WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PCL Construction Holdings Ltd. v. Chye Ling
Case No. D2012-2498
1. The Parties
The Complainant is PCL Construction Holdings Ltd. of Edmonton, Alberta, Canada, represented by Symbus Law Group, LLC, United States of America.
The Respondent is Chye Ling of Shah Alam, Malaysia.
2. The Domain Name and Registrar
The disputed domain name <pcl-berhad.com> is registered with LiquidNet Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2012. On December 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2012, 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.
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 January 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2013.
The Center appointed Luca Barbero as the sole panelist in this matter on January 25, 2013. 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 construction company that operates in the civil infrastructure, heavy industrial and buildings markets, being one of the largest contracting organizations in North America.
The Complainant’s offices are located to support the work across the United States of America, including Alaska and the Hawaiian Islands, the Caribbean and Canada. More recently, the Complainant has expanded to include PCL Constructors Pacific Rim Pty Ltd., which announced at the beginning of 2012 a joint venture with Grocon to construct a Victorian comprehensive cancer center in the city of Melbourne, Australia.
The Complainant informs the Panel that it has annual revenues of approximately USD 5,000,000,000 and an annual marketing budget of approximately USD 2,000,000. The Complainant also states that it is involved with more than 700 projects, including office towers, residential condominiums, retail outlets, hotels and resorts, educational and health care facilities, casinos, sport and entertainment complexes, bridges, airports, high-tech facilities, water treatment facilities, petrochemical/power/oil and gas plants, and major plant maintenance shutdowns.
The Complainant is the owner of trademark registrations and applications consisting of, or comprising, PCL in many countries of the world, including United States, European Union, Canada and Australia.
The Complainant submitted certificates of the following trademark registrations:
United States trademark Nos. 1633446 for , registered on January 29, 1991, claiming first use in commerce in 1975, in class 37; 4096284 for PCL (word mark), registered on February 7, 2012, claiming first use in commerce in 1975, for “general construction contracting, construction management, namely, supervising construction projects, leasing equipment for providing construction services, namely, construction of commercial buildings and public works” in classes 37 and 42; Canadian trademark No. 1541282, registered on September 18, 2012, for “General construction contracting; building construction services; construction planning; project management in the field of building construction and public works; leasing of construction equipment” and “Building design for third parties”; Australian trademark Nos. 1429610 for PCL, filed on June 8, 2011 for services in class 37; and 1429611 for filed on June 8, 2011 for services in class 37.
The Complainant is also the owner of additional United States trademark registrations comprising PCL, including, the trademark Nos. 2195552 for PCL CONSTRUCTION RESOURCES INC. and Design, 2142629 for PCL CONSTRUCTION RESOURCES (word mark), 3195879 for PCL CONSTRUCTION LEADERS and Design; 77672417 for NORDIC PCL CONSTRUCTION and Design; 77672415 for NORDIC PCL CONSTRUCTION and Design; 3816364 for TETON A PCL COMPANY and Design; and 3816363 for TETON A PCL COMPANY and Design.
In addition, the Complainant is the owner of the domain names <pcl.com>, registered on April 22, 1999, and <nordicpcl.com>, registered on June 23, 2008.
The disputed domain name <pcl-berhad.com> was registered on August 8, 2012.
5. Parties’ Contentions
The Complainant states that it has significant trademark rights bolstered by a family of trademark registrations comprising PCL, as illustrated in the factual section.
The Complainant underlines that its rights predate the registration of the disputed domain name by more than three decades and emphasizes that it has spent considerable amounts of money, time and effort in securing, developing, promoting, advertising and protecting its PCL marks. The Complainant asserts that, as a result of the Complainant’s extensive exposure, advertising, promotion, and singular success, the public associates the PCL mark with the Complainant and its construction services and that the Complainant’s PCL mark is a key part of the Complainant’s positioning in the competitive construction industry and related fields, being also identified in Wikipedia as the brand of the Complainant.
