WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tekni-Plex, Inc. v. Wan-Fu China, Ltd.
Case No. D2007-1065
1. The Parties
The Complainant is Tekni-Plex, Inc., of Somerville, New Jersey, United States of America, represented by Bragar Wexler & Eagel, PC, United States of America.
The Respondent is Wan-Fu China, Ltd., of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <tekniplex.com> is registered with DomainDoorman, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2007, naming “TEKNIPLEX.COM, care of Whois Identity Shield” as the Respondent. On July 23, 2007, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On July 23, 2007, Nameview Inc transmitted to the Center its verification response, informing that Nameview Inc was not the Registrar for the disputed domain name. On August 3, 2007, the Center informed the Complainant that it had been advised by Nameview Inc that the domain name had been deleted. On September 4, 2007, the Center informed the Complainant that the disputed domain name was registered with Sipence (the new Registrar No. 1) and with c/o eNom, Inc. on behalf of eNom, Inc. Customer as the new Registrant. The Center asked the Complainant to amend the Complaint accordingly. Shortly after, the Center received information that the disputed domain name had been transferred to the Respondent. The Center transmitted by email to DomainDoorman, LLC (the new Registrar No. 2) a request for registrar verification in connection with the domain name at issue. On September 18, 2007, DomainDoorman, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint by email on September 24, 2007, and by courier on October 3, 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 October 4, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2007.
The Center appointed P-E H Petter Rindforth as the sole panelist in this matter on October 29, 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.
The Administrative Panel shall issue its Decision based on the Complaint, the Amended Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant was incorporated as Tekni-Plex, Inc. in 1967 and is a global manufacturer of packaging products and materials for the healthcare, consumer and food packaging industries. The Complainant uses the unregistered TEKNI-PLEX brand for foam trays.
The Complainant is the owner of the following U.S. trademark registrations (copies from the TESS database provided as Exhibit B of the Complaint):
No. 2,425,170 TEKNIFLEX (word), registered on January 30, 2001 (first used in commerce on July 17, 1998) in respect of goods in Intl. Class 17, and
No. 2,355,527 TEKNIFLEX (word), registered on June 6, 2000 (first used in commerce on July 17, 1998) in respect of goods in Int. Class 16.
The Respondent registered <tekniplex.com> on September 16, 2007 (as shown from a Whois Search Result, Exhibit C of the Complaint).
No detailed information is provided about the Respondent’s business activities, apart from what is mentioned below by the Complainant.
5. Parties’ Contentions
The Complainant states that it has built a leadership position in its core markets. The Complaint is based on two types of trademark rights: i) the abovementioned U.S. registrations for TEKNIFLEX, and ii) common law rights to TEKNI-PLEX.
The Complainant claims to have made extensive use of the TEKNI-PLEX mark, having developed a valuable goodwill and a strong secondary meaning, via its website at “www.tekni-plex.com” and for foam trays as “TEKNI-PLEX Trays”.
The Complainant argues that the disputed domain name is identical to the TEKNI-PLEX mark, but for the hyphen, and that it is confusingly similar to the TEKNIFLEX mark. According to the Complainant, the letters “F” and “P” are linguistic related “known to linguists as labial phonemes”.
The Complainant states that the Respondent is not commonly known by the domain name and is not licensed or otherwise authorized by the Complainant to use its mark for any purpose. The disputed domain name is not used in connection with a bona fide offering of goods or services.
The Respondent registered the domain name after the filing of the initial Complaint in this matter. It is clear from the contents of the Respondent’s website that the channels of trade in which both Respondent and Complainant operate are identical, as are the target consumers. The Complainant argues that the Respondent has gone to a great deal of time and effort to identify the Complainant’s product categories and provide links for each one to other companies that provide the same or similar products.
The Complainant concludes that the connecting website of the Respondent was created solely to harm Complainant by steering away from business that the Complainant might otherwise obtain, or to create leverage by the threat thereof to demand an extortive price for the purchase by Complainant of the disputed domain name.
Finally, the Complainant argues that the use of a proxy registration service is a further evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The relevant part of the disputed domain name is “tekniplex”.
