WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fives Cryomec AG v. Igor Voronin / Internet Invest Limited

Case No. D2017-0595

1. The Parties

The Complainant is Fives Cryomec AG of Allschwil, Switzerland, represented by Mrs. Marie Emmanuelle HAAS, France.

The Respondent is Igor Voronin of Kiev, Ukraine / Ukraine Internet Invest Limited of Kiev, Ukraine, self-represented.

2. The Domain Name and Registrar

The disputed domain name <cryomec.com> is registered with Internet Invest, Ltd. dba Imena.ua (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2017. On March 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 28, 2017, the Registrar transmitted by email to the Center its verification response confirming the language of the Registration Agreement as Russian and 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 March 29, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent an email to the Parties regarding the language of the proceeding. On March 31, 2017, the Complainant requested the language of the proceeding to be English. On April 2, 2017, the Respondent objected to the Complainant’s request and requested the language of the proceeding to be Russian. On April 3, 2017, the Center informed the Parties of its decision to accept the Complaint in English, accept a Response in either English or Russian, and appoint a Panel familiar with both languages mentioned above, if available. On April 7, 2017, the Complainant filed an amended Complaint.

The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2017. A request was received and granted for the automatic four calendar day extension for response submission under paragraph 5(b) of the Rules, so the due date for the Response was extended to May 5, 2017. As a further extension to the response date was requested, the Center extended the due date of the response to May 10, 2017. On May 10, 2017, the Respondent filed its Response.

The Center appointed Assen Alexiev as the sole panelist in this matter on May 22, 2017. 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 respect of the language of the proceeding, the Panel notes the following. According to the information provided by the Registrar, the language of the Registration Agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties or otherwise specified in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant has submitted its Complaint in English, and requests that the proceeding be held in English on the grounds of fairness and the expeditious resolution of the dispute. The Complainant has submitted that the Respondent has a good knowledge of English, as evident from the correspondence and contractual documents between the Parties and the content of the Respondent’s website. The Respondent has objected to the Complainant’s request in respect of the language of the proceeding and requested the language of the proceeding to be Russian. The Respondent points out that it is a Ukrainian citizen and its language of communication is Russian; the contractual documents cited by the Complainant were entered into not with the Respondent, but the legal entity Technex Limited; and that English speaking lawyers in Ukraine are expensive.

The Panel notes that the contractual documents cited by both Parties are indeed between the Complainant and the company Technex Limited, but these documents, as well as the correspondence to the Complainant, were signed by the Respondent on behalf of Technex Limited. Also, the website of Technex Limited at “www.technexcryo.com” states that the Respondent is fluent in English among other languages. In these circumstances, it appears to the Panel that the Respondent has good knowledge of English and that using English in this proceeding will be fair and efficient and will not put either of the Parties at a disadvantage, particularly considering that, the Respondent was permitted to submit the Response in Russian,. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel has decided that the language of this administrative proceeding be English. At the same time, the Panel has reviewed and taken into account the Response and all evidence available in this case in Russian.

The Respondent maintains that the dispute between the Parties is not fit for resolution under the Policy, as it includes complicated issues of the commercial relationship between the Parties and its termination by the Complainant, and should be resolved through arbitration or litigation. Having considered the arguments put forward by the Respondent, the Panel has decided that it has jurisdiction to decide the dispute. As confirmed by the Registrar, the Registration Agreement for the disputed domain name incorporates the Policy. The existence and eventual termination of the commercial relationship between the Parties does not affect the jurisdiction of the Panel, and the resolution of this commercial dispute does not appear to the Panel to be a necessary prerequisite for the resolution of their dispute in relation to the disputed domain name. For these reasons, the Panel has decided that the present proceeding should continue and has issued the present decision.

4. Factual Background

The Complainant was established in 1977 in Switzerland under the name Cryomec AG, and is specialized in the design, manufacture, commissioning and maintenance of centrifugal and reciprocating cryogenic pumps used in liquefied gases industries. In 1998 the Complainant was acquired by the Fives group and was renamed Fives Cryomec AG. The Fives group is an industrial engineering group located in over 30 countries and having nearly 8,300 employees.

