WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Atlas Copco Aktiebolag v. basiceparts / Contactprivacy.com
Case No. D2011-0426
1. The Parties
The Complainant is Atlas Copco Aktiebolag of Nacka, Sweden, represented by Atlas Copco Canada Inc., Canada.
The Respondent is basiceparts of Charlotte, Vermont, United States of America / Contactprivacy.com of Toronto, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <atlascopcorepair.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2011. On March 7, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On March 7, 2011, Tucows Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 8, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed two subsequent amended versions of the Complaint on March 9 and 11, 2011. The Center verified that the final version of the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 March 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2011. Apart from the email sent by the administrative contact for the Respondent on March 9, 2011, no further communications were received from Respondent.
On March 11, 2011, the Complainant filed a ‘Second Amended Complaint’ in response to the communications made by the Respondent.
The Center appointed James A. Barker as the sole panelist in this matter on April 15, 2011. 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 was incorporated in Sweden in 1873. The Complainant and its subsidiaries are collectively known as “Atlas Copco” and “the Atlas Copco Group” and employ around 33,000 people worldwide. The Complainant’s business includes the development, manufacture, marketing and servicing (including repair) of compressed air equipment, industrial tools, assembly systems, and construction equipment including mining equipment. The Complainant’s products are sold under various brands, including the “Atlas Copco” brand. The Complainant’s main website is located at “www.atlascopco.com”.
The Complainant is the owner of a number of registered marks in many countries around the world for ATLAS COPCO, registered as early as 1977. These include marks registered in Sweden, Canada, and the United States of America.
The Complainant asserts it sent a ‘cease and desist’ letter to the Respondent on November 9, 2010 and again on February 28, 2011. There is no evidence in the case file of these communications.
The Registrar’s communications in connection with this case do not indicate the date on which the disputed domain name was first registered by the Respondent. However, the WhoIs details for the disputed domain name indicate that the domain name has a creation date of November 3, 2010.
The Complainant provides evidence that the disputed domain name reverted to a site relating to “Ferry Road Business Center” and appears to relate to local skiing, maple syrup, capacitors, asset recovery and/or inventory.” The case file indicates that, as at April 15, 2011, the disputed domain name reverted to the same website - titled “basicEparts”. At the date of this dispute, the disputed domain name reverts to apparently the same site. At the homepage for that website is the text “Vermont is famous for cows and capacitors, syrup and semiconductors. While many in Vermont turn sap into something sweet, we turn capacitors, I.C.s, capacitors, connectors and more into a sweet deal for our customers. By providing computerized tracking of your consigned inventory, we can increase your asset recovery. You can establish acceptable percentage recoveries and be assured of prompt payment with a time line defined byout pre-assigned by agreement with basicEparts.”
5. Parties’ Contentions
The Complainant claims that the disputed domain name is identical or confusingly similar to its mark, except that the disputed domain name contains the descriptive word “repair”. The inclusion of that word in the disputed domain name does not reduce the likelihood of confusion with the Complainant’s mark. The Complainant refers to a number of previous cases under the Policy in which the relevant addition of the word “repair” to a mark was found to be confusingly similar. Those cases include e.g. Dell Inc. v. Intercardnetwork/Jonathan Jairo Aguirre Huertas, WIPO Case No. D2004-0788 (involving the domain name <dellinspironrepair.com>).
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent registered the disputed domain name decades after the Complainant began using its trademark. The Respondent is not licensed or otherwise authorized by the Complainant to use the Complainant’s trademark, or to registered any domain names incorporating that mark. The Complainant says that the Respondent cannot claim any rights or legitimate interests under paragraph 4(c) of the Policy.
The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith, for the purpose of paragraph 4(b)(iv) of the Policy. Paragraph 4(b)(iv) of the Policy relevantly provides that there is evidence of bad faith in circumstances where the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The Complainant points to a series of prior cases under the Policy, including those where the respondent’s website’s pointed to a collection of links to other websites: e.g., Joe David Graedon v. Modern Limited – Cayman Web Development, WIPO Case No. D2003-0640.) The Complainant says that the Respondent’s bad faith is evidenced by the fact that the Respondent had actual or constructive knowledge of the Complainant’s mark.
The Respondent filed no formal Response in connection with this case. However on March 9, 2011, the Respondent sent an email to the Center, requesting an extension to the due date for the Response and stating: “Currently, the key parties are not available, being out of the country. Regardless: Their [sic] should be no dispute, as this website is clear indication of what we do, much like an independent car repair facility can state that they work on FORD cars, and the customers clearly recognize that they are not FORD Motor Company. As such, we work on Atlas Copco units, and no one has ever mistaken us for Atlas Copco. The website name is of significant monetary value to BasicEparts, and so we do not wish to ‘give it up’, nor will we cease using it.”
