WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Perkins Holdings Limited v. Deny DokterPIM
Case No. D2014-1430
1. The Parties
The Complainant is Perkins Holdings Limited of Peterborough, United Kingdom of Great Britain and Northern Ireland, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Deny DokterPIM of Tangerang, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <genset-perkins.com> (the "Disputed Domain Name") is registered with CV. Rumahweb Indonesia (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 20, 2014. On August 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2014, 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 Complaint was filed in English. The Registrar confirmed that the Language of the Registration Agreement is Indonesian – Bahasa. On August 28, 2014 the Center sent a communication to the Parties regarding the language of the proceedings. On August 28, 2014 the Complainant submitted its comments and requested English to be the language of the proceedings. The Center did not receive any communication from the Respondent in this regard.
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 September 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 2, 2014.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on October 9, 2014. 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 manufacturer and supplier of diesel and gas engines, offering its products and services under the PERKINS trade marks and logo (the "PERKINS marks"). The Complainant is the registered owner of numerous trade mark registrations consisting of or containing the term PERKINS in many jurisdictions throughout the world, including Indonesia where the Respondent appears to be located. The Complainant provided several examples of trademark registrations for PERKINS and marks incorporating PERKINS. The Complainant also operates several websites utilizing the PERKINS marks, such as <perkins.com>, <perkins.asia>, and <perkinsengine.com>.
The Respondent is Deny DokterPIM of Tangerang, Indonesia.
The Disputed Domain Name <genset-perkins.com> was registered on April 24, 2013.
5. Parties' Contentions
The Disputed Domain Name is identical and confusingly similar to the Complainant's PERKINS marks. The Respondent has no rights to or legitimate interests in the Disputed Domain Name. The Respondent registered and is using the Disputed Domain Name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Where a party fails to present evidence in its control, the panel may draw adverse inferences regarding those facts (see Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004). Insofar as the Respondent has not responded, it is appropriate for this Panel to accept the facts asserted by the Complainant and to draw adverse inferences of fact against the Respondent. Nonetheless, paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii. the Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
A. Preliminary Matters:
Language of Proceeding
The Complainant has requested that English be recognized as the language of the proceeding. The Respondent has not commented regarding the language of the proceeding. The Complainant submits that the language of the proceedings should be English because the Disputed Domain Name is registered under the generic Top-Level Domain ".com", the Disputed Domain Name incorporates the term "genset", an English abbreviation for "generator sets", and that the content of the website to which the Disputed Domain Name is pointing is mostly in English and therefore the Respondent is targeting English speakers and is likely to have a good understanding of the English language. Based on the Complainant's assertions, it appears the Respondent can understand English. The Complainant submits that it would be disproportionate to require the Complainant not to submit the present Complaint in English as this would cause an undue burden, additional expenses and unnecessary delay due to translation of the Complaint.
Taking the foregoing into account, along with the Respondent's default and lack of any communication in this proceeding, the Panel concludes that English is the language of the proceedings. Translation of the Complaint and other materials would cause unnecessary expense and delay.
B. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the Disputed Domain Name must be identical or confusingly similar to the Complainant's trademark.
It is clear that the Complainant has rights in the PERKINS marks and that the PERKINS marks are distinctive and well-known by the public for engines and related goods and services, including "perkins" powered generators (see Perkins Holdings Limited v. Domain Admin / Private Registrations Aktien Gesellschaft, WIPO Case No. D2011-1825 (the panel found that "the Complainant's PERKINS trademark is specific to the Complainant in connection with engines and related products and services, and has been used for nearly 80 years"); see also Perkins Holdings Limited v. Michele Caroli SRL, WIPO Case No. D2013-1364). As stated above, the Complainant is the registered owner of numerous PERKINS marks in a number of jurisdictions. The Complainant's PERKINS marks cover several classes of goods and services, including class 7 of the Nice Classification, covering motors, engines, generators and related parts. Further, the record shows the Complainant owned rights in the PERKINS marks long before the Disputed Domain Name registration.
