WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FLSmidth A/S v. CPC, Atif Munir
Case No. D2011-0563
1. The Parties
The Complainant is FLSmidth A/S of Valby, Denmark, internally represented.
The Respondent is CPC, Atif Munir of Lahore, Pakistan, represented by CPC.
2. The Domain Name and Registrar
The disputed domain name <atoxmill.com> (“the Domain Name”) is registered with Key-Systems GmbH (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2011. On March 29, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 29, 2011, the Registrar 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 Domain Name. The Center verified that the 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 April 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2011. The Response was filed with the Center on April 28, 2011.
The Center appointed Warwick Smith as the sole panelist in this matter on May 6, 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 is a Danish corporation. It is one of the world’s leading suppliers of equipment and services to the global cement and minerals industries. It has a presence in more than 40 countries.
With the Complaint, the Complainant produced an affirmation from the head of its department for grinding technology, Mr. Sønderup. Mr. Sønderup stated that the Complainant has been using the expression “ATOX” as a trademark worldwide, and continuously since 1980, to designate its raw mills and coal mills, and parts for those products. The products are offered for sale under the claimed ATOX mark followed by a product description, such as “coal mill”, “vertical roller mill”, or “split seal”.
The Complainant has sold more than 400 ATOX mills worldwide since 1980. The first sale in Pakistan was in 1990, and in all, the Complainant has sold 14 ATOX mills to customers in that country. The claimed ATOX mark is used on the Complainant’s brochures, on its principal website at “www.flsmidth.com”, and on the products themselves.
Annexed to the affidavit, were a sample brochure and extracts from the Complainant’s principal website, both showing the expression ATOX used in what appears to be a trademark sense.
Mr. Sønderup stated that projects of which ATOX branded products form part are worth millions of Euros, and that, with a world market share of approximately 25 per cent, the Complainant’s ATOX mill is one of the world’s three leading brands of mill for raw material and coal grinding.
Other evidence of the Complainant’s use of the claimed ATOX mark included an article dated June 24, 2004, relating to a contract for the Complainant to supply (among other products) an “ATOX” coal mill and an ATOX raw mill to a Pakistani cement plant, and copies of articles reporting on 2005 agreements for the supply of ATOX equipment to clients in India and South Africa. Later articles referred to the supply of ATOX-branded mill equipment to clients in Ireland, Spain, Poland, Russian Federation, and Egypt.
The Complainant says that it has expended large sums of money over the years in advertising its goods and services. It says that due to the specialized nature of the ATOX mill products, they are mostly advertised at fairs and exhibitions, and are not heavily advertised in other media. However the Complainant maintains an extensive Internet presence, and its ATOX products are advertised widely through the Complainant’s websites. It also publishes a bi-annual online magazine named “eHighlights”, containing industry news and details of product innovations, as well as articles about its customers around the world. A November 2010 issue of this publication contained reference to the Complainant’s ATOX branded products.
The Respondent and the Domain Name
The Domain Name was created on May 3, 2010. According to the Registrar’s verification, it was registered to the Respondent on December 13, 2010.
The Respondent has been using the Domain Name to operate a website (“the Respondent’s website”) that offers spares and parts for “all famous vertical mills like FLSmidth ATOX mill, Polysius Rollermill Loesche Mill, …Pfeiffer MPS Mill … etc.”
The Complainant says that it has not authorized the Respondent to use its claimed ATOX trademark, and that there is no evidence that the Respondent is commonly known by the Domain Name.
In its Response, the Respondent described its business, known as “CPC”, as a popular engineering company that provides products and spares for many types of vertical mills to clients in different countries. The Respondent acknowledged that its products and services are not limited to any specific brand or type of mill.
