World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aperam Alloys Imphy v. Germanium Inc.

Case No. D2012-0773

1. The Parties

The Complainant is Aperam Alloys Imphy of Luxembourg, represented by Nameshield, France.

The Respondent is Germanium Inc. of Syosset, New York, United States of America, represented by Traverse Legal, PLC, United States.

2. The Domain Name and Registrar

The disputed domain name <invar.com> is registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2012. On April 16, 2012, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain name. On April 16, 2012, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2012. The Response was filed with the Center on May 8, 2012.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on May 21, 2012. 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 an entity based in Luxembourg which manufactures nickel alloys and special stainless steels together with offering turnkey solutions in this area. The Complainant’s nickel alloys are dedicated to high-tech applications from aerospace to oil and gas extraction. INVAR is a trademark used by the Complainant which denotes a 30% iron nickel alloy having a virtually zero coefficient of thermal expansion in a wide variety of temperatures. The alloy was discovered by the Complainant and Nobel prize winner Charles-Edouard Guillaume in about 1896.

The Complainant states that it owns various trademarks for INVAR. The first such mark is United States of America (“USA”) Federal registered trademark no. 63970 for the word mark INVAR, registered on July 16, 1907 in international class 1 in respect of an inexpansible alloy, the registrant of which is a French entity named Imphy Alloy. The second such mark is international registered trademark no. 323755 for the word mark INVAR, registered on October 21, 1966 and designated for some 38 countries worldwide in respect of inexpansible metal, the registrant of which is a French entity named Aperam Alloys Imphy.

Between 2004 and 2006, the Complainant or its corporate group registered various domain names using the INVAR trademark including <invar.fr>, <invar.asia>, <invar.cn>, <invar.com.tw>, <invar.es>, <invar.eu>, <invar.hk>, <invar.in>, <invar.info>, <invar.tm.fr> and <invar.tw>. The Complainant uses these domain names in association with various corporate websites.

The Respondent is a corporation formed under the laws of the USA. The Respondent corporation is owned by Mr. W. Nah, an Internet entrepreneur who owns various Internet businesses involved in the provision of organic vitamins, lead generation services and domain name resale services. Mr. Nah’s organic vitamin business has been trading since 1988. Mr. Nah registered the disputed domain name in the name of the Respondent on October 25, 2011. After registration of the disputed domain name, Mr. Nah configured the associated website to display pay per click advertisements.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

The Complainant states that the disputed domain name incorporates the entirety of the Complainant's trademark. The Complainant asserts that the disputed domain name was registered after the registration of the Complainant’s trademarks including the prior trademark noted in the Factual Background section above which is registered with the United States Patent and Trademark Office, the USA being the place where the Respondent is located. The Complainant submits that the term “invar” is especially known in relation to the Complainant and its activities and has no meaning whatsoever in English or in any other language. The Complainant asserts that a search of the word “invar” using the Google search engine displays several results related to the Complainant.

The Complainant asserts that past UDRP panels have held that a Respondent is not commonly known by a disputed domain name if the WhoIs information is not similar to the disputed domain name, citing Tercent Inc. v. Lee Yi, NAF Claim No. 139720. The Complainant contends that the Respondent is not affiliated with nor authorized by the Complainant in any way, and is not related in any way to the Complainant’s business. The Complainant also notes that it does not carry out any activity for, nor has any business with the Respondent.

The Complainant states that the Respondent specializes in the sale of a metalloid element, namely germanium. The Complainant asserts that the Respondent generates revenue from the disputed domain name by the use of pay per click advertising and notes that the links on the website associated with the disputed domain name do not relate to the disputed domain name nor to the Complainant’s activities. The Complainant states that the Respondent’s advertising on the disputed domain name contains links regarding hotels and the Respondent’s business at “www.germanium.net”. The Complainant submits that the Respondent used a similar practice to that in the instant case in a previous case under the Policy, namely Sears Brands, LLC v. Willie Coam / Germanium Inc,. NAF Claim No. 1369839.

The Complainant notes that it sent a cease and desist letter to the Respondent asking the Respondent to justify the purpose of its registration and use of the disputed domain name however the Respondent did not reply with evidence of any rights or legitimate interests in the disputed domain name.

The Complainant notes that its INVAR trademark has been registered in the USA since 1907. The Complainant asserts that the Respondent could have run a simple Google search before registering the disputed domain name and, had it done so, it would have found the existence of the Complainant. The Complainant asserts that the Respondent must thereby have been aware of the Complainant’s rights in its registered trademark at the point when it registered the disputed domain name.

