World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boral Limited v. boralconcrete.com / Marcos Shaw

Case No. D2013-0297

1. The Parties

The Complainant is Boral Limited of Sydney, New South Wales, Australia, represented by DLA Piper Australia, Australia.

The Respondent is boralconcrete.com of Coral Springs, Florida, United States of America / Marcos Shaw,of Melbourne, Victoria, Australia.

2. The Domain Name and Registrar

The disputed domain name <boralconcrete.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 February 13, 2013. On February 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 2013, the Registrar 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 February 20, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 22, 2013

The Center verified that the Complaint together with 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 February 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2013.

The Center appointed Michael J. Spence as the sole panelist in this matter on March 22, 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 the largest supplier of building and construction materials in Australia and has operations in the United States and Asia. It employs approximately 14,740 people and has about 240 pre-mix concrete plants. It has Australian trade mark registrations containing the word BORAL in many classes of registration. It has also been using the trade mark in many other jurisdictions. The website at the disputed domain name contains information about concrete and incorporates elements of the Complainant’s trade dress.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to its trade mark; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the Respondent’s registration and use of the disputed domain name are in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name consists of the Complainant’s trade mark in its entirety, together with a suffix that describes one of the Complainant’s most important products. Far from resolving any confusion caused by the use of the term “Boral”, the addition of the term “concrete” actually exacerbates it. There can be no doubt that the disputed domain name is identical or confusingly similar to the Complainant’s trade marks.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name.

B. Rights or Legitimate Interests

It is for the Complainant to establish, at least prima facie, that the Respondent has no rights or legitimate interests in the disputed domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd. WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The Complainant has conducted reasonable searches and has been unable to establish that the Respondent has any rights or legitimate interests in the disputed domain name. The Respondent is not known either as Boral or Boralconcrete and is not authorised to use the Complainant’s mark, which is an invented word. The use of the disputed domain name for a website which is likely to cause user confusion, given its subject matter and apparent reference to the trade dress of the Complainant, does not give rise to rights or legitimate interests in the disputed domain name.

The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the Policy in relation to the disputed domain name.

C. Registered and Used in Bad Faith

Given the fact that the trade mark BORAL is extremely well-known, it is highly likely that the Respondent would have known of the mark at the time of the registration of the disputed domain name. Moreover, given that it consists of an invented word, it is highly implausible that the Respondent could have arrived independently at the disputed domain name. It can therefore be inferred that the disputed domain name was registered with the intention to profit from confusion between the Complainant’s marks and the disputed domain name. This is a classic example of registration and use in bad faith.

The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy in relation to the disputed domain name.

7. Decision

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 <boralconcrete.com> be transferred to the Complainant.

Michael J. Spence
Sole Panelist
Date: April 5, 2013

 

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