At several parts of the Response, the Respondent used an upper case “O” in writing the Domain Name - viz “atOxmill.com”. By way of explanation, the Respondent stated that the Domain Name “basically represents general term Ox Mill and translates into philosophy of old age mills driven by animal OX. … The [Domain Name] points At Mill powered by animal “Ox” and verbally represent visitors who are at Respondent mill site; it should not be considered as a noun …. The history of ox mill is centuries old and ox mill is being used before 1980, when the Complainant commenced the development of its ATOX mill…”
Purpose of this website is to introduce our business activities and services. The content of this website is our sole property and should not be used without permission. All other logos, tradenames and trademarks are property of their respective owners and are used for reference purposes only. We neither represent nor part of any of manufacturer which include FLSmidth, Polysius, Loesche, Pfeiffer, Filler, Claudius Peters, etc.”
In its Response, the Respondent drew attention to other websites incorporating what the Respondent described as the generic terms “AT”, “Ox”, “Atox”, and “mill” – e.g. the websites at “www.blueoxmill.com”, “www.atox.eu”, “www.atox-d.com”, and “www.atoxbio.com”. The “www.blueoxmill.com” website appears to relate to the Blue Ox Millworks in the United States. The “www.atox.eu” website is in the German language, and has no apparent connection with the milling or grinding industries. The website at “www.atox-d.com” appears to be the website of a web developer and graphic designer based in Columbus, Ohio, and the website at “www.atoxbio.com” is the website of a biotechnology company involved in the development of therapeutics for various diseases.
The Panel’s Visit to the Respondent’s Website
In accordance with accepted practice, the Panel visited the Respondent’s website on May 10, 2011. All of the web pages were prominently headed “Atox Mill Parts”. The Disclaimer did not itself appear on the home page, but there was a link to it in small print at the bottom of the page. On the “About Us” page, the Respondent’s website contained text referring to the history of the vertical mill, and how in the past ox-driven mills were used to grind and crush peanuts in villages. The text contained the statement: “Inspired by the Old Age Ox Mills many manufacturers have produced sufficient and reliable vertical grinding mills, for example Loesche Mill, OK Mill, Atox Mill, Pfeiffer MPS Mills etc.”
5. Parties’ Contentions
The Complainant contends:
1. The Complainant has rights in the unregistered trademark, ATOX, and the Domain Name is confusingly similar to that mark. The Respondent has simply added the descriptive product name “mill” after the Complainant’s trademark, and UDRP Panels have consistently held that domain names are identical or confusingly similar to a complainant’s trademark for the purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name (citing Wal-Mart Stores v. Richard McLeod, dba For Sale, WIPO Case No. D2000-0662. Furthermore, the Complainant’s ATOX mark forms the distinctive part of the Domain Name, and that is a further factor point to a finding of confusing similarity.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following matters:
(i) The Respondent has been using the Domain Name for commercial gain, and therefore could have no legitimate interest in the Domain Name under paragraph 4(c)(iii) of the Policy.
(ii) The Complainant has not authorized the Respondent to use its ATOX mark.
(iii) The foregoing circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests in the Domain Name on the part of the Respondent. The Respondent has not rebutted that prima facie proof.
(iv) There is no evidence to suggest that the Respondent is commonly known by the Domain Name. The Respondent therefore has no legitimate interest under paragraph 4(c)(ii) of the Policy.
(v) The Respondent has been trading on the fame of the Complainant’s mark by using it not only as a domain name, but also as a headline on the Respondent’s website, to bait Internet users to the Respondent’s website, where the Respondent offers for sale spares and parts for the products of the Complainant’s competitors (citing Oki Data Americas Inc. v. ASD Inc, WIPO Case No. D2001-0903 and Nikkon Inc. v. Technilab, WIPO Case No. D2000-1774). That use of the Domain Name has not been in connection with any bona fide offering of goods and services.
3. The Domain Name was registered and is being used in bad faith. The Complainant relies on the following:
(i) The Respondent is using the Domain Name to operate a website which offers spares and parts for both the Complainant’s mills and the mills of the Complainant’s competitors.
(ii) The Respondent could not have chosen or subsequently used the Complainant’s ATOX mark for any reason other than to trade on that name and to confuse Internet users, and by that means to attract them to the Respondent’s website. That is, in itself, evidence of bad faith, both generally and specifically under paragraphs 4(b)(iii) and (iv) of the Policy.