The Complainant is the owner of a number of trademarks, including to following registrations (the “CRYOMEC trademark”):

- the International trademark CRYOMEC with registration No. 498067, registered on November 14, 1985 for goods in International Classes 7 and 11, and protected in Benelux, Italy, Liechtenstein, the United States of America and China;

- the French trademark CRYOMEC with registration No. 1304920, registered on April 4, 1985 for goods in International Classes 7 and 11; and

- the Swiss trademark CRYOMEC with registration No. 2P-339842, registered on July 1, 1985 for goods in International Classes 7 and 11.

The Complainant and Technex Limited, represented by the Respondent, started working together in 2012. They signed two commercial representation agreements for 2015 and for 2016. On January 18, 2016, the Complainant issued a letter confirming that Technex Limited was its exclusive agent in Ukraine for 2016. However, the contractual relationship between the Complainant and Technex Limited soon deteriorated, and on May 18, 2016, the Complainant sent to Technex Limited a letter for the termination of the commercial representation agreement.

The disputed domain name was registered by the Respondent in 2015. It is associated to the website of Technex Limited and is available in English, Russian, Chinese and Arabic.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name was registered and is being used for the activities of Technex Limited without authorization from the Complainant. The contractual relations between the Complainant and Technex Limited deteriorated when the Complainant found out that the disputed domain name had been registered without its authorization and was used for email addresses listed on the Technex Limited website at “www.technexcryo.com”. On February 22, 2016 the Complainant sent a letter asking Technex Limited to stop using the disputed domain name for email addresses like “sales@cryomec.com”, pointing out that this website was confusing for the companies that intend to contact the Complainant under its previous name “Cryomec’’. On May 26, 2016, the Respondent responded to this letter on behalf of Technex Limited, confirming that all “cryomec.com” email addresses were deleted and that the website at the disputed domain name was not yet activated. The Complainant points out that, contrary to this statement of the Respondent, the website at the disputed domain name and the email addresses “sales@cryomec.com” and “service@cryomec.com” are currently active. The section “About Cryomec” of the website at the disputed domain name contains the following statements:

“About us

Cryomec.com is a property of CRYOMEC AG (Switzerland) since 1977. CRYOMEC AG (Switzerland) is a unique designer and manufacturer of CRYOMEC cryogenic pumps and spare parts.

CRYOMEC cryogenic pumps are working in many countries and are among the most reliable pumps in the world. In 1998 Cryomec AG Company was acquired by Fives Group and renamed to Fives Cryomec AG (Switzerland). Since 2016 Cryomec.com is a property of Technex Limited engineering company (www.technexcryo.com)”

“Cryomec.com, as part of Technex Limited engineering company, is an independent international supplier of cryogenic pumps and spare parts for cryogenic pumps manufactured by Fives Cryomec AG (Switzerland) and CRYOMEC AG (Switzerland).

Cryomec.com, as part of Technex Limited engineering company, provides a global service and technical support to all customers who use cryogenic pumps manufactured by CRYOMEC AG (Switzerland) and Fives Cryomec AG (Switzerland).

Cryomec.com pleased to offer our customers a special wholesale prices for spare parts and service.

Today, customer service Cryomec.com consists of Professional Engineers familiar with the design of many well-known cryogenic pump brands, including CRYOSTAR, SEFCO, ACD.”

The Complainant also points out that the email addresses “sales@cryomec.com” and “service@cryomec.com” are currently listed in the “Contacts” section of the website at the disputed domain name.

The Complainant underlines that even an authorized agent may not without authorization take the initiative to create a domain name composed of its principal’s trademark, while being aware of its principal’s trademark rights.

The Complainant asserts that the disputed domain name is identical to the CRYOMEC trademark, as it incorporates the trademark entirely without the addition of any other term.