The Complainant has established rights in the TEKNIFLEX trademark in the U.S. through registration Nos 2,425,170 TEKNIFLEX (word) and 2,355,527 TEKNIFLEX (word). See Men’s Wearhouse, Inc. v. Wick, NAF case FA 117861 (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”).
The disputed domain name is almost identical to the Complainant’s trademark, with the only difference that the letter “F” in the trademark is missing and replaced in the domain name by the letter “p”. As stated by the Complainant, the letters “p” and “f” are linguistically related and the minor difference between the mark and the disputed domain name is not enough to change the impression of the domain name being confusingly similar to the Complainant’s trademark.
The Complainant further claims to have common law rights in the TEKNI-PLEX trademark, referring to the use through its website at “www.tekni-plex.com” and for foam trays (“TEKNI-PLEX Trays”). While this Panel accepts that TEKNI-PLEX seems to have been in some use as a trademark, the Panel is not fully convinced that the Complainant’s use so far is enough to establish common law rights.
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark TEKNIFLEX.
B. Rights or Legitimate Interests
Once the Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy, see Clerical Medical Investment Group Limited v. Clericalmedical.com (Clerical & Medical Services Agency), WIPO Case No. D2000-1228 (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The Respondent is not an authorized agent or licensee of the Complainant and is not commonly known by the domain name.
As shown by Exhibit D of the Complaint, the Respondent is using the disputed domain name for a website displaying sponsored links to several sites offering plastic products related to the Complainant’s goods, thus enabling the Respondent to earn revenues by attracting users to its website. As established in a number of UDRP cases under similar circumstances, such use cannot constitute a bona fide use of the domain name pursuant to paragraph 4(c)(i) of the Policy. See Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315 (“Respondent’s website shows an active web page with a search engine, displaying advertising links to Internet users... the precise mix depending on the country from which the attempt was made to gain access to Respondent’s website… The Panel considers that these circumstances constitute a prima facie case of absence of rights or legitimate interests on the part of Respondent, to whom the onus therefore shifts to establish, by concrete evidence, its rights or legitimate interests in the disputed domain name.”)
By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name.
Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As concluded above, the disputed domain name is confusingly similar to the Complainant’s registered trademark TEKNIFLEX.
The Complainant is based in the United States of America and, although trading worldwide, has not claimed any registered trademark rights outside the United States of America. The Respondent is based in the Bahamas.
The above facts alone cannot be taken as evidence of any bad faith registration and use of the Respondent. However, the further circumstances strongly suggest that the Respondent registered <tekniplex.com> with actual knowledge of both Complainant’s registered trademark TEKNIFLEX.
The disputed domain name resolves to a website displaying sponsored links within the exact field of business of the Complainant. Accordingly, by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the endorsement of its website and of services on that website. This constitutes evidence of both bad faith registration and bad faith use under the Policy, paragraph 4(b)(iv).
Further, the Complainant states that the Respondent’s use of a privacy service is evidence of bad faith registration and use. Use of a privacy service as such is however not indicating any bad faith registration or use. There may be many legitimate reasons for hiding the identity of the domain name holder, such as avoiding spam. Bad faith is only indicated when such use is connected with the registration and use of infringing domain names, such as in this present case.
The Complaint was originally filed on July 17, 2007. The domain name was transferred twice, using different privacy services, until the current Respondent could be identified as the holder of <tekniplex.com>. In a similar case, HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062, the Panel stated: “the Panel is troubled by the Respondent’s use of multiple privacy services to cloak its identity following receipt of notice of this dispute and the commencement of proceedings hereunder. The Panel does not consider the Respondent’s use of a privacy service in and of itself to constitute bad faith under the Policy, but privacy services are subject to manipulation by a registrant seeking to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy or elsewhere…. The Complainant lacked any reasonably effective means of discovering that the Respondent had acquired the disputed domain name”.
In the absence of any clarification or statements to the contrary from the Respondent, the Panel concludes that the Respondent registered and is using the domain name with the only intention of attracting Internet users to its own website through a confusion with the Complainant’s trademarks.
Accordingly, the Complainant has succeeded in proving the three elements within Paragraph 4(a) 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, <tekniplex.com> be transferred to the Complainant.
P-E H Petter Rindforth
Dated: November 12, 2007