The Respondent contends:
1. The Respondent has used the generic terms “at”, “ox”, and “mill” in the Domain Name. Using a generic term in a domain name does not violate any copyright or trademarks, and the use of the generic terms in this case does not relate to or interfere with the Complainant’s “ATOX Vertical Roller Mill”, or “ATOX Raw Mill”, or “ATOX Coal Mill”, brands. The Domain Name refers to visitors which are “at”, “ox”, “mill”. Furthermore, the expression “ATOX” can have other meanings – e.g. as an abbreviation for “Atomic Oxygen”, or “Air Tasking Order Express”.
2. The Complainant has not provided any concrete evidence of trademark registration and rights in Pakistan, which is the Respondent’s principal place of business.
3. Generic terms like “at”, “ox”, atox”, and “mill” are universal terms, and are already used frequently by organizations and individuals in their activities and Internet domain names (referring to the websites at “www.blueoxmill.com”, “www.atox.eu”, “www.atox-d.com”, and “www.atoxbio.com”).
4. The Respondent has been using the Domain Name for a year, and is already well known by clients and partners through the Domain Name. The Respondent has spent a significant amount of money in advertising its business activities and the Domain Name in popular international publications with worldwide circulation. For those reasons, the Respondent has a great interest in the Domain Name.
5. The Respondent relies on the Disclaimer, and says that the Respondent has an entirely different setup for offering its products and services, which is independent of the Complainant’s network. Some of the services offered by the Respondent do not come within the scope of the Complainant’s business.
6. The Domain Name was registered by the Respondent in good faith, and it reflects the transition and journey of old age mills to modern age vertical mills. The Respondent did not register the Domain Name with any intention to sell or transfer it afterwards.
7. All products and services offered by the Respondent through the Respondent’s website are 100% independent and the Respondent’s sole property. Developing and selling one’s own products and services does not violate any law.
8. The Complainant has agreed in its Complaint that the Respondent’s website does not focus specifically on the Complainant’s products, but refers also to products of the Complainant’s competitors. This proves that the Domain Name should be considered in a broad sense, and should not be linked only to the Complainant.
9. The Domain Name is used for the Respondent’s private and confidential daily correspondence with colleagues. Transferring or cancelling the Domain Name would result in loss or leakage of critical data of the Respondent and its associates, without their consent.
6. Discussion and Findings
A. What the Complainant must prove under the Policy – General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed 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 disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
B. Identical or Confusingly Similar
The Respondent did not seriously challenge the Complainant’s contention that it holds unregistered trademark rights in the mark ATOX, for raw mills and coal mills (and parts for those products) used in the cement industry. That is hardly surprising, as on the Respondent’s website the Respondent itself refers to the Complainant’s ATOX vertical mill as “famous”. The Respondent’s contention is that the Domain Name consists of a combination of three dictionary words, in which the Complainant cannot claim proprietary rights, and that the Complainant has “failed to provide any registration number, patent, nor any other legal document which could prove that term “ATOX” is a registered trademark of the Complainant.”
In fact, the Policy does not require that a complainant must hold a registered trademark. Numerous panel decisions under the Policy might be cited in support of that proposition, but for present purposes it is enough to refer to the Center’s recently published document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”)”. Paragraph 1.7 of that document reads in material part:
“1.7 What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?
Consensus View: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction…”
In this case, the Complainant argues that it enjoys unregistered law trademark rights in Denmark and in the European Union, in Pakistan (where the Respondent is apparently located), and in other jurisdictions. The Complainant referred, among other cases, to the panel decision in Uitgeverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575, in support of its contention that its 30 years’ use of its ATOX mark is sufficient to establish unregistered trademark rights for the purposes of paragraph 4(a)(i) of the Policy.