The Complainant informs the Panel that it has actively protected its rights in the PCL marks not only by securing and maintaining trademark registrations, but also by routinely monitoring for impermissible uses of its marks, controlling the use of its PCL marks in its agreements with third parties, sending cease and desist letters and actively enforcing its rights against those who wrongfully use any PCL marks. The Complainant therefore concludes that it has strong, protectable rights in its PCL marks.
The Complainant points out that the disputed domain name combines the term “pcl”, identical to the Complainant’s PCL trademark, with the descriptive term “berhad”, which is a company formation (i.e. the Malay equivalent of “plc”), that does nothing to distinguish the disputed domain name from the Complainant’s marks. The Complainant thus concludes that the disputed domain name implies that the Respondent’s web site is the Complainant’s web site, where interested consumers can get information about the services of the Complainant for Malaysia.
The Complainant states that the Respondent has registered the disputed domain name intending to either (i) profit from the sale of the disputed domain name by selling it to the Complainant; (ii) profit from the sale of the disputed domain name by selling it to a competitor of the Complainant so that the competitor could divert sales; (iii) develop its own web site using the Complainant’s trademark, with the intent to divert customers away from the Complainant, cause confusion in the marketplace, or otherwise trade on the goodwill and name of the Complainant; and/or (iv) prevent the Complainant from registering the disputed domain name for its own use in its business.
The Complainant contends that the Respondent registered the disputed domain name knowing that it is not the lawful owner of the trademark upon which the disputed domain name is based and states that there is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods, or a legitimate noncommercial or fair use.
With reference to the use of the disputed domain name, the Complainant indicates that the Respondent has created a web site that appears to be a professional web site and leads users to believe that it is the Malaysian web site of the Complainant. The Complainant highlights that the Respondent uses the Complainant’s distinctive yellow and green logo to suggest an association with the Complainant that does not exist. The Complainant further states that the web site is in English, rather than Malaysian, presumably to ensure that viewers of the web site believe that it is associated with the Complainant.
The Complainant states that, while the web site first appears to be a legitimate web presence of an experienced company, closer inspection shows that the web site is a fraud. In fact, a substantial portion of the web site has been copied from “www.cima.com.my” and, despite the web site’s claim to have been in business since 1975, a Google Internet search only reveals a single repeated phrase as associated with the company and the disputed domain name was only registered in the last several months. Similarly, a Google search for the listed contact, “Chye Ling”, and “Pcl” reveals no results other than the WhoIs information for the disputed domain name. Also, the “Our Product” link published on the web site corresponding to the disputed domain name does not lead to any active web page and the parts of the web site that have not been copied from another one are replete with grammatical errors.
The Complainant contends that these are not standard practices for a legitimate company and offer unequivocal evidence of the bad faith registration and use of the disputed domain name, as the Respondent appears to be diverting users to another construction company and/or using the web site to which the disputed domain name resolves to lure potential victims for phishing or other scam purposes. The Complainant asserts that, by appearing as a legitimate company with a strong history, the Respondent could lull victims into possibly providing personal information or other information or payment or such as for a required employment background check.
It is also highlighted that a large percentage of the active parts of the web site are dedicated to employment ads, information about “industrial training” and other employment-related aspects, rather than the alleged “business” of the Respondent.
The Complainant states that the foregoing actions of the Respondent disrupt the Complainant’s normal business, and, by so doing, potentially commercially benefit the Respondent and are clearly to the ultimate detriment of the Complainant.
In light of the above, the Complainant concludes that the Respondent registered the disputed domain name being aware of the Complainant’s trademark rights and is using it for some bad faith reasons, such as to divert and “catch” Internet users looking for the Complainant and/or the Complainant’s services and/or use the web site to scam Internet victims.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall 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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service 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.
A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of trademark registrations constituted of, or including PCL in connection with construction services, as detailed in the factual section.
Pursuant to a number of prior decisions rendered under the Policy, the addition of descriptive or generic terms to a trademark is not a distinguishing feature.
