WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Perkins Holdings Limited v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Agus Hariyadi
Case No. D2015-0214
1. The Parties
Complainant is Perkins Holdings Limited of Peterborough, United Kingdom of Great Britain and Northern Ireland, represented by Hogan Lovells (Paris) LLP, France.
Respondent is Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org of Nobby Beach, Australia / Agus Hariyadi of Jakarta, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <gensetperkins.net> (“the Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2015. On February 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 11, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 11, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 16, 2015.
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 Respondent of the Complaint, and the proceedings commenced on February 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 13, 2015. Respondent sent an informal e-mail communication in Indonesian on March 14, 2015
The Center appointed Harrie R. Samaras as the sole panelist in this matter on March 24, 2015. 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.
In light of Respondent’s communication of March 13, 2015, the Panel directed the Center to ask Respondent for a translation, which it received as follows: “We apologize for the delay in my reply to emails. Because less familiar with the English language. Regarding domain gensetperkins.net I apologize for accidental and my ignorance. And I’ve closed these domains, please if the domain is already taken over because I do not use anymore. Sorry and thanks”.
4. Factual Background
Complainant is a leading manufacturer and supplier of diesel and gas engines for a broad range of industrial, agricultural, power generation and marine applications. In 1998 Caterpillar Inc. acquired Perkins. Complainant’s products and services are distinguished throughout the world by the PERKINS Mark, which has been extensively used for over 80 years. Since 1976, the only authorized official distributor of Perkins engines in Indonesia is “P T Traktor Nusantara”, with its website available at “www.traknus.co.id”.
Complainant has numerous trademark registrations for the PERKINS Mark (or “the Mark”) in many jurisdictions throughout the world, including Indonesia, Respondent’s country of residence. Such trademark registrations include: Indonesian Trademark No. IDM000072661 (registered on May 4, 2006); Indonesian Trademark No. IDM000072662 (registered on May 4, 2006); International Trademark No. 1099217 (registered on December 13, 2010); Community Trademark No. 152223 (registered on October 14, 1998); and Australian Trademark, No. 115165 (registered on August 18, 1953).
The Domain Name was registered on February 15, 2013 under the name of Respondent, privacy protection service, Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org. When the Complaint was filed, the Domain Name pointed to a website predominantly in the Indonesian language offering purported “Genset Perkins” products and also making direct reference to Perkins’ competitors, including Yanmar, Cummins, Deutz, and Stamford.
5. Parties’ Contentions
The Domain Name incorporates the term “perkins”, which is phonetically and visually identical to Complainant’s PERKINS Mark. It differs only from the Mark with the addition of “genset”, which is an abbreviation of generator sets (or generators). Given that the term “genset” is a descriptive term, it is insufficient to distinguish the Domain Name from the Mark insofar as the dominant component of the Domain Name is the PERKINS Mark. Furthermore, the term “genset” reinforces the confusing similarity given that it refers to products closely related to products for which Complainant registered the Mark.
Respondent is not Complainant’s authorized dealer, distributor or licensee, nor has Complainant allowed Respondent to use the PERKINS Mark for any purpose. Respondent is using the Domain Name to point to a website offering alleged “Genset Perkins” products however Respondent is not actually offering Perkins products because Complainant does not manufacture generator sets, only the engines which power the generator sets manufactured by other companies. Also, Respondent is using the Mark to bait Internet users and then switch them to other goods provided by Perkins’ competitors. Further, Respondent is not accurately disclosing its relationship with Complainant and is thus misleading Internet users into believing that its website is an official site of Complainant or has been approved by Complainant. There are no disclaimers or any other indication on Respondent’s website clearly stating that Respondent is not affiliated with or sponsored by Complainant. Also, Respondent is neither commonly known by the PERKINS Mark, nor has it secured or even sought to secure any trademark rights in the term. And Respondent cannot assert that it has made or that it is currently making a legitimate noncommercial or fair use of the Domain Name insofar as the Domain Name is being used to point to a website offering for sale products purportedly powered by Perkins and thus the website is clearly commercial in nature. Such use of the Domain Name cannot be either fair or legitimate as Respondent is misrepresenting itself to the public as Complainant.
When Respondent registered the Domain Name in 2013, Complainant had registered and used the PERKINS Mark long ago in conjunction with goods and services throughout the world so it was well-known, including in Indonesia, where Respondent is based. Respondent thus knew or should have known of the Mark at the time he registered the Domain Name. That Respondent registered a domain name using the PERKINS Mark with the term “genset”, which is descriptive of products closely related to Complainant’s products, leaves no doubt that Respondent was well aware of Complainant’s rights when it registered the Domain Name. Respondent is clearly using the Domain Name to cause confusion amongst Internet users searching for Complainant by combining the PERKINS Mark with the term “genset”. Indeed, there is no doubt that Internet users would expect to find a website that is affiliated with or sponsored by Complainant at a domain name incorporating the PERKINS Mark and the term “genset”. Therefore, Respondent is using the Domain Name to intentionally attract Internet users searching for Complainant to Respondent’s website. The confusion is reinforced by the content on the website. There are no disclaimers on the website or any other indication clarifying whether there is any relationship between the parties, so Internet users are likely to believe that the website is affiliated with or sponsored by Complainant. It is clear that Respondent is using the Domain Name for commercial gain, derived from the misappropriation of Complainant’s goodwill and reputation, as the PERKINS Mark in the Domain Name no doubt increases Respondent’s visibility and thus attracts Internet users to Respondent’s website. For instance, by using the Domain Name Respondent is obtaining high rankings in Google’s “natural” search, which naturally translates into an increase in traffic to its website and thus additional commercial gain
That Respondent concealed its identity by means of a privacy protection service is, in the circumstances of this case, strong additional evidence of Respondent’s bad faith. There is simply no reason that could explain why Respondent would need to protect its identity by means of a privacy shield “except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trademarks against infringement, dilution and cybersquatting.”
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Respondent voluntarily has made clear in a communication submitted to the Center that he has relinquished the Domain Name and is not interested in using it. In fact the Domain Name now resolves to a site that says “Account Suspended”. The Panel thus concludes that no further elaboration is necessary and the Domain Name should be transferred to Complainant. Wilmer Cutler Pickering Hale and Dorr LLP v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1451 (“[T]his Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements.”); Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207 (“Because Respondent has consented to the relief requested by Complainant, it is not necessary to review the facts supporting the claim.”)
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <gensetperkins.net> be transferred to Complainant.
Harrie R. Samaras
Date: April 2, 2015