WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alfa Laval AB and Alfa Laval Corporate AB v. Alfalava.com
Case No. D2007-1881
1. The Parties
Complainant is Alfa Laval AB and Alfa Laval Corporate AB, of Lund, Sweden, represented by Advokatbyrån Gulliksson AB, Sweden.
Respondent is Alfalava.com, c/o whois IDentity Shield, of Vancouver, Canada.
2. The Domain Name and Registrar
The disputed domain name <alfalava.com> is registered with Nameview, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2007. On December 21, 2007, the Center transmitted by email to Nameview, Inc. a request for registrar verification in connection with the domain name at issue. On December 28 and 31, 2007, and January 3, 2008, the Center reminded Nameview, Inc., of its pending request for registrar verification. On January 7, 2008, the Center notified Nameview, Inc. that, unless the Center heard to the contrary from Nameview, Inc, by January 10, 2008, notwithstanding Nameview, Inc.’s failure to respond to the request for registrar verification, the Center would proceed to carry out its further responsibilities under the Uniform Domain Name Dispute Resolution Policy (the “Policy”) and the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) on the assumption that information provided in Nameview, Inc.’s public WHOIS database was correct, and also on the assumption that Nameview, Inc. was carrying out its responsibilities as registrar of the disputed domain name. The Center received no reply from Nameview, Inc. and, on January 11, 2008, the Center advised ICANN of its decision to proceed with notification of the Complaint in light of the time lines provided for in the Policy and Rules. The Center verified that the Complaint satisfied the formal requirements of the 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 Respondent of the Complaint, and the proceedings commenced on January 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 1, 2008.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 12, 2008. 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
Complainant is comprised of a holding company and its controlled affiliate company, each registered in Sweden, which owns the trademark registrations on the basis of which the Complaint is brought. In light of the common control of the companies, they are referred to herein jointly as “Complainant”.
Complainant has registered the word trademark ALFA LAVAL in countries around the world, including in Sweden, the European Union and the United States of America, with its earliest trademark registration in Sweden dating back to 1897. Complainant’s registrations for ALFA LAVAL at the Swedish Patent and Registration Office (PRV) include registration number 6089, dated December 13, 1897, in International Classes (ICs) 7 and 11, covering, inter alia, machines for use in dairies and dairy apparatus for heating and cooling; registration number 262038, dated November 25, 1994, in ICs 37 & 42, covering, inter alia, services and services regarding pilot studies, and registration number 328220, dated September 11, 1998, in ICs 3, 4, 5, 6, 7, 8, 9, 11, 21 & 37, covering, inter alia, laundry services, sterile preparations for cleaning machinery, metal tanks, milking machines and equipment used in animal raising. Complainant’s Community Trademark (CTM) for ALFA LAVAL at the OHIM is registration number 003481702, dated March 3, 2005, in ICs 1, 6, 7, 9, 11, 37 & 42. Complainant’s trademark registrations for ALFA LAVAL on the Principal Register of the United States Patent and Trademark Office (USPTO) include registration number 0764251, dated February 4, 1964, in ICs 6, 7, 8, 9, 11, 12, 16, 21 & 28; registration number1163281, dated August 4, 1981, in IC 6; registration number 1163412, dated August 4, 1981, in ICs 7 & 11; and registration number 3173069, dated November 21, 2006, in ICs 1, 6, 7, 9, 11, 37 & 42. Complainant has provided evidence that such registrations are subsisting. (Complaint, Annex 4)
Complainant is a leading global supplier of food processing equipment, including for the dairy industry. Complainant markets and sells its products and services under the ALFA LAVAL trademark. It operates a commercial Internet website at “www.alfalaval.com”. Complaint asserts that its trademark is well known among participants in the food processing industry.
According to Nameview, Inc. WHOIS database reports furnished by the Center and by Complainant, Respondent “Alfalava.com” is registrant of the disputed domain name. According to those reports, the record of registration of the disputed domain name was created on May 24, 2005. Additional registrant information, including administrative and technical contact information is listed in care of Whois IDentity Shield of Vancouver, Canada. The address provided for Whois IDentity Shield is the same as the address listed for the registrar, Nameview, Inc., on its Domain Registration Agreement.