The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The past commercial relations between the Complainant and Technex Limited never authorized the Respondent to register and use the disputed domain name and to monopolize a domain name under the generic Top-Level Domain (“gTLD”) “.com” that is composed of the Complainant’s CRYOMEC trademark. The Respondent, as the legal representative of Technex Limited, is well aware of the rights of the Complainant in the CRYOMEC trademark. The current use of the disputed domain name by Technex Limited, under the Respondent’s control, is not a legitimate noncommercial or fair use, without intent for commercial gain, but rather aims at misleadingly diverting consumers, for a commercial gain.

The Complainant contends that the disputed domain name has been registered and used in bad faith by the Respondent. When registering the disputed domain name, the Respondent was well aware of the Complainant’s rights in the CRYOMEC trademark. This is evident from the content of the website at the disputed domain name, which states that “Cryomec.com is a property of CRYOMEC AG (Switzerland) since 1977”. The registration of the disputed domain name composed of a coined trademark was made to prevent the Complainant from reflecting the CRYOMEC trademark in a corresponding domain name and to disrupt its business. The website at the disputed domain name, being under the control and the responsibility of the Respondent, has the false and misleading appearance of an official and legitimate website of the Complainant. It uses the CRYOMEC trademark in order to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s CRYOMEC trademark as to the source, sponsorship, affiliation, or endorsement of this website.

B. Respondent

The Respondent confirms that Technex Limited - the company represented by him - had entered into commercial representation agreements with the Complainant for 2015 and 2016. In two certificates, issued in 2014, the Complainant confirmed that Technex Limited was the official agent of the Complainant in Ukraine. In a certificate issued on January 18, 2016, the Complainant confirmed that Technex Limited was an official authorised service partners of the Complainant and exclusive service agent of the Complainant in Ukraine. The Respondent alleges that as a result, the Respondent and Technex Limited act as agents and distributors of the Complainant for the sale of its products.

The Respondent points out that the CRYOMEC trademark is not registered in Ukraine. The website at the disputed domain name is directed to Ukrainian clients, because its “Contacts” section provides contact details in Ukraine, while its English language version is provided to assist English speaking clients based in Ukraine. Under the commercial representation agreements with the Complainant, Technex Limited was authorized to sell the Complainant’s products in Ukraine.

The Respondent alleges that the CRYOMEC trademark lacked distinctiveness in respect of the Complainant because it consisted of the terms “cryo”, meaning cryogenics, and “mec”, meaning mechanism. The Respondent also refers to third-party’ trademark registration for CRYOMEC in Germany and trademark application for CRYOMEC in the United States of America.

The Respondent maintains that it has rights and legitimate interests in the disputed domain name. Under the Policy, intermediaries and distributors who register a domain name for the purpose of offering the goods and services of the trademark owner are deemed to have acted in good faith and to have a legitimate interest in the respective domain name. In its support, the Respondent cites the decision in Oki Data Americas, Inc. v. ASD, Inc., Case No.D2001-0903. In this regard, the Respondent submits that when it purchased the disputed domain name, it was an authorised distributor of the Complainant, that the website at the disputed domain name has always offered only the goods of the Complainant, that the same website properly described the relations between the Parties, and that the Respondent did not register the disputed domain name with the purpose to deprive the Complainant of it, as the Complainant had changed its branding and had abandoned its registration. According to the Respondent, the commercial representation agreements with the Complainant do not contain any terms related to domain names.

The Respondent submits that it did not register the disputed domain name on January 17, 2015, but it purchased it on August 18, 2015 for USD 4,000 with the sole purpose to perform the commercial representation agreements with the Complainant and to increase the sales of its products. The Respondent alleges that it was performing all of its obligations under the commercial representation agreement with the Complainant, but the latter unilaterally terminated the agreement and seeks to take the disputed domain name.

