WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Asociación de Investigación de Industria Textil v. Aitex Pakistan
Case No. D2014-1785
1. The Parties
Complainant is Asociación de Investigación de Industria Textil of Alcoy, Spain, represented by Sugrañes, S.L., Spain.
Respondent is Aitex Pakistan of Karachi, Sind, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <aitex-pakistan.com> is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 13, 2014. On October 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 14, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 13, 2014.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on November 21, 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
Complainant owns numerous registrations for the AITEX trademark, including, for example, Spanish Trademark Registration No. M2070394 (stylized characters, class 38), registered on March 16, 1998.
The disputed domain name was registered on April 29, 2011. The website to which the disputed domain name routes does not display publicly accessible content at present, however, annexes to the Complaint and publicly available records at "www.archive.org" show that as recently as July 17 and 18, 2014, the website displayed the trademarked logo of Complainant. The website presents Respondent as though it is one of the authorized international representatives of Complainant's business, for Pakistan. Other pages at Respondent's website appear to reproduce content and services offerings of Complainant. The displays available for the Panel's review do not contain any disclaimer or description of Respondent's relationship with Complainant, however there is a page that identifies Mr. Muhammad Salman siddiqui as the General Manager for Aitex Pakistan (another individual is identified as Country Manager).
5. Parties' Contentions
Complainant avers that it is a non-profit organization dedicated to research, innovation and advanced technical service in the field of textiles. Complainant avers that from 2011 until 2014 it was involved in negotiations with Mr. Muhammad Salman siddiqui. The negotiations culminated in his appointment as Country Manager for Complainant's business in Pakistan in January 2013, pursuant to a written "Service Supply Agreement". It was explicity provided that the arrangement was not exclusive and that he was not permitted to use Complainant's distinctive signs in advertising or promotion. In June 2014, Complainant terminated the agreement for alleged breach.1
Complainant avers that Respondent registered the disputed domain name using a privacy registration service during the negotiation period, without Complainant's knowledge. The Complaint annexes Whois records as of July 9, 2014 (showing registration under the privacy service), and the change to Aitex Pakistan as registrant in records from October 2014. In response to cease and desist notices sent by Complainant, Respondent allegedly deleted the website content but only offered to transfer the disputed domain name in exchange for 10,000 Euros.
Following the termination, it is alleged that Respondent continued to use the disputed domain name for its email address in connection with customer business it conducted in competition with Complainant.
Summarizing its legal contentions, Complainant alleges that (1) the disputed domain name is confusingly similar to Complainant's trademark, (2) Respondent has no rights or legitimate interests in the disputed domain name, and (3) the disputed domain name was registered and is being used in bad faith, all in violation of the Policy.
Complainant seeks transfer.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Notification of Proceedings
The Policy and the Rules establish procedures to give respondents notice of proceedings and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules). The Center sent to Respondent by courier, fax and email notification of these proceedings, using the contact information from the Registrar. None of these efforts appeared successful; the contact information provided by Respondent appears incomplete.
The Panel is satisfied that by sending communications to the contacts verified by the Registrar, based on those provided by Respondent and listed in the WhoIs records, the Center has exercised care, fulfilling its responsibility under paragraph 2(a) of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent.
B. Rules of Decision
Complainant must establish that (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy paragraph 4(a).
Complainant must establish these elements even if Respondent submits no Response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. See, e.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425.
C. Identical or Confusingly Similar
The Panel agrees with Complainant that the disputed domain name is confusingly similar to Complainant's trademark.
UDRP panels frequently note that linking a trademark with a geographical name does not distinguish the domain name from the trademark. See, e.g., Koninklijke Philips Electronics NV v. P.K. Gopan, WIPO Case No. D2001-0171. In this proceeding, the Panel finds that the addition of "Pakistan" and the hyphen to Complainant's trademark does not alter the confusion that Internet users would experience.
Therefore the Panel concludes that the requirements of Policy paragraph 4(a)(i) are established.
D. Rights or Legitimate Interests
The Panel also concludes that the second element of paragraph 4(a) of the Policy is fulfilled.
Paragraph 4(c) of the Policy lists circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. Complainant must show a prima facie case that Respondent lacks rights or legitimate interests. See e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005). The absence of rights or legitimate interests is shown if a respondent does not rebut the complainant's prima facie case.
The potentially applicable circumstances relevant to this proceeding listed in paragraph 4(c) include: (i) the use of the domain name in connection with a bona fide offering of goods and services; and (ii) being commonly known by the domain name. The fact that the website was used to promote commercial offerings precludes any possibility that the circumstances of paragraph 4(c)(iii) could be established in favor of Respondent.