The Panel notes that unregistered trademarks are recognized under the law of Denmark. See, for example, the three-member panel decision in The Wonderful Copenhagen Foundation v. Nya Destination Stockholm Hotell & Teaterpaket AB, WIPO Case No. D2007-0296, relating to the domain name <visit-copenhagen.com>. (“… Based on Danish trademark law that corresponds to generally accepted principles, the term “visitcopenhagen” can therefore be considered to be a protected unregistered trademark/service mark only if it has acquired distinctiveness for the Complainant as a result of extensive use as a trademark/service mark.”). To similar effect, see also Rota-Dan A/S v. Orion Web, WIPO Case No. D2005-1204, and Fobazo.com A/S v. Domain Group Germany/Peter Karlsberg, WIPO Case No. D2007-1277.
In this particular case, the Complainant has its headquarters in Denmark, and public announcements relating to the Complainant’s ATOX-branded equipment have been released in that country by the Complainant’s Corporate Public Relations office, since at least September 2004. While there have been only 400 ATOX mills sold, it is to be remembered that these are “big ticket” items, requiring the investment by purchasers of very large sums of money. They are sold in a highly specialized international market (primarily the owners of cement factories), and the uncontradicted evidence of Mr. Sønderup is that the Complainant’s ATOX branded coal mills and raw mills are among the world’s leading products in the category, with some 25% of the world market. The Respondent itself refers to the Complainant’s ATOX Vertical Roller Mill as one of a number of “famous” mill brands.
In those circumstances, the Panel is satisfied on the evidence produced that the Complainant has marketed from its base in Denmark sufficient ATOX mill products, over a sufficiently long period, that the expression “ATOX” has become distinctive of the Complainant’s mill products in Denmark, and that the Complainant holds unregistered trademark rights in the mark ATOX in that country. That is a sufficient “right” for the purposes of paragraph 4(a)(i) of the Policy.
That conclusion is not affected by the Respondent’s argument that the Complainant cannot have trademark rights in an expression comprised of two ordinary English words (“at” and “ox”). While each of those words may be a dictionary word in the English language, there is nothing in the evidence to suggest that the combined expression “atox” is a dictionary word, whether in English or in any other language. Furthermore, the Respondent has, itself, used the expression “Atox” on the Respondent’s website to designate the Complainant’s mill products, and differentiate them from the products of other manufacturers.
The remaining question is whether the Domain Name is confusingly similar to the Complainant’s ATOX mark. The Panel has no doubt that it is. The Domain Name incorporates the Complainant’s ATOX mark in its entirety, and adds only the generic expression “mill”, which is descriptive of the very product the Complainant markets under its ATOX mark. Numerous UDRP panel decisions have now held that the incorporation of a complainant’s mark in full in a disputed domain name, coupled only with a generic expression which is itself descriptive of the complainant’s products, will normally satisfy the “confusingly similar” test – see, for example, The Ritz Hotel Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137, and Quintessentially (UK) Limited v. Mark Schnorrenberg/Quintessentially Concierge, WIPO Case No. D2006-1643. The “.com” suffix is not taken into account in the comparison.
Having regard to the foregoing considerations, the Complainant has made out its case on this part of the Complaint.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, Second Edition (“WIPO Overview, 2.0”) as follows:
“… a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. … If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case, the Complainant has not authorized the Respondent to use the Complainant’s ATOX mark (or any expression confusingly similar thereto), whether in a domain name or otherwise. The Respondent does not claim to be commonly known by the Domain Name, and there is no claim to a right or legitimate interest in the Domain Name under paragraph 4(c)(ii) of the Policy. Similarly, there is no claim to a right or legitimate interest under paragraph 4(c)(iii) of the Policy – the Respondent’s use of the Domain Name has been for commercial purposes. In those circumstances, the Complainant has made out a prima facie case of “no rights or legitimate interests”, and the burden of the production shifts to the Respondent.