The Respondent submits that in 2015 the disputed domain name was registered by the company Justdropped.com Inc., which may be a cybersquatter, until the Respondent acquired it for USD 4,000. According to the Respondent, by acquiring the disputed domain name for the purpose of good faith sales of the Complainant’s products, the Respondent eliminated the risk for negative consequences if the disputed domain name was acquired by third parties. The website at the disputed domain name now actively promotes and distributes the products of the Complainant, which has positive business effects.

The Respondent disputes that it has registered and used the disputed domain name in bad faith. It submits that is has never offered the dispute domain name for sale to the Complainant. The registration of the disputed domain name could not prevent the Complainant from reflecting its trademark in a corresponding domain name, as the Complainant had its website at a different domain name. According to the Respondent, the Complainant had its own website and the disputed domain name did not disrupt the Complainant’s business. The website at the disputed domain name disclosed that it was operated by Technex Limited and did not imitate the website of the Complainant and the CRYOMEC trademark. There was no untrue information on the website and it did not mention that the Complainant was its founder, sponsor or partner.

The Respondent submits that the use of the Complainant’s trademark for the dispute domain name and for the associated website was necessary because the Respondent, as the exclusive distributor of the Complainant, needed such a domain name and website for the successful sales of the Complainant’s products. The Respondent also needed the email addresses “sales@cryomec.com” and “service@cryomec.com” for the same purpose. According to the Respondent, the website at the disputed domain name has a different design from the website of the Complainant and cannot cause confusion to Internet users, as it displays a notice that Technex Limited is an authorised distributor of the Complainant.

The Respondent explains that the phrase on the website at the disputed domain name “Cryomec.com is a property of CRYOMEC AG (Switzerland) since 1977” actually meant that the disputed domain name was originally owned by the Complainant, and further in the text it was stated that since 2016 the disputed domain name belong to Technex Limited. According to the Respondent, the disputed domain name was owned by the Complainant in 1999, which was allegedly evident from the archived website at the disputed domain name available at the Wayback Machine, and by 2011 the Complainant lost interest in the disputed domain name and eventually its registration expired.

The Respondent claims that it purchased the disputed domain name on August 18, 2015, and the associated website was activated in May 2016. This website does not offer products of the Complainant’s competitors. It offers maintenance services for different types of pumps of different manufacturers, but the agreements with the Complainant did not contain restrictions for such activities. The information on the website that Technex Limited is an official dealer and service partner of the Complainant is not incorrect because it was true at the time when the website was activated, and then the Respondent did not remove it because the negotiations with the Complainant for their further partnership continued. After the filing of the Complaint, the Respondent did not make any changes to the website at the disputed domain name in order to preserve it as evidence in the proceeding.

The Respondent submits that the dispute between the Parties is centered on their commercial partnership and the legitimacy of its termination by the Complainant, so it should be resolved through arbitration or litigation, rather than through an administrative proceeding under the Policy.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

In this proceeding, the Respondent has used the opportunity provided to it under the Rules and has submitted a detailed Response dealing with all aspects of the dispute between the Parties.

To take its decision on the dispute, the Panel has carefully reviewed the submissions of the Parties and the evidence attached to them.

A. Identical or Confusingly Similar

The Complainant has provided evidence for its rights in the CRYOMEC trademark.

The Respondent has submitted that the CRYOMEC trademark is not registered in Ukraine, that it does not have distinctiveness and that it has been abandoned by the Complainant. The Panel has reviewed the arguments of the Respondent and the evidence submitted by it, and has reached the conclusion that these arguments are not relevant for the purposes of the test under Policy, paragraph 4(a)(i). To reach its conclusions, the Panel relies on the fact that there are valid registrations of the CRYOMEC trademark in a number of jurisdictions, and these registrations do not appear to have been challenged by the Respondent. It is not within the powers of the Panel to take decisions on the validity of trademark registrations, and if the Respondent believes that there are reasons to challenge them, it is free to take action in this respect in the appropriate forum, for which the present decision would be no obstacle. Also, as discussed in paragraph 1.1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the territory for which the Complainant’s trademark is registered is not relevant for the purposes of the test under Policy, section 4(a)(i). Therefore, the Panel is satisfied that the Complainant has rights in the CRYOMEC trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the “gTLD” of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” part of the disputed domain name.

