WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nuplex Industries Limited v. Nuplex
Case No. D2007-0078
1. The Parties
The Complainant is Nuplex Industries Limited, of Auckland, New Zealand, represented by Mallesons Stephen Jaques, Australia.
The Respondent is Nuplex, of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <nuplex.com> is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2007. On January 22, 2007, the Center transmitted by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.com a request for registrar verification in connection with the domain name at issue. On January 25, 2007, Korea Information Certificate Authority Inc. d/b/a DomainCa.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, 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 February 5, 2007. 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 February 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2007.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on March 12, 2007. 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 Complainant is a company registered in New Zealand under the name Nuplex Industries Limited.
The Complainant is in the business of producing and supplying technical materials used in a broad range of manufacturing processes including resins for use by the paint, ink, adhesive, fiber reinforced plastics, construction, paper and textiles industries.
The Complainant has operations in Australia, Asia, Europe and the Americas.
The Complainant is listed on both the New Zealand (“NZX”) and the Australian (“ASX”) Stock Exchange.
The Complainant is the registered owner of the New Zealand trademark Nos. 223938, 223939, 223940, 223941, 223942 and 223943 NUPLEX.
Additionally, the Complainant is the registered owner of Australia trademark Nos. 593088, 593089, 593090, 293081, 593092 and 593093 NUPLEX.
The Complainant, in addition to its registered trademarks in Australian and New Zealand, is the registered owner of trademarks in other jurisdictions.
The Complainant operates the website “www.nuplex.co.nz” and is registrant of the domain name.
The “www.nuplex.co.nz” website was established on March 18, 1997.
The disputed domain name <nuplex.com> was registered on October 28, 2004.
5. Parties’ Contentions
The Complainant contends the following:
a. When comparing domain names with trademarks, the top level domain elements of a domain name have no distinguishing capability and may be disregarded when considering whether a domain name is identical or confusingly similar to the trademark. The Complainant therefore contends that the disputed domain name is identical to the Complainant’s NUPLEX trademarks.
b. Neither the Respondent nor any individual, business or other organization with which it may be associated has been authorized by the Complainant to represent its business.
c. The use by the Respondent of the Complainant’s domain name, <nuplex.co.nz>, numerous times on the disputed website, together with the use of words synonymous with the Complainant’s business such as resin and coating, demonstrates that the Respondent is perfectly aware of the Complainant’s business.
d. The Respondent can have no legitimate reason to use the Complainant’s domain name as a fraudulent hyperlink on the pages to which the disputed domain resolves.
e. The Complainant submits that the Respondent demonstrably has no rights or legitimate interests in respect of the domain name, and is well aware that it has no such rights or interest.
f. It is self evident that the Respondent has registered and is using the domain name in bad faith.
g. The Complainant contends the Respondent’s use to ‘monetise’ the disputed domain name gives rise to a presumption of bad faith pursuant to paragraph 4(b)(iv) of the Policy.
h. Both the use of false hyperlinks and the references to the Complainant’s products and services, which are intimately associated with the Complainant’s business, constitute compelling evidence of bad faith.
i. The disputed domain name was acquired by the Respondent with a view to on-selling that domain name to the Complainant for an amount that exceeds the Respondent’s legitimate out of pocket expenses.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of Proceeding
The Complaint was prepared in the English language. There has been no response in any language.
According to Paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. It is noted, however, that the spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
In this case, the Complainant is not able to communicate efficiently in Korean and the Respondent has not participated in these proceedings, but has sent e-mails to the Complainant displaying reasonable proficiency in English. Therefore, in consideration of the above circumstances and in the interest of fairness to both Parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case. However, Korean language communications have been reviewed by the Panel.
B. Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds 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, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.
In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules, as considered appropriate (see paragraph 14(b) of the Policy; see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark or service mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
C. Identical or Confusingly Similar
The domain name at issue wholly incorporates the Complainant’s registered mark and business name. Numerous panels have held that where a domain name substantially incorporates the Complainant’s mark, that is sufficient to make the domain name “confusingly similar” within the meaning of the Policy. See Amazon.com, Inc. v. MCL International Limited, WIPO Case No. D2000-1678 at page 4; Nicole Kidman v. John Zuccarini, d/b/a/ Cupcake Party, WIPO Case No. D2000-1415 at page 3; Xerox Corporation v. Imaging Solution, WIPO Case No. D2001-0313 at page 5; Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 at page 4.
For the foregoing reasons, the Panel concludes, that the disputed domain name is confusingly similar to the Complainant’s registered mark. Accordingly, the first element under paragraph 4(a) of the Policy has been met by the Complainant.
D. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name. In connection with the burden of proof, several past UDRP decisions have held that “once a Complainant establishes prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the domain name; the Panel further notes that the Respondent has not, and has never been, commonly known by the domain name. The Panel’s view is that these facts must be taken as proven provided that they have not been denied by the Respondent.
The Respondent has not submitted a proper response. Therefore, he has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the domain name under paragraph 4(c) of the Policy. Accordingly the Panel holds that the Respondent has no rights or legitimate interests in the domain name pursuant to paragraph 4(c) of the Policy.
E. Registered and Used in Bad Faith
Both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see paragraph 2 of the Policy), a well-established principle is that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s trademark is widely known worldwide in its business sector and considering the content of the website with the domain name, it is unlikely that the Respondent, at the time of registration of the domain name or thereafter, was not aware that he was infringing the Complainant’s trademarks.
Bad faith can be presumed based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s widely known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices of Australia, New Zealand or of other countries would have made the Complainant’s registrations known to the Respondent.
The Respondent has, in using the domain name, diverted Internet users to a competing website. The mere fact of diverting users in this misleading manner is further evidence of bad faith (see Big Dog Holding, Inc. v. Day, NAF Claim No. FA 93554, at paragraph 8) March 9, 2000)).
The conduct described above falls squarely within paragraph 4(b)(vi) of the Policy and accordingly the Panel concludes that the Respondent registered and used the domain name in bad faith.
In light of the above, the Panel concludes that the Complainant has proven bad faith in registration and use on the part of the Respondent.
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, <nuplex.com> be transferred to the Complainant.
Thomas P. Pinansky
Date: April 3, 2007