WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Perkins Holdings Limited v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Adam Yusfan Edwin
Case No. D2015-0239
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 / Adam Yusfan Edwin of Bekasi Selatan, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <gensetperkins.com> (“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 16, 2015. On February 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 18, 2015, 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 February 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2015. Prior to commencement, Respondent sent an informal e-mail communication to the Center on February 17, 2015. Respondent did not submit any substantive response. Accordingly, the Center notified the parties of the commencement of the Panel appointment process on March 13, 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, on March 26, 2015 the Panel directed the Center to ask Respondent if he “would be willing to transfer the Domain Name to the Complainant.” That same day Respondent responded: “Yes, please transfer the domain, the domain is already expire and the owner is not using it.”
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 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).
Respondent registered the Domain Name on March 5, 2013 using a privacy protection service. The Domain Name (at the time this Complaint was filed) pointed to a parking page displaying commercial links, including links that make direct reference to Complainant, such as “Perkins Generator set”, “Perkins Genset”, “Perkins diesel generator” as well as links that redirect Internet users to third party websites offering for sale products that are in direct competition with those of Complainant, such as products of Cummins and Kohler.
5. Parties’ Contentions
Complainant argues that the Domain Name is confusingly similar to its PERKINS Mark. The Domain Name incorporates the PERKINS Mark, which is phonetically and visually identical to the Mark, and only differs from the Mark by 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 Complainant’s Mark because the dominant component of the Domain Name is Perkins. Also, the term “genset” reinforces the confusing similarity given that it refers to products closely related to Complainant’s products for which Complainant’s trademarks have been registered.
Complainant also argues that Respondent has no rights or legitimate interests in the Domain Name because: Respondent is not an authorized dealer, distributor or licensee of Complainant; Complainant has not allowed Respondent to make any use of the PERKINS Mark; Respondent is using the Domain Name to point to a parking website displaying commercial links to third party websites offering products in direct competition with those of Complainant; Respondent is not commonly known by the PERKINS Mark and has not secured or even sought to secure any trademark rights in the Mark; and Respondent cannot assert that he has made or that he is currently making a legitimate noncommercial or fair use of the Domain Name, because the Domain Name is being used to point to a parking page containing sponsored links.
With regard to bad faith registration, Complainant points out that the Mark is highly distinctive and famous for diesel and gas engines and has been continuously used for over 80 years. Thus, by the time Respondent registered the Domain Name in 2013, Complainant had long registered and used its PERKINS Mark in relation to engines and related goods and services throughout the world and it had acquired substantial renown and repute worldwide, including in Indonesia, where the Respondent is based. That Respondent deliberately chose to register the PERKINS Mark in conjunction with the term “genset”, which is descriptive of products closely related to Complainant’s products, shows that Respondent was well aware of Complainant’s rights at the time of registration.
With regard to bad faith use, Complainant argues that 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”, which is descriptive of products closely related to Complainant's products. Internet users would expect to find a website that is affiliated to or sponsored by Complainant at a domain name incorporating the Mark and the term “genset”. Further, Respondent is using the Domain Name to point to a registrar parking website displaying sponsored links making direct reference to Complainant and to third-party websites offering for sale competitive products. This use is a strong indication of bad faith given that Respondent is not only unduly profiting from Complainant’s reknown and repute in the Mark. Also, it is engaging in the practice of ”bait and switching” by diverting Internet users away from Complainant to third party websites where Internet users will be exposed to Complainant’s competitors’ products.
Respondent is responsible for the content appearing on the parking website associated with the Domain Name regardless of whether the sponsored links are “automatically generated” or not. Furthermore, under the Policy, it is not necessary for Respondent himself to have profited directly from those sponsored links to establish bad faith use. It would be sufficient for the third parties behind the sponsored links or another third party to have made some profit from such arrangements.
That Respondent has 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 in the circumstances of this case 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
Considering Respondent’s unequivocal willingness to transfer the Domain Name to Complainant as evidenced by Respondent’s response to the Panel’s request, the Panel 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.com> be transferred to Complainant.
Harrie R. Samaras
Date: March 26, 2015