The Complainant notes that the disputed domain name is on sale through the website “www.domainshop.com”. The Complainant asserts that a domain name which incorporates in its entirety a trademark and has been registered only to be on sale has been considered by numerous panels to constitute bad faith.

B. Respondent

The Respondent produces examples of its various domain names through which it has been selling organic vitamin goods for some years, namely <germanium.net>, <egermanium.com>, <germaniumjapan.com>, <germaniumlatin.com>, <germaniumgermany.com>, <germaniumfrance.com>, <germaniumchina.com>, <germaniumtaiwan.com>, and <germaniumkr.com>. The Respondent states that it has been providing lead generation services via such domain names as <capitalcard.com> and <capitalfinance.com>. The Respondent also notes that it provides domain name resale services through the domain name <domainshop.com>, and states that its resale of domain names has consisted solely of generic, descriptive, and “brandable” terms.

The Respondent submits that it registered the disputed domain name on October 25, 2011, prior to notice of the present dispute, and without knowledge of the Complainant’s claim of rights in and to the term “Invar”. The Respondent states that it registered the disputed domain name with the intention of selling cosmetic items at the associated website along with the provision of additional health and beauty items. The Respondent asserts that it has never intended to sell Invar alloy at the disputed domain name and has never represented that it is in the business of selling such alloy. The Respondent submits that it has displayed pay per click advertisements for health and beauty related services and not for Invar alloy while the disputed domain name has been sitting dormant.

The Respondent asserts that prior to notice of this dispute it made preparations to use the disputed domain name in association with a bona fide offering of future goods and services. The Respondent states that it has not yet been able to devote the time and resources to develop the disputed domain name however that this does not imply that the Respondent does not have rights or legitimate interests in it. The Respondent states that it has met the “perfunctory threshold” described in Shirmax Marketing, Ltd. v. CES Marketing Group, Inc., eResolution Case No. AF-0104. The Respondent notes that its pay per click advertisements relate to non-competitive goods and services with those of the Complainant.

The Respondent states that there is no evidence that it had actual knowledge of the Complainant’s trademark when it registered the disputed domain name and notes that it has expressly denied having such knowledge in a sworn declaration. The Respondent contends that while the Complainant asserts that the Respondent had constructive knowledge of the Complainant’s trademark, the doctrine of constructive knowledge is rarely applied in proceedings under the Policy and that this is not one of the exceptions where the standard indicia of cyber squatting are present. The Respondent notes that many others use the name “Invar” besides the Complainant for widely differing goods and services, citing the examples Invar Warehouse Solutions, “www.invarsystems.com”, Invar Technical Services, “www.invartech.co.uk”, Invar International, “www.invarinternational.com”, and Invar Games, “www.invargames.com”.

The Respondent notes that its response to an invitation to sell the disputed domain name to the Complainant is consistent with the Respondent’s submissions in the present case, namely that it informed the Complainant that it had registered the disputed domain name for its own business purposes however that it was open to the option of selling the disputed domain name. With regard to the offer for sale of the disputed domain name on its website, the Respondent submits that a general offer to sale to the public, without more, does not justify a finding of registration and use in bad faith.

The Respondent states that it cannot be reasonably said that it has registered the disputed domain name to prevent the Complainant from using its mark in a domain name or to disrupt the Complainant’s business, as the Complainant had an equal opportunity to register the disputed domain name in October 2011 had it actually made efforts to do so. The Respondent asserts that the Complainant’s failure to secure the disputed domain name should not entitle it to a remedy against the Respondent under the Policy.

The Respondent states that it owns numerous generic, descriptive and “brandable” domain names unrelated to any brand identity and that, with regard to the previous decision under the Policy involving the Respondent, the Respondent had believed that the applicable domain name contained a generic and “brandable” term however failed to control the pay per click advertisements which then displayed advertisements for the competitors of the complainant in that case. The Respondent states that it voluntarily transferred the domain name in that case to the complainant. The Respondent submits that its involvement in a single previous case under the Policy cannot be taken as evidence of a pattern of abusive registrations in light of the thousands of names which it owns.

