureau, Lyon, France.
The Respondent is Alupro Worldwide, Arnhem, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <alpur.com> (the “Domain Name”) is registered with Tucows, Toronto, Ontario, Canada (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on August 5, 2005, and in hardcopy on August 8, 2005. On August 5, 2005, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name and received a response on the same day, confirming that the Respondent is the current registrant of the Domain Name. On August 12, 2005, the Center sent an e-mail to the Registrar, stating that it had noticed that the domain name <alpur.com> was going to expire on September 13, 2005, before the conclusion of the UDRP administrative procedure. The Center therefore requested the Registrar to maintain registrar lock on the Domain Name until the case is concluded. On the same date, the Registrar confirmed by e-mail that the Domain Name was under registrar lock during the pending administrative proceedings, save and except for the scheduled expiration of the Domain Name at the end of its registered term, on September 13, 2005. It further stated that after that date, even though the name will have expired, it would remain in the Registrar’s database for an additional 40-day grace period.
Also on August 12, 2005, the Center conducted its review and verified that the Complaint satisfied the formal requirements set out in 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”). On the same date, the Center informed the Respondent by e-mail, fax and hard copy (which was delivered by courier on August 15, 2005) that an administrative proceeding had been commenced against it and set the date for reply as September 1, 2005. The Respondent did not submit a Response. On September 2, 2005, a Notification of Respondent Default was communicated to the Respondent by e-mail.
The Center appointed Mr. Tobias Zuberbühler as the sole panelist in this matter on September 9, 2005. The Panel finds that it was properly constituted. The Panel has submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On September 13, 2005, the registered domain name <alpur.com>, as announced by the Registrar, expired and has not been reactivated since.
4. Factual Background
The Complainant is Novelis PAE, formerly Pechiney Aluminium Engineering, a company affiliated with the Alcan Pechiney Group, one of the worldwide leaders in the aluminium industry.
Pechiney Rhenalu, another subsidiary of Pechiney, had a number of relevant trademark registrations and applications for the Alcan Pechiney Group, including ALPUR, in various jurisdictions. The Complainant submitted evidence of valid trademark registrations by Pechiney Rhenalu between 1992 and 1997 in France, Canada, USA, Taiwan, South Korea, India, New Zealand, Thailand and Venezuela.
Following a reorganisation of the Alcan Pechiney Group, a transfer of assets from Pechiney Rhenalu to the Complainant Novelis PAE took place, including all trademark registrations for ALPUR. The Complainant has proven such transfer by a trademark assignment deed dated January 6, 2005.
The trademark ALPUR has been used by the Complainant for many years on a worldwide scale in relation with degassing and filtration equipment applied in the transformation and treatment of metals and the manufacture of aluminium.
The Respondent is Alupro Worldwide, a supplier of foundry consumables, especially involved in technical ceramics in the global aluminium industry. Its main objective is to find new long-lasting solutions for molten aluminium. It manufactures and distributes equipment for aluminium manufacturers and transformers.
The Domain Name was registered on September 13, 1999.
5. Parties’ Contentions
A. The Complainant
The Complainant objects to the use of the Domain Name by the Respondent and bases its Complaint on the following grounds:
1. The Domain Name is identical or at least confusingly similar with the trademark ALPUR owned by the Complainant. The trademark was registered in several countries before the contested domain name appeared on the Internet.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name.
a) It is neither affiliated with the Complainant, nor has it been authorised to register and use the trademark, particularly not in a domain name.
b) The Respondent does not run any business under the trademark ALPUR and is not known by consumers under this name.
c) The Domain Name was, up to its expiry, redirected towards the Respondent’s main company website, where it even refers to the Complainant’s registered trademark ALPUR, without making a bona fide offer of the genuine products of the Complainant. The Respondent is a direct competitor of the Complainant and is using the Complainant’s reputation and notoriety to promote its own goods, presented as being compatible or intended to fit genuine ALPUR equipment. The Complainant, however, has never authorised the Respondent to do so.
3. The Domain Name was registered and is being used in bad faith.
a) As both the Respondent and the Complainant operate in the same narrow market of supplying know-how, technology and equipment to aluminium manufacturers and metal transformers, the Respondent could not have ignored the Complainant’s rights when registering the Domain Name. At the least, the Respondent was aware of the Complainant’s protected trademark, as the references in its own website prove.
b) The Respondent causes confusion among the Complainant’s customers and benefits from the goodwill vested in the trademark ALPUR. The Respondent has therefore registered and is making use of the Domain Name in bad faith.
The Complainant requests the Panel to order a transfer of the domain name <alpur.com> from the Respondent to the Complainant.
B. The Respondent
The Respondent did not submit a Response.
6. Discussion and Findings
The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules). In this case, the Panel finds that the Center complied with all formalities and that the Complaint and Notification of Respondent Default were properly notified to the Respondent. The Panel finds that the Respondent had proper notice of this administrative proceeding.
Because the Respondent has defaulted in providing a Response to the Complaint, the Panel is directed to decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of the Complainant’s undisputed representations (Rules, paragraph 15(a)).
Paragraph 4(a) of the Policy sets forth three elements that must be established by the Complainant to merit a finding that the Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) the Respondent’s 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 Respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The second level domain “alpur” is identical to the Complainant’s trademark.