The Disputed Domain Name incorporates the PERKINS mark in its entirety. It is well-established that a domain name is confusingly similar to a mark "when the domain name includes the trademark, or a confusingly similar approximation." (see Nicole Kidman v. Zuccarini, WIPO Case No. D2000-1415; Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Research in Motion Ltd. v. One Star Global LLC, WIPO Case No. D2009-0227 ("In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to that mark."); Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
Furthermore, the Disputed Domain Name only differs from the Complainant's PERKINS marks by the addition of the term "genset". The Complainant submits that the term "genset" is an abbreviation of "generator sets" (also known as "generators"). Further, the Complainant submits that generator sets are products closely related to the Complainant's products for which the Complainant's trade marks have been registered. The Panel accepts this as true. Thus, the addition of the term "genset" to the PERKINS marks does not serve to distinguish the Disputed Domain Name from the Complainant's PERKINS marks (see Nokia Corporation v. Jameela Seif, WIPO Case No. D2009-1665). The risk of consumer confusion is particularly great where the added term describes a central aspect of the Complainant's business, as in this case. Such a combination "in all likelihood heightens the confusion." (See The American Automobile Association, Inc. v. PSI, WIPO Case No. D2008-1931; see also The American Automobile Association Inc. v. AAA-Vacationsunlimeted, WIPO Case No. D2009-0373). Thus, the addition of the descriptive term "genset" to the PERKINS marks likely heightens consumer confusion. It is likely that consumers would be confused by the use of the PERKINS marks in the Disputed Domain Name. In light of the foregoing, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's registered mark and that paragraph 4(a)(i) of the Policy is satisfied.
C. Rights or Legitimate Interests
The Panel finds there is no evidence in the record to indicate that the Respondent is associated or affiliated with the Complainant or that the Respondent has any other rights or legitimate interests in the term "perkins". A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Croatia Airlines d. d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d. d. v. WACHEM do.o., WIPO Case No. D2004-0110). The Panel finds that the Complainant has successfully presented a prima facie case which the Respondent has not rebutted. The Respondent filed no response. Without a response, there is nothing in the case file that indicates that the Respondent has rights or legitimate interests in the Disputed Domain Name. Further, as discussed below, the Panel also finds that the Respondent is not engaged in a bona fide offering of goods or services. There is also no evidence in the record that the Respondent's use of the Disputed Domain Name is a legitimate noncommercial or fair use, or that the Respondent is commonly known by the Disputed Domain Name.
The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, 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 the 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 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 your website or location or of a product or service on your website or location."
The record shows that the Complainant owns trademark rights in the PERKINS marks that predate the registration of the Disputed Domain Name. The Disputed Domain Name includes the Complainant's mark in its entirety. Given that the Complainant's PERKINS marks are distinctive and famous for diesel and gas engines, and have been used for over 80 years, the Panel finds that the Respondent was likely aware of or should have known of the Complainant's rights in the PERKINS marks when registering the Disputed Domain Name. Where a respondent chooses to incorporate a well-known mark into a domain name without authorization, "the combination of an identical trademark in a domain name and the ensuing likelihood of initial interest confusion alone ought to be sufficient to demonstrate that the Respondent has no legitimate interest in this case." (See General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645). Further, where the mark is well-known and famous, a trader would not legitimately choose it, "unless seeking to create an impression of an association" with the mark's owner (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Respondent has not offered any argument to show that this inclusion is non-distinctive or generic, and, in the absence of a credible explanation, the most likely explanation is that is was chosen with the Complainant's marks in mind (see Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc., WIPO Case No. D2010-2181).
The Complainant submits that the Respondent is using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website, in accordance with paragraph 4(b)(iv) of the Policy. The Complainant submits that the Respondent is using the Disputed Domain Name to cause confusion amongst Internet users searching for the Complainant by incorporating the Complainant's PERKINS marks in conjunction with the term "genset" which is descriptive of products closely related to the Complainant's products. Further, the Complainant submitted screen captures of the website associated with the Disputed Domain Name. The screen captures show that the website is displaying the Complainant's PERKINS logo and offering for sale "Genset-Perkins" or "Genset Perkins" products. Further, there is no indication on the website that it is not affiliated or sponsored by the Complainant. The Complainant also provides evidence that content on the website is copied from the Complainant's website. Based on the foregoing, it is clear to this Panel that the Respondent is attempting to attract Internet users to its website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its website. Finally, the Complainant submits that the Respondent is using such confusion to increase the traffic to its website and thus make commercial gain. The Panel agrees with the Complainant in this point.
As already discussed, the Respondent is using the Disputed Domain Name to attempt to trade on the fame of the Complainant's PERKINS marks. This is evidence of the intention by the Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the Respondents' website or of a product or service on the Respondent's website. Thus, on the record before it, the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith. For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <genset-perkins.com> be transferred to the Complainant.
Kimberley Chen Nobles
Date: October 21, 2014