WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Imperial Chemical Industries Plc , Desowag GmbH v. BusinessService Limited
Case No. D2007-0998
1. The Parties
The Complainants are (i) Imperial Chemical Industries Plc, London, United Kingdom of Great Britain and Northern Ireland (First Complainant); and (ii) Desowag GmbH, Betriebsstatte, Rheinberg, Germany (Second Complainant), both Complainants with correspondence address at ICI Group Intellectual Property, Wexham Road, Berkshire, United Kingdom of Great Britain and Northern Ireland, represented by Blake Lapthorn Tarlo Lyons Solicitors, Segensworth, Fareham, Hampshire, United Kingdom of Great Britain and Northern Ireland.
The Respondent is BusinessService Limited, Xylamon, DP Manager, St. Petersburg, The Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <xylamon.com> is registered with NICCO Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2007. On July 12, 2007, the Center transmitted by email to NICCO a request for registrar verification in connection with the domain name at issue. On July 20, 2007, NICCO transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 24, 2007 the Center received a telefax from the Complainant’s Authorized Representative, requesting the suspension of the administrative proceedings due to settlement discussions among the parties. The Center confirmed the suspension of the case until August 23, 2007 in its communication to the parties dated July 25, 2007. The Complainant informed the Center by telefax on August 22, 2007 that the parties have not been able to settle the disputed matter. The Center then proceeded to the verification of formal compliance of the Complaint. 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 August 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2007.
The Center appointed Zbynek Loebl as the sole panelist in this matter on October 5, 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 Complainants are Imperial Chemical Industries (ICI), and its affiliate company Desowag GmbH. Both Complainants own a large number of trademarks XYLAMON and its various representations in many countries, including Russian Federation.
The Respondent is the holder of the disputed domain name <xylamon.com>. The disputed domain name was first registered on January 8, 2006 by Eurobox Ltd in Russia. The Complainants wrote two letters to Eurobox requesting the transfer of the domain name. After apparently receiving these letters, on May 29, 2006 Eurobox Ltd. emailed to the First Complainant that the disputed domain name was transferred to the Respondent.
5. Parties’ Contentions
The Complainants contend that the disputed domain name <xylamon.com> reproduces entirely registered trademarks owned by each of the Complainants in a number of countries, including Russian Federation. The XYLAMON trademark is a well-known mark with a long history of usage. Two of the Complainants’ trademarks registered in the Russian federation date back to 1974.
The Complainants further contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the disputed domain name was registered and used in bad faith, since i) before the registration of the disputed domain name, the Respondent must have been aware of the existence of the registered trademarks of the Complainants, owing to their worldwide reputation; (ii) the Respondent has no association with either of the Complainants and is not known under the name XYLAMON; and (iii) the disputed domain name does not resolve to a website or other on-line presence.
The Complainants’ representative emailed and wrote to the Respondent requesting the transfer of the disputed domain name. The Respondent emailed to the Complainants’ representative in response offering to transfer the domain name in return for USD 450. The Complainants referred in their Complaint to the UDRP Decision in Universal Spheres Inc., d/b/a GoldenPalace.com v. BusinessService Ltd. (NAF Case No. FA0607000746952, where the Respondent was the same entity as in this administrative proceeding and there was the similar offer of USD 450 for the transfer of the domain name.
The Complainants request that the disputed domain name is transferred to the Second Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name wholly incorporates the Complainants’ XYLAMON trademarks, which is sufficient to establish identity for the purposes of the Policy (see e.g. Magnum Piering Inc. v The Mudjackers and Garwood S. Wilson Srov, WIPO Case No. D2000-1525). Therefore, the Panel consludes that the disputed domain name is identical to the Complainants’ trademarks. The condition of Paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Based on the Complaint and in the absence of any submission from the Respondent, there is no evidence that the Respondent has any connection or affiliation with the Complainants. In addition, the website under the disputed domain name was passive, without any apparent usage. Finally, the Respondent is not known under the name “Xylamon”. Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in respect to the disputed domain name, as set forth in Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel’s view is that the Respondent must have been aware of the Complainants’ trademarks when he acquired the disputed domain name from Eurobox Ltd. The XYLAMON trademark is a registered and widely known mark and it consists of a created, invented word, not a descriptive or generic word. The Panel also notes that the fact that the Respondent did not originally register the disputed domain name, but rather apparently (and indeed somewhat suspiciously only) acquired it from the original registrant shortly after the latter received the Complainant’s letters requesting transfer. The Panel in any case agrees with the Complainant that the apparent transfer of the disputed domain name to the Respondent is to be interpreted as equivalent to a new registration. It also seems on balance likely that the Respondent continued in bad faith registration and use of the disputed domain name of the original registrant, Eurobox Ltd.
The disputed domain name does not resolve into a website or other on-line presence. The Respondent offered the disputed domain name to the Complainant for the sum of USD 450, which is substantially higher amount than the cost of registration. In addition, as Complainant pointed out, the Respondent has engaged in at least another similar registration of infringing domain name. In regard to the apparent passive holding of the disputed domain name, the Panel finds it difficult to conceive of any good faith use by the Respondent that would not conflict with the Complainant’s trademark rights in XYLAMON. Finally, Respondent did not provide any counter-arguments to the contentions of the Complainants.
In light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith, as set forth in Paragraph 4(a)(iii) of the Policy.
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 <xylamon.com> be transferred to the Second Complainant.
Dated: October 19, 2007