The fact that the trademark had originally been registered by Pechiney Rhenalu and only transferred to the Complainant in January 2005 does not have any influence on the Complainant’s rights. As set forth in Video Images, LLC v. Stoebner, Jeff, WIPO Case No. D2004-0887, “the assignee steps into the shoes of the assignor, and can claim priority in the trademark dating back to the time of the assignor’s first use.”
The Complainant therefore has fulfilled the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the following circumstances can demonstrate that the Respondent has rights to or legitimate interests in the Domain Name:
(i) before any notice was given to the Respondent of the dispute, the Respondent used, or demonstrably made preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even though it has not acquired any trademark or service mark rights; 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.
It is a consensus view of WIPO UDRP panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, “http://www.wipo.int/amc/en/domains/search/overview/index.html”) that the overall burden of proof under paragraph 4(c) of the Policy rests with a complainant, which is required to establish that the respondent prima facie lacks any rights to, or legitimate interests in, a domain name. If the respondent fails to answer the claim, the complainant is deemed to have satisfied its burden of proof (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Complainant represented that the Respondent is not an affiliate of the Complainant, nor is it a subsidiary, franchisee, licensee, agent, distributor or an authorised dealer. The Complainant has never authorised the Respondent to register the trademark.
The Complainant points out further that the Respondent is a direct competitor of the Complainant. The Respondent does not run any business under the trade name, corporate name, trademark or service mark ALPUR and is not known by the public, or by professionals of the relevant trade, under this name. Finally, the Respondent redirected the website corresponding to the Domain Name towards the Respondent’s main website presenting its company and its own goods and services.
It is clear to the Panel that the Respondent, by using the Domain Name, is making an illegitimate commercial and unfair use of the Domain Name. The Respondent benefits from the Complainant’s trademark ALPUR which is commonly known in the field of business in which both the Respondent and the Complainant are active. The Respondent’s intent is clearly to exploit user confusion by diverting potential costumers to its own goods and services. Consumers that seek information on the Internet about the Complainant’s ALPUR degassing and filtration equipment in the metal industry will inevitably come across the Respondent’s website, where the Respondent offers the same or similar products of its own brand.
As the Complainant correctly points out, the Respondent was aware of the Complainant’s trademark. The Respondent even refers to it explicitly on the “www.alpur.com” website:
“NEW Sialon IITM Heater Tube for ALPUR® degassing systems has proven better non-wetting properties resulting in a 2.5 better Thermal Conductivity (38W/mK).”
On the Respondent’s main website, “www.alupro.com”, there is an even more explicit reference to ALPUR, stating that:
“Sialon II™ heater tubes from Alupro can take the heat! With an extensive product offering from small style sheaths to the largest ALPUR®* heater tubes, Alupro has the experience and capability to satisfy your needs. […]
*Disclaimer: ALPUR® is a registered trademark of PAE Novelis SA in France. ALUPRO Worldwide is not affiliated or sponsored by PAE Novelis SA.”
As the Respondent failed to submit a Response, the Complainant’s arguments remain undisputed and appear plausible.
For the reasons set forth above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the Domain Name has been used and registered in bad faith if:
(i) circumstances indicating that the Respondent has registered and 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 the Respondent’s 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 the Respondent’s website or location or of a product or service on its website or location.
Even though the website corresponding to the Domain Name was deactivated on September 13, 2005, the Panel considers the Domain Name as still “being used in bad faith” by the Respondent for the following reasons.
The Domain Name was still active when the Complaint was filed. It was set to expire on September 13, 2005 and the Domain Name is currently in a redemption period and can therefore still be redeemed by the Respondent.
The record does not establish that the Respondent’s conduct falls within any of the first three of the categories listed in paragraph 4(b) of the Policy.
The fourth of the enumerated circumstances states that, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with a mark in which the Complainant has rights.
The Complainant rightfully claims that the Respondent registered and used the Domain Name in bad faith by re-directing Internet users, particularly customers and potential customers of the Complainant, to the website of the Respondent, a company which directly competes with the Complainant (see NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768).
The Panel also agrees with the Complainant that even if customers who have been diverted to the Respondent’s website are not confused and understand that the advertised heater tubes are not original ALPUR components, they might not make a new search for the Complainant’s website, but instead decide to purchase the Respondent’s goods.
In the Panel’s opinion, the Respondent, as a competitor, clearly acquired the Domain Name to attract, for commercial gain, users to its website by creating a likelihood of confusion. As the Panel has examined above, the Complainant holds a well-known trademark in the relevant industry, and the Respondent was aware of this fact. According to Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365, this indicates the Respondent’s bad faith.
The Respondent’s explicit reference to the registered trademark ALPUR on the website corresponding to the Domain Name cannot be considered a disclaimer. Contrary to the Respondent’s main website, “www.alupro.com”, there is no explicit disclaimer (see section 6 above). However, and even if there had been such a disclaimer, pursuant to the view of WIPO panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, “http://www.wipo.int/amc/en/domains/search/overview/index.html”) the existence of a disclaimer cannot cure bad faith, when bad faith has been established by other factors. As set out above, such other factors exist as evidence of the Respondent’s bad faith. In addition, despite the Respondent’s reference to the Complainant’s trademark, the Respondent did not undertake efforts to eliminate any possible confusion caused to Internet users by the website linked to the Domain Name, and therefore acted in bad faith (see Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698).
To summarise, the Respondent has registered and is using the Domain Name in bad faith in accordance with paragraph 4(b)(iv) of the Policy.
For the foregoing reasons and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the contested Domain Name <alpur.com> be transferred to the Complainant.
Date: September 23, 2005