The Respondent states that the Complainant cannot have exclusive rights in the term “invar” in all contexts, or wholly unhinged from the limitations of the International Class cited in its trademark applications, as the Complainant has failed to show that the public have recognized this term as an indication of source in the cosmetic and beauty product context. The Respondent notes that other USA registered trademarks containing the term “invar” in association with steel have required the registrant to disclaim exclusive rights in that term, indicating that the United States Patent and Trademark Office’s examining attorneys see this term as generic or descriptive of steel goods. Thus, the Respondent states, the Complainant could not prevent the Respondent from using the disputed domain name in such a generic or descriptive manner.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Clearly the registered trademarks for the word mark INVAR cited by the Complainant, as noted in the Factual Background section above, are identical to the disputed domain name, bearing in mind that it is customary to disregard the top level domain “.com” in cases under the Policy. The Panel has however noted that the Complainant does not appear to be the registered owner of either of these trademarks. The Complainant, Aperam Alloys Imphy, is a company with an address in Luxembourg. The owner of the USA mark is listed as “Imphy Alloys JOINT STOCK COMPANY FRANCE” and the owner of the international mark is listed as “Aperam Alloys Imphy”. Given the nature and history of the Complainant as set out in the Complaint and relative annexes, the Panel considers that the entities which own the trademarks cited by the Complainant are highly likely to be related companies to the Complainant. It follows that the Panel must consider whether or not the Complainant is entitled to rely on such marks for the purpose of paragraph 4(a)(i) of the Policy. This issue has been considered in paragraph 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") which provides inter alia:

“Consensus view: In most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP. For the purpose of filing under the UDRP, evidence of such license and/or authorization of the principal trademark holder to the bringing of the UDRP complaint would tend to support such a finding. Panels have in certain cases been prepared to infer the existence of a license and/or authorization from the particular facts, but in general, relevant evidence is desirable.”

The Panel respectfully adopts the consensus view. In the present case, the Panel considers that the facts of the case are just sufficient to infer the existence of authorization and/or license from the French entities to the Complainant and no more. While it would certainly have been desirable for the Complainant to have addressed the point more directly, the corporate history described by it asserts that the INVAR family of trademarks, including those cited by the Complainant in the present case, all arise from the discovery of an alloy with special inexpansible properties which is commercially exploited by an entity named “Imphy Alloys”. The website cited by the Complainant in its submissions, “www.imphy.com” additionally refers to exploitation by “Aperam Alloys Imphy and its subsidiaries”. In all of these circumstances, the Panel is prepared to make the reasonable inference that the Complainant and indeed the trademark owners are all part of the same corporate group. Finally, on this topic, it should also be noted that the Respondent has not raised any issue regarding the Complainant’s ownership of the trademarks concerned.

In these circumstances, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights and thus that the first element under the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:

“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”.

The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with sufficient evidence of rights or legitimate interests to rebut that prima facie case.

In the present case, the Complainant asserts that the Respondent is not affiliated with, nor authorized by, the Complainant in any way, and is not related in any way to the Complainant’s business. The Complainant also notes that it does not carry out any activity for, nor has any business with the Respondent. The Panel is satisfied that this constitutes a prima facie case. The burden of production accordingly shifts to the Respondent.

The Respondent’s case focuses predominantly on paragraph 4(c)(i) of the Policy. The Respondent produces a sworn declaration of its principal stating that it registered the disputed domain name to sell cosmetic, health and beauty items under that term and that it was not aware of the Complainant when it registered the disputed domain name. The Respondent states that the term is short and “brandable” and can be used for such goods. The Respondent also acknowledges that it is in the business of selling domain names via its “www.domainshop.com” business however states that this consists of the sale of generic, descriptive and “brandable” terms.

The Respondent’s submissions are considerable and extensive. However, the Panel notes that the vast majority of the Response takes the form of what might best be characterized as formal legal argument accompanied by extensive citation of past cases under the Policy. In the Panel’s opinion the Response fails to focus directly on the facts and circumstances of this particular case and specifically on how and why the Respondent came to select the disputed domain name.

The wording of the Policy clearly requires a respondent relying upon paragraph 4(c)(i) of the Policy to provide suitable evidence of actual preparations to use the disputed domain name in connection with a bona fide offering of goods and services. In the Panel’s view there is particular significance placed upon the word “demonstrable” in paragraph 4(c)(i), meaning that a respondent must provide to the panel sufficient evidence of preparations that are capable of demonstration. The Panel considers that assertions of intent without such evidence are insufficient to demonstrate rights and legitimate interests in terms of this paragraph of the Policy. The Panel does not agree with the Respondent’s interpretation that the threshold is “perfunctory”. The question of what preparations might be accepted by a panel is a matter of degree in each case, and in certain cases what might be described as “perfunctory preparations” might be sufficient, however in the Panel’s opinion it is clear that the threshold is a demonstration of actual preparations to the Panel’s satisfaction.