Therefore, the relevant part of the disputed domain name that has to be examined is “cryomec”, which is identical to the CRYOMEC trademark.

Taking the above into account, the Panel finds that the disputed domain name is identical to the CRYOMEC trademark, in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the disputed domain name was registered and is being used for the activities of Technex Limited without authorization from the Complainant. The Complainant underlines that an agent may not without authorization from its principal take the initiative to create a domain name composed of its principal’s trademark, while being aware of its principal’s trademark rights. The Complainant points out that the Respondent is using the disputed domain name for email addresses like “sales@cryomec.com”, which confuse the companies that intend to contact the Complainant. The current use of the disputed domain name is not a legitimate noncommercial or fair use, without intent for commercial gain, but rather aims to misleadingly divert consumers seeking the Complainant’s products to the Respondent’s website for commercial gain. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent does not dispute that it is a legal representative of Technex Limited. It has stated that the Respondent and Technex Limited act as agents and distributors of the Complainant for the sale of its products, and that the disputed domain name was purchased with the sole purpose to perform the commercial representation agreements with the Complainant and to increase the sales of its products. The Respondent submits that the use of the Complainant’s trademark for the dispute domain name and for the associated website was necessary because the Respondent, as the exclusive distributor of the Complainant, needed such a domain name and website for the successful sales of the Complainant’s products. The Respondent also needed the email addresses “sales@cryomec.com: and “service@cryomec.com” for the same purpose. The Respondent relies on the decision in Oki Data Americas, Inc. v. ASD, Inc., supra in an attempt to substantiate that it has rights and legitimate interests in the disputed domain name.

As the Respondent does not dispute its control over Technex Limited, the Panel accepts that this is so, so it will consider the Respondent’s and Technex Limited’s actions together.

The disputed domain name incorporates the CRYOMEC trademark entirely without the addition of any other elements. This makes it likely that Internet users may regard the disputed domain name as being the official online location of the Complainant for its Cryomec products. This likelihood of confusion is further increased by the Respondent’s use of the email addresses “sales@cryomec.com” and “support@cryomec.com” listed on the website at the disputed domain name and on the website of Technex Limited at “www.technexcryo.com”. Normally, email addresses such as sales@[trademark].com and support@[trademark].com would be regarded as official email addresses of the company that is the owner of the respective trademark.

The website at the disputed domain name offers Complainant’s products, and has versions in Russian, English, Arabic and Chinese. This fact alone shows that the Respondent’s allegation that its website was directed only at Ukrainian customers is not credible. Rather, and in view of the statement on the website’s “About” section that the website “provides a global service and technical support to all customers who use cryogenic pumps manufactured by [the Complainant]”,this website is directed to all customers of the Complainant globally. This contradicts the undisputed fact that the Respondent was an authorized agent of the Complainant only for Ukraine and some other countries of the former Soviet Union.

The “About” section of the website at the disputed domain name may also mislead Internet users into believing that this website is an official website of the Complainant. Notably, this section is called in English “About the company”, and starts with the statement that “Cryomec.com is a property of CRYOMEC AG (Switzerland) since 1977.” The Russian version of the same section is called “About us” and starts with the sentence “Сryomec.com belongs to the company CRYOMEC AG (Switzerland) established in 1977.” It is true that further below in the text there is another sentence saying that “Since 2016 Cryomec.com is a property of Technex Limited engineering company (www.technexcryo.com)”, but it is not stated anywhere that Technex Limited is not a member of the Complainant or its related companies, and the whole section, being entitled “About us”, leaves the impression that it describes one group of companies.

In the Panel’s view, the statements contained in this section appear to have been drafted in a way that may cause confusion and mislead Internet users into believing that the website at the disputed domain name is an official website of the Complainant and that Technex Limited is a member of the Complainant’s group of companies or at least that the website at the disputed domain name has been authorized by the Complainant.