The Respondent relies on the fact that it has been using the Domain Name for a year, and has become well known by its clients and partners through the Domain Name. The Respondent says that it has spent a lot of money advertising its business activities and the Domain Name, and that because of its use of the Domain Name in its business, the Respondent has a great interest in the Domain Name. The Respondent says that its products and its services are clearly independent of the Complainant’s network. It also relies on the Disclaimer published on the Respondent’s website as making it quite clear that it has no connection with the Complainant. It argues that Internet users will not be confused by the Domain Name into assuming that there exists some commercial connection between the Complainant and the operator of the Respondent’s website.
In essence, the Respondent is relying on paragraph 4(c)(i) of the Policy: it says that it had been using the Domain Name in connection with a bona fide offering of goods or services before it received notice of the present dispute. The Panel is not persuaded by those arguments, for the following reasons:
(i) The Respondent was aware of the Complainant and its ATOX mill products when the Domain Name was registered. That is not in dispute. In those circumstances, the Respondent must have expected that Internet users who were familiar with the Complainant’s ATOX mill products would be likely to assume that any website at the Domain Name would be operated or endorsed by the Complainant. If the Respondent expected that sort of confusion to arise, it must also be taken to have intended it to arise.
(ii) The Respondent uses the Respondent’s website to market services, spares and other products relating not only to the Complainant’s ATOX mills, but also to mills marketed by the Complainant’s competitors. Using the Domain Name for that purpose is not a use in connection with a bona fide offering of goods and services. At WIPO Overview, 2.0, the Consensus view of WIPO panels on the issue of a reseller’s right to use a disputed domain name in marketing a complainant’s trademarked goods or services, is described in the following terms:
“Normally a reseller or distributor can be making a bona fide offer of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark….” (referring to Oki Data Americas Inc, v. ASD, WIPO Case No. D2001-0903).
(iii) In the Panel’s view, the Respondent’s explanation for its choice of the Domain Name is simply not credible. The Panel accepts that in days gone by mills may have been operated using power provided by animals such as oxen, and that such mills may have been known as “ox mills”. But that does not explain why the Respondent chose to add the preposition “at” in front of the words “ox” and “mill” in the Domain Name. The Respondent states on the home page of the Respondent’s website: “We welcome you at ox mill website”, but one does not welcome visitors “at” a website: one welcomes visitors to the website. That might perhaps have been explained as simply poor English usage, if it were not for the fact that the expression “Atox”, with the “At” and the “ox” run together, has been used prominently in the heading “Atox Mill Parts” at the top of each page of the website. Why run the “at” and the “ox” together if the Respondent intended that each should have a separate, stand-alone meaning? It appears to the Panel that the Respondent’s real intention was to use the Complainant’s ATOX brand, well known internationally in the market for grinding mills, and that both the Domain Name and the heading “Atox Mill Parts” on the Respondent’s website would be linked immediately in the minds of Internet users with the Complainant’s ATOX products. The Respondent’s explanation for its choice of the Domain Name appears to be no more than a contrived, “after the event” attempt to justify riding on the back of the Complainant’s goodwill in its ATOX mark.
(iv) The Respondent’s concern to retain the Domain Name because it has operated a substantial business through the Domain Name, which business will be disrupted if the Domain Name is transferred to the Complainant, is not relevant once the Panel has found (as it has) that the Respondent’s use of the Domain Name has not been bona fide. In such circumstances any business disruption the Respondent may suffer is simply a consequence of its failure to comply with the Policy.
For the foregoing reasons the Complainant has made out its case under Paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include circumstances where:
“……(iv). by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
For the reasons which are set out in Section 6.C of this Decision, the Panel is satisfied that the Complainant has proved bad faith registration and use of the kind described in paragraph 4(b)(iv) of the Policy. By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s ATOX mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The existence of the Disclaimer on the Respondent’s website does not affect that conclusion. The confusion created by the use of the Complainant’s mark in the Domain Name will have already had its effect by the time a site visitor arrives at the Respondent’s website and finds advertised there goods and services relating not only to the Complainant but also to its competitors.
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 <atoxmill.com> be transferred to the Complainant.
Dated: May 20, 2011