In the present case what has been presented in support of the Respondent’s contention is merely a bare assertion both in the declaration and in the Response that the Respondent intended what it describes as a “later bona fide use”, namely to sell cosmetic, health and beauty items at the disputed domain name. The Respondent adds that it has not yet been able to devote the time and resources to develop the disputed domain name. In the Panel’s view this bare assertion and apparent explanation do not constitute, in the circumstances of this case, demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

There is no evidence before the Panel which demonstrates that the Respondent would ever have developed the disputed domain name in line with its assertion. Furthermore, there is no evidence before the Panel to suggest that the Respondent would have done anything other than maintained the pay per click use of the disputed domain name indefinitely. The Panel notes that the Respondent operates a business offering organic vitamins however no evidence has been provided as to how, if at all, the alleged new business of cosmetic and beauty items would have been connected to the existing business. As such, the existing business does not assist the Panel in a consideration of the Respondent’s demonstrable preparations to use the disputed domain name. In all of these circumstances, the Panel is not prepared to accept that the Respondent’s submissions, taken together, constitute, in the circumstances of this case, demonstrable preparations to use the disputed domain name for a bona fide offering of goods and services within the meaning of paragraph 4(c)(i) of the Policy.

The Respondent makes much of the fact that its alleged intended use for the disputed domain name, and the actual pay per click advertisements displayed, do not relate to metal alloys to which the Complainant’s INVAR trademark is restricted. In the Panel’s opinion this does not particularly assist the Complainant. If, as the Complainant contends, the Respondent was intentionally benefitting from the attractive force of the Complainant’s trademark to deliver traffic to the website at the disputed domain name it matters not that the pay per click links displayed did not refer to metal alloys; such use could not be described as a bona fide offering of goods and services.

In the Panel’s opinion, this is not a case where use of a domain name in connection with pay per click links could be considered permissible, as described in paragraph 2.6 of the WIPO Overview 2.0 which states as follows:

“2.6 Do parking and landing pages or pay-per-click links generate rights or legitimate interests in the disputed domain name?

Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" [see also paragraph 3.8 below] or from "legitimate non-commercial or fair use" of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”

In light of the above, the Panel is fortified in its view that it is not necessarily sufficient for a respondent to show that the pay per click links which it has employed relate to goods and services uncompetitive with those of the rights holder. Accordingly, the use of uncompetitive pay per click links does not of itself confer rights and legitimate interests upon the Respondent in the present case. While a respondent may be able to show a permissible use where its pay per click links are genuinely related to the generic meaning of the domain name at issue (and the cases cited by the Respondent in support of its contentions on this point all involve domain names consisting of generic words or phrases such as “elephant” or “final score”) this is not the case here; on the contrary, there appears to be no generic meaning for the disputed domain name.

In order to determine whether the word “invar” is a generic word, for example having a meaning in connection with cosmetic, health or beauty products, the Panel consulted several online dictionary sources (Dictionary.com Unabridged based on the Random House Dictionary, Collins English Dictionary 10th Edition and Chambers 21st Century Dictionary). Without exception, each of these contained an entry which related only to the Complainant’s trademark and described the properties of the relative alloy. The Panel infers from this that there is no generic meaning for the term “invar” and furthermore that the Complainant’s trademark is indeed well-known, as the Complainant contends, given that relatively few trademarks are considered famous enough to feature in dictionaries, which typically include only those that have achieved extensive public recognition and renown.

In the Panel’s opinion, and for the reasons indicated above, the Respondent has failed to rebut the prima facie case made by the Complainant. In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the second element under the Policy has been established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”

On this topic the Complainant avers that the term “invar” only refers to the Complainant and its trademark and has no other meaning in any language. On that basis, the Complainant argues that the Respondent should have known of the existence of the Complainant when the Respondent registered the disputed domain name. The Complainant also notes that the disputed domain name has been placed on sale by the Respondent and that the Respondent has been found to have made a registration in bad faith in a previous case under the Policy, namely Sears Brands, LLC, supra. For its part, the Respondent points to other uses for the term “invar”, denies that it had actual knowledge of the Complainant’s trademark when it registered the disputed domain name and states that the doctrine of constructive (or “deemed”) knowledge should not be applied. The Respondent also asserts that its offer of sale of the disputed domain name on its website was a general offer of sale to the public and does not demonstrate bad faith.