Further, the Respondent’s website implies that its services are not limited to those of the Complainant’s products, as it indicates that “customer service Cryomec.com consists of Professional Engineer’s familiar with the design of many well-known cryogenic pump brands, including CRYOSTAR, SEFCO, ACD”.

Having taken into account the circumstances of this dispute, the Panel is not convinced that the principles set out in the Oki Data decision (the so-called “Oki Data test”) help the Respondent’s position. As discussed above, the Respondent’s website does not correctly describe the relationship between the Parties and the email addresses used by the Respondent may confuse Internet users that they represent official email addresses of the Complainant. In any event, as summarised in section 2.8 of the WIPO Overview 3.0, cases applying the Oki Data test usually involve domain names comprising a trademark plus a descriptive term (e.g., “parts”, “repairs”, or “location”), whether at the second-level or the top-level. The risk of misrepresentation has led panels to find that a respondent lacks rights or legitimate interests in cases involving a domain name identical to the complainant’s trademark. The present case is one of these, as the disputed domain name is identical to the Complainant’s trademark.

On the basis of the above, the Panel has reached the conclusion that the Respondent, being well aware of the business of the Complainant, is likely to have registered and used the disputed domain name in an attempt to exploit the popularity of the Complainant and of its CRYOMEC trademark, to attract the attention of Internet users and to mislead them that the disputed domain name and the associated website represent official online locations of the Complainant. In the Panel’s view, such conduct cannot be regarded as giving rise to rights and legitimate interests of the Respondent. Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(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 that 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 web site 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 provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

As discussed above, the disputed domain name fully incorporates the CRYOMEC trademark and is identical to it. The Respondent does not deny that it acquired the disputed domain name without the knowledge and consent of the Complainant. The email addresses “sales@cryomec.com” and ‘support@cryomec.com” listed on the website of Technex Limited at “www.technexcryo.com” also incorporate the CRYOMEC trademark. The Panel notes in this regard that section 10.2 of the commercial representation agreements signed between the Complainant and Technex Limited specify that “[Technex Limited] shall not register nor use any Principal’s trademarks, trade names and logos, without Principal’s prior written approval.”Indeed, this sentence does not explicitly mention domain names, as pointed out by the Respondent. However, it appears to the Panel that the incorporation of the Complainant’s CRYOMEC trademark in an identical domain name and in the email addresses “sales@cryomec.com” and “support@cryomec.com” for the purposes of the offering and sale of the very products for which the CRYOMEC trademark is registered, represents use of this trademark, and this use was clearly made without the Complainant’s approval in contradiction with the requirements of section 10.2 of the Parties commercial representation agreements.

On the basis of the above, and in view of the considerations of the Panel set out in the section related to rights and legitimate interests, the Respondent is likely to have registered the disputed domain name targeting the CRYOMEC trademark in an attempt to attract traffic to the disputed domain name and to the email addresses “sales@cryomec.com” and “support@cryomec.com” by confusing Internet users that they are reaching official online locations and contact details of the Complainant. On the basis of the above, the Panel is prepared to accept that this conduct of the Respondent represents a bad faith registration of the disputed domain name.

The Respondent’s website at the disputed domain name confusingly describes the ownership over the disputed domain name and the relations between the Complainant and Technex Limited. The continued use of this website and of the email addresses associated with the disputed domain name contrary to the explicit protest of the Complainant may confuse Internet users that they are dealing with the Complainant and may thus illegitimately redirect business from the Complainant to the Respondent and to Technex Limited. In view of this, the Panel accepts that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name and to its associated email addresses, by creating a likelihood of confusion with the Complainant’s CRYOMEC trademark as to the source, sponsorship, affiliation, or endorsement by the Complainant of the Respondent’s website and of the services offered by the Respondent. This may lead to disruptions of the Complainant’s business in Ukraine and elsewhere. Therefore, the Panel finds that the disputed domain name is being used in bad faith.

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 <cryomec.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: June 19, 2017