In the case at hand, the addition of the hyphen and of the generic word “berhad” (a Malaysian public limited company) does not exclude the confusing similarity between the disputed domain name and the Complainant’s trademark. See, along these lines, Strellson AG v. Simunza Muyangana, WIPO Case No. D2009-0027 (“The domain name consist of Complainant's STRELLSON mark with the addition of the generic word ‘limited’ which actually reflects the English version of Complainant’s corporate name. Use of ‘limited’ does not serve to distinguish the domain name from Complainant’s mark in fact it suggests a further connection with Complainant due to the singular nature of the denomination ‘limited’ to refer to the company of that name. The domain name is confusingly similar to Complainant’s STRELLSON registered mark”), Sparco S.p.A. v. Mr. Hugo Bazzo, WIPO Case No. D2003-0597 (“SPARCO is the distinctive element of the Complainant’s trademark. The addition of the letters ‘srl’ in the domain name merely identify the former legal nature of Sparco S.p.A., and so do not distinguish the domain name from the mark. Rather, the inclusion of those letters strongly reinforces an association with the Complainant’s mark”) and National Westminster Bank plc v. Natwest, Nick Warren, WIPO Case No. D2012-1713 (“In the present case, the Respondent has merely added the initials ‘bk’ and ‘plc’ to the trademark NATWEST. These additions do not prevent a finding of confusing similarity. Thereover, there is little doubt that the average consumer would assume that the term ‘natwestbk-plc’ refers to Complainant and that the disputed domain name belongs to the Complainant”).
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(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.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a) (ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701).
In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
Moreover, it has been repeatedly stated that when a respondent does not avail itself of its right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name, has used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the disputed domain name.
The evidence in the record demonstrates that the Respondent has redirected the disputed domain name to a web site publishing the Complainant’s trademark and contents taken from the web site “www.cima.com.my” of Cement Industries of Malaysia Berhad (“CIMA Group” or “the Group”), a company which is involved in the manufacturing and distribution of cement and related activities and is not affiliated with the Complainant. Moreover, according to evidence submitted by the Complainant, the Respondent has published on the web site associated with the disputed domain name a banner featuring the Complainant’s trademark and advertising job opportunities with the Respondent’s alleged company “Pcl”.
The Panel finds that such use of the disputed domain name is apt to suggest a false affiliation with the Complainant, that operates in the construction field, and cannot thus be considered a bona fide offering of goods or services. See, inter alia, Clearwire Legacy, LLC v. Leon Ganesh, WIPO Case No. D2010--0148 and Clearwire Legacy LLC v. Nexbox / DomainsByProxy.com, WIPO Case No. D2010-0579.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that, in light of the registration and use of the trademark PCL since 1975 in connection with the Complainant’s construction services in Canada and in the United States and of the Complainant’s announcement, at the beginning of 2012, of its expansion into Australian market, the Respondent knew or should have known the Complainant’s trademark at the time of the registration.
Moreover, the Respondent’s publication of the Complainant’s figurative trademark on the web site associated with the disputed domain name and the use of it to advertise services similar to the ones offered by the Complainant suggest that the Respondent was indeed aware of the Complainant’s trademark.
With reference to the use of the disputed domain name, the Panel finds that, in light of the contents of the web pages that have been linked to the disputed domain name (as detailed in the paragraphs above and highlighted in the screenshots annexed to the Complaint), it is clear that the Respondent has attempted to attract Internet users to its web site for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site and services, according to paragraph 4(b)(iv) of the Policy. The fact that the web site was subsequently deactivated does not preclude a finding of the Respondent’s bad faith use.
As an additional circumstance evidencing bad faith, the Panel notes that there has been no Response in this case and therefore, as stated, inter alia, in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146, it is open for the Panel to infer from such a lack of Response a prima facie case of bad faith registration and use against the Respondent.
Moreover, the Panel finds that the Respondent’s exploitation of the Complainant’s trademark to perpetrate what appears to be a fraud on unsuspecting job applicants in particular and on Internet users in general demonstrates, in the view of this Panel, the Respondent’s bad faith. See, among others, Société des Hotels Meridien v. WhoIs Guard / Jim Thiam, WIPO Case No. D2011-1030.
In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith.
For 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 <pcl-berhad.com> be transferred to the Complainant.
Date: February 10, 2013