It is worth noting that paragraph 2 of the Policy provides as follows:

“By applying to register a domain name…you hereby warrant and represent to us that […](b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party […]. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.”

The Panel notes that the Respondent is clearly a professional domain name registrant which provides domain name resale services from its own website. The Respondent is also the operator of multiple Internet businesses. The Respondent itself states that it owns numerous generic, descriptive and “brandable” domain names. As such a sophisticated entity the Panel considers that the Respondent might reasonably be expected to have carried out suitable searches to support its warranty to its registrar under paragraph 2 of the Policy. The Respondent does not however state what if any searches it carried out in the present case. Clearly if the Respondent had searched in its local trademark register it would have found the Complainant’s trademark. According to the Complainant, if the Respondent had searched on a popular search engine it would also have found references to the Complainant and the Panel has no reason to doubt that contention, nor is it denied by the Respondent. The disputed domain name clearly does not consist of a generic word or phrase yet the Respondent also appears to have overlooked this point. The Panel is left with the stark and unavoidable fact that if the Respondent had searched in a dictionary it would also likely have found an entry referencing the Complainant’s trademark. Consequently, the Panel finds that the Respondent either knew or ought to have known of the Complainant’s trademark at the point when it registered the disputed domain name and at a minimum turned a blind eye to that trademark’s existence.

While the Respondent has put forward an apparently good faith explanation for its registration and use of the disputed domain name there are several reasons in the Panel’s view whereby its credibility may be called into question. The Respondent states that it intended to use the disputed domain name for a future business. As noted above, it has provided no evidence supporting this contention. The Respondent instead placed pay per click advertisements on the website associated with the disputed domain name. The screenshots of the said website produced by the Complainant show links focused on hotels together with the Respondent’s germanium and credit card businesses, the latter two being the subject of larger display advertisements. This raises the reasonable inference in the Panel’s mind, as noted above, that the Respondent may have been seeking to use the attractive force of the Complainant’s trademark to benefit its own business by maximizing the traffic to its websites.

In addition, the Panel considers that the Respondent’s general offer to sell the disputed domain name on its “www.domainshop.com” website does not sit well with the Respondent’s contention that it had demonstrable future plans to develop the disputed domain name into a cosmetics, health and beauty website. Further, the Respondent has been found to have registered and used a domain name in bad faith in a previous case under the Policy, namely Sears Brands, LLC, supra. The domain name in that case appears to have been used for substantially the same purpose as is the disputed domain name in the present case, namely redirection to the Respondent’s domain name sales website together with the display of pay per click advertisements, albeit in that case the links referenced the complainant’s business directly. While this case, taken with the present facts, may not necessarily constitute a pattern of conduct as required by paragraph 4(b)(ii) of the Policy, in the Panel’s opinion it nevertheless casts a cloud over the credibility of the Respondent’s assertion of good faith registration and use as regards the disputed domain name.

The Panel is not persuaded by the four examples listed by the Respondent of other parties apparently using the word “invar” as part of their business names. There is no indication that the word “invar” on its own, as in the disputed domain name, denotes any party other than the Complainant and its trademark. Nor does this submission demonstrate on its own that the word INVAR is in some way generic or descriptive. With regard to the disclaimer of exclusive rights in and to the term “invar” upon which the Respondent relies, the Panel notes that this is found within two USA trademarks registered in 1953 and 1954 respectively by a third party. The Respondent states that this disclaimer demonstrates the generic nature of the Complainant’s INVAR mark. As far as the Panel is concerned, while the examining attorney of those two third party trademarks registered in the early 1950’s may have believed that the word “invar” was generic or descriptive of steel goods, the weight of evidence before the Panel in the present case shows that “invar” plainly is not a generic or descriptive term and the Panel is therefore satisfied that these earlier third party disclaimers are of no particular significance for purposes of deciding the present case.

In all of these circumstances, the Panel considers on the balance of probabilities that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark and thus registered and used the disputed domain name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <invar.com> be transferred to the Complainant.

Andrew D. S. Lothian
Sole Panelist
Dated: June 4, 2012

 

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