Having reviewed the record and analyzed the Service Supply Agreement – which prohibited Mr. siddiquifrom using Complainant's marks without express authorization -- the Panel is confident that Respondent enjoyed no express authorization to use Complainant's marks in the disputed domain name.2 The Panel feels it is reasonable to infer that there was no greater authorization to register a domain name using Complainant's trademarks during the period of negotiation that preceded signing of the Services Supply Agreement.
Addressing the possible application of Policy paragraph 4(c)(ii), despite the fact that Respondent has recently used the disputed domain name, Complainant avers that Respondent only became known by "Aitex Pakistan" well after the 2011 registration. On the record before it, and in the absence of evidence to contradict Complainant's averment, the Panel agrees. The Panel finds that Respondent was not "commonly known" by the disputed domain name in the sense of Policy paragraph 4(c)(ii) and would not, therefore, be able to establish rights or legitimate interests under that provision.
As for paragraph 4(c)(i), there exists significant UDRP authority confirming that respondents that are authorized sales or service agents may, under certain circumstances, make offerings determined to be bona fide under Policy paragraph 4(c)( i ). E.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
While the evidence in this case does not show a clear agency, dealer or representative relationship, the issue of bona fide offerings has been analyzed using the Oki Data framework in UDRP proceedings that involved both express, and in some cases implied, agreements. See, e.g., Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447. Particularly since the disputed domain name was registered well before the Services Agreement was signed, the Panel feels that these factors are also useful to examine here.
If Respondent's use of the disputed domain name fulfills the four Oki Data criteria, it is possible that Respondent may be found to have rights or legitimate interests. In the Panel's view, though, Respondent fails to meet at least one of the four Oki Data criteria, being that "The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents." Oki Data Americas, Inc. v. ASD, Inc., supra.
The Panel has already noted that the website displayed Complainant's trademarked logo, in a presentation of Aitex Pakistan as if it were an international authorized representative of Complainant. Yet nowhere in the extensive annexed website displays does it clearly appear to the Panel that Respondent included any prominent disclaimer or explanation of Respondent's relationship to the trademark holder. The Panel concludes, therefore, that there is no bona fide use under the test applied in Oki Data.
The Panel concludes that Complainant has established a prima facie case. Filing no response, Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its "rights or legitimate interests" in the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
E. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith. Policy, paragraph 4(b)(iv). See, e.g., L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. UDRP panels may draw inferences about bad faith in light of the circumstances, including failure to respond to a complaint and other circumstances. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The record shows that Respondent registered the disputed domain name long after Complainant perfected its trademark rights in many countries. Respondent registered the disputed domain name under a privacy protection service, without authorization or knowledge of Complainant, well before the parties entered into the formal Service Supply Agreement. This suggests that Respondent was acting out of its own commercial motivation. The Panel therefore infers that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant's mark. Registration in bad faith is therefore established.
The Complainant contends that Respondent's offer to transfer the disputed domain name to Complainant for 10,000 Euros establishes bad faith under Policy paragraph 4(b)(i). However, the terms of that provision require that circumstances show that a respondent "registered ... the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration" to a complainant or a competitor for an amount in excess of respondent's out-of-pocket costs. Id. (emphasis supplied) The record in this case falls short of establishing that, at the time of registration, Respondent's purpose was to sell, rent or otherwise transfer the disputed domain name. Consequently, the Panel declines to find bad faith directly under Policy paragraph 4(b)(i).
The Panel nonetheless finds that Respondent's high asking price is probative of Respondent's bad faith, when taken together with several other indications. Those other indications of bad faith include: the unauthorized use of Complainant's trademarked logo; the lack of a disclaimer or description of the relationship with Complainant; the use of misleading or inaccurate contact information in the WhoIs record; the fact that Respondent refrained from responding to the Complaint in this proceeding; and continued use of the disputed domain name to conduct business on its own account, in competition with Complainant, following the termination of the Supply and Services Agreement. 3
The Panel consequently concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
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 <aitex-pakistan.com> be transferred to Complainant.
Jeffrey D. Steinhardt
Date: November 29, 2014
1 The contract and termination notices are annexed to the Complaint, as are copies of all email correspondence and other written communications referred to in the Panel's summary of allegations.
2 Adding to this, Respondent was not apparently an exclusive dealer for Complainant (if considered to be a dealer at all). The agreement makes clear that Mr. siddiqui's appointment was not as a representative but only for duties of promoting Complainant's products and services in the territory. The appointment specifically obligates Mr. siddiqui to "not impede" others in the territory from undertaking the same activities. The Panel reaches a logical conclusion that it would not under such terms be appropriate to determine that Respondent, a single company, could be found to have bona fide interests in the disputed domain name if the effect is to exclude Complainant's other similar service providers in the territory.
3 Use of a disputed domain name for direct competition with the mark holder is frequently deemed to be evidence of use in bad faith. See, e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240); Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088).