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below, immediately following a consideration of the Complainant’s supplemental filing. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Supplemental Filing
On March 11, 2011, the Complainant submitted a ‘Second Amended Complaint’, in response to the email sent by the Respondent on March 9, 2011. As noted above, the Rules provide that the Panel is to decide the dispute on the basis of statements and documents submitted in accordance with the Policy, the Rules, and any other rules or principles of law that the Panel deems applicable. Neither the Policy nor the Rules provide for the submission of supplemental statements from the Complainant, except as invited by the Panel under paragraph 10 and 12 of the Rules. As such, the further filing submitted by the Complaint is not, unless invited by the Panel, a matter which the Panel may consider in deciding this dispute.
The general consensus of WIPO UDRP panel decisions is that, for the panel to exercise its discretion to admit a supplemental filing, the party submitting it “would normally need to show its relevance to the case and why it was unable to provide that information in the complaint”: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0“) paragraph 4.2. In this case, the Complainant provided no such explanation and, in any event, the Panel considers that the statements made by the Respondent were readily foreseeable. As such, the Panel has not considered the supplementary amendments to the Complaint in deciding this dispute.
B. Identical or Confusingly Similar
The Complainant has demonstrated that it relevantly has registered trademark rights to ATLAS COPCO. Having regard to previous panel decisions, the Panel finds that the disputed domain name is confusingly similar to that mark. The Complainant’s mark is wholly incorporated in the disputed domain name, with the addition only of the descriptive term ‘repair’. It is well-established that a domain name that wholly incorporates a trademark may be confusingly similar despite the addition of common or generic terms. See, e.g.,Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896. Reinforcing this point, the Complainant has pointed to a series of prior cases where the addition of the term ‘repair’ to a mark, was found not to distinguish the mark in question.
The Complainant provided no explanation as to the origin of its mark. On its face, the mark appears to be a fanciful or arbitrary mark for trademark purposes. Further, the Complainant’s registered marks are entitled to a presumption of distinctiveness. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047, Owens Corning Fiberglas Technology, Inc v. Hammerstone, WIPO Case No. D2003-0903. These factors reinforce a finding of confusing similarity.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish also that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with the Complainant. See, e.g., Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270; Accor v Eren Atesmen, WIPO Case No. D2009-0701. Here, the Complainant has made out such a case against the Respondent by pointing to, for example, the nature of the Respondent’s website and relevant prior decisions under the Policy.
The Respondent has submitted no formal response and so, has provided no direct evidence to counter the case against it. In its communication of March 9, 2011, the Respondent claims that it legitimately ‘works on’ the Complainant’s products. The Respondent suggests that it therefore offers legitimate ‘repair’ services for the Complainant’s products.
Whether a respondent has a legitimate interests in these circumstances (as a legitimate ‘distributor’) has been addressed in a large number of prior cases under the Policy. The consensus position of WIPO UDRP panelists that has emerged is that rights or legitimate interests can be established in these circumstances if certain requirements are met. These include that the respondent actually offers the goods or services at issue; uses the site only in relation to the trademarked goods, and that the website accurately discloses its relationship with the complainant. The Respondent demonstrated none of these things in its email response. It is also self-evident from the nature of the Respondent’s website that it does not meet these general criteria. There is no evidence from the Respondent’s website that the Respondent offers repair services for the Complainant’s products. No relationship with the Complainant is disclosed. The Respondent’s website relates to a miscellany of matters unconnected with the Complainant. The Respondent has otherwise provided no evidence to support its brief contentions.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Panel also finds that the Complainant has established that the disputed domain name was registered, and has been used, in bad faith under paragraph 4(a)(iii) of the Policy. The Respondent has registered a domain name that is confusingly similar to, and which wholly incorporates, the Complainant’s mark. While the Respondent implicitly claims to be involved in the repair of the Complainant’s products, there is little to support this contention on the Respondent’s website. The Respondent does not claim, and the Complainant denies, that the Respondent had any authorization from the Complainant to register the disputed domain name. Further, the Respondent has chosen to submit no formal response. As such, the Panel considers that it is reasonable to draw a negative inference from the Respondent’s failure to reply – particularly as the Respondent’s email of March 9, 2011 to the Center suggested that the disputed domain name is of “significant monetary value to BasicEparts”. In the Panel’s view, the Respondent’s failure to submit any Response is inconsistent with this claim.
A further factor supporting a finding of bad faith is the Respondent’s use of a privacy service and its failure to respond to the Complainant’s cease and desist letters. In relation to these factors, see e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.
It is true that a use of a privacy service is not, in itself, indicative of bad faith. For example, it may be readily understandable for an individual to protect their identity for privacy reasons. However, this Panel considers it different in the case of a business. In this Panel’s view, there is an inconsistency in a business seeking to promote itself which, at the same time, uses a privacy service to disguise itself. In the absence of any explanation for this conduct from the Respondent, the Panel considers it reasonable to draw a negative inference from the Respondent’s use of a privacy service. This inference further supports a finding of bad faith.
For these reasons, the Panel finds that the Complainant has established its case under 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, <atlascopcorepair.com>, be transferred to the Complainant.
James A. Barker
Dated: April 29, 2011