The disputed domain name <alfalava.com> is used to direct Internet users to a web portal headed “Welcome to alfalava.com”. The center part of the portal home page lists “Sponsored Results for ALFA LAVAL” which, at a December 17, 2007 visit by Complainant, provided links to “Alfa Laval, Search Leading Offers for Everything Alfa Laval”; “Mechanical Seals: We Have Arrived”; “Laval”, “Laval Hotel” and “Laval – Cheap Rates”. Each of the aforementioned links connected with third-parties not associated with Complainant. The left-hand column of the portal home page included a number of different “Related Searches” headings including “Centrifuge”, “Industrial Pumps” and “Internet dating service”. (Complaint, Annex 5) The Panel visited the website identified by the disputed domain name on February 21, 2007. The centrally- listed sponsored results were different than those found by Complainant on December 17, 2007, though in similar categories. This suggests that the web portal addressed by the disputed domain name is dynamic in the sense that the content varies over time depending upon an algorithm employed by the “link-farm” host.
The Registration Agreement in effect between Respondent and Nameview, Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it holds rights in the trademark and service mark ALFA LAVAL, as evidenced by registration tracing back over 100 years and by use in commerce. Complainant states that its trademark is used in countries around the world and is “long since quite famous and established”.
Complainant contends that the disputed domain name is confusingly similar to its trademark, omitting only the last letter of the trademark. Complainant indicates that an easily made typing error will redirect Internet users from Complainant’s website to the website addressed by the disputed domain name, and that Respondent deliberately seeks to take advantage of such misspelling, referring to Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548 and Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314.
Complainant states that Respondent has no rights or legitimate interests in the disputed domain name. Complainant argues that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, has not been commonly known by the disputed domain name, and is not making a legitimate noncommercial or fair use of the disputed domain name.
Complainant alleges that Respondent’s use of the disputed domain name to direct Internet users to a link farm is taking unfair advantage of Complainant’s rights in its well-known trademark for commercial gain. Complainant argues that because Complainant’s trademark is famous, it is quite probable that Respondent had knowledge of it when it registered the disputed domain name. Complainant further argues that Respondent’s use of a registration identity shield is evidence of bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. 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., Rules, paragraph 2(a)).
The case file transmitted by the Center to the Panel includes a courier tracking record showing that the Complaint was successfully delivered to the address of Respondent in care of the identity shield service provider indicated in the publicly available record of registration for the disputed domain name. In addition, e-mails were sent from the Center to the addresses for Respondent included in its record of registration. The Center has taken those steps designated by the Rules for discharging its responsibility to provide notice of the proceedings to Respondent.
The registrar, Nameview, Inc., offers IDentity Shield among its services to domain name registrants (Panel visit to http://www.nameview.com, February 21, 2008). The registrar in this proceeding failed to confirm the registration information available on its publicly available WHOIS database with respect to Respondent. Neither the Panel nor the Center can be certain that Nameview, Inc. notified Respondent of the Complaint that was physically delivered to Nameview’s offices. However, Respondent elected to designate Nameview, Inc. as the agent to receive such deliveries by listing the name and address of IDentity Shield as its contact point in its record of registration. It is therefore reasonable for Respondent to bear the risk that may be associated with a potential failure on the part of Nameview/IDentity Shield to forward courier delivery.
The Panel is satisfied that Respondent was given adequate notice of these proceedings within the context of the Policy and Rules, and that each party has been given adequate opportunity to present its position.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant is the owner of trademark registrations in Sweden, the European Union, the United States of America and other countries for the term “Alfa laval”, and has long made use of that term in connection with marketing and selling products and services in countries around the world (see Factual Background, supra). The Panel determines that Complainant has rights in the trademark ALFA LAVAL.
Complainant has submitted evidence that the ALFA LAVAL trademark is well-known within the food processing industry. The extent of Complainant’s worldwide marketing and sales activities, as indicated on its website, supports that assertion.
Complainant has not indicated whether ALFA LAVAL has some meaning in the Swedish language, or whether it is a coined term. From the standpoint of Complainant’s English language trademark registrations in the United States of America, the English language spoken in Vancouver, Canada (the location of Respondent’s registrar and identity shield provider), and the English language used on Respondent’s web portal, ALFA LAVAL is inherently distinctive, having no commonly understood English language meaning. The Panel does not consider it necessary to decide whether ALFA LAVAL is a well-known trademark for purposes of this proceeding because ALFA LAVAL is a sufficiently unique term in the English language that it is exceedingly unlikely that Respondent would have adopted that term without prior knowledge of Complainant’s usage.1
The disputed domain name, <alfalava.com>, incorporates Complainant’s trademark, excluding only the last letter of that mark. The disputed domain name and Complainant’s trademark have a nearly identical appearance and sound. Neither has an English-language meaning. The Panel accepts that typographical omission of the last letter of Complainant’s trademark would be a relatively common mistake by Internet users seeking Complainant’s website (see Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548 referenced by Complainant). The Panel determines that the disputed domain name and Complainant’s trademark are confusingly similar. This conclusion is reinforced by the fact that the heading “Sponsored Results” appearing on Respondent’s web portal is tied to Complainant’s ALFA LAVAL trademark spelled correctly, and not to “alfa lava” or “alfalava” (as appearing in the disputed domain name).
The Panel finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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.” (Policy, paragraph 4(c))
Respondent has not been authorized by Complainant to use its ALFA LAVAL trademark. There is no evidence to show that Respondent has been commonly known by the disputed domain name.
Respondent is using the disputed domain name and Complainant’s trademark to direct Internet users to a web portal providing links to products competitive with those of Complainant (as well as to unrelated goods and services). Respondent is acting solely as a conduit to third party offers of goods, and is presumably receiving some form of compensation for click-throughs to such third party offers.2 Complainant is merely taking advantage of the goodwill associated with Complainant’s mark to offer goods and services of third parties, including competitors of Complainant. The only evident purpose for using Complainant’s distinctive trademark is to draw Internet users to Respondent’s website. This does not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139, and Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah, WIPO Case No. D2007-1368.
Respondent’s use of the disputed domain name is plainly not “noncommercial”, and it is not “fair use” in any generally accepted sense of that term as a matter of trademark law. Respondent is not using Complainant’s mark for comparative advertisement, or to fairly describe products or services, or for other generally accepted fair use purposes. Respondent is merely using Complainant’s mark to misleadingly attract Internet users to its website.
Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating that “by using the domain name, [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 [respondent’s] website or location or of a product or service on your website or location” (id., paragraph 4(b)(iv)).
Respondent has used the disputed domain name, which is confusingly similar to Complainant’s trademark, for the purpose of intentionally attracting for commercial gain Internet users to Respondent’s website, by creating confusion as to source, sponsorship, affiliation or endorsement by Complainant of Respondent’s website. Complainant’s trademark is inherently distinctive, and it is reasonable to infer that Respondent adopted the disputed domain name with the specific intention of taking advantage of the goodwill established by Complainant in its trademark. While Respondent’s website is being addressed by Complainant’s trademark, the content on Respondent’s website refers to and links to third parties offering goods competitive with those of Complainant. Respondent is presumably receiving some form of compensation for click-throughs to such third party competitors. Such use of the disputed domain name constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Complainant has satisfied each of the three elements necessary for a finding of abusive domain name registration and use within the meaning 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, <alfalava.com>, be transferred to Complainant.
Frederick M. Abbott
Date: February 26, 2008
1 The Panel appreciates that Respondent’s selection of the disputed domain name may have been generated by computer program algorithm. Even so, the algorithm would almost certainly have made its selection by identifying the usage of Complainant’s mark. Respondent may not hide behind the curtain of an algorithm.
2 Even if Respondent is not directly receiving compensation, the party responsible for placing content on Respondent’s website presumably is receiving compensation. Respondent is ultimately responsible for the content of its website and the commercial activities conducted through it.