WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SSAB Technology AB v. Registration Private, Domains by Proxy, LLC / Cheyenne Kamran
Case No. D2017-1713
1. The Parties
The Complainant is SSAB Technology AB of Stockholm, Sweden, represented by Ports Group AB, Sweden.
The Respondent is Registration Private, Domains by Proxy, LLC of Scottsdale, Arizona, United States of America / Cheyenne Kamran of West Vancouver, Canada.
2. The Domain Name and Registrar
The disputed domain name <hardoxinside.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2017, against Registration Private, Domains By Proxy, LLC, as the Respondent. The Center transmitted its request for registrar verification to the Registrar the same day. The Registrar replied on September 9, 2017, stating that the Domain Name is registered with it, that the registrant is Cheyenne Kamran, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies to the Domain Name, that the Domain Name expires on May 16, 2018 and will remain locked during this proceeding, that the registration agreement is in English, and that the Domain Name has been registered to the registrant since at least September 7, 2017. The Registrar also provided the full contact details held on its WhoIs database in respect of the Domain Name.
On September 12, 2017 the Center invited the Complainant to amend the Complaint based on the registrant information received from the Registrar. The Complainant submitted an amended Complaint on September 14, 2017, naming the Respondent as Cheyenne Kamran.
The Center verified that the amended Complaint satisfied the formal requirements of the 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 15, 2017. In accordance with paragraph 5 of the Rules, the due date for Response was October 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2017.
The Center appointed Jonathan Turner as the sole panelist in this matter on October 11, 2017. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the amended Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant produces specialist steels. Its registered trademarks include HARDOX (registered in France under registration number 1393497 on February 10, 1987 and subsequently in various other jurisdictions) and a logo containing the words HARDOX IN MY BODY (registered in several jurisdictions by international application number 1102028 on November 17, 2011 and in the European Union under number 010417996 on April 19, 2012).
The Domain Name resolves to a web page that displays a logo containing the words HARDOX INSIDE and Persian writing alongside pictures of lorries.
The Complainant sent cease and desist letters to the Respondent at the privacy service email address on the publicly available WhoIs database on July 13 and September 1, 2017, but did not receive any reply.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the registered marks, from which it differs only in the generic word “inside” and the generic Top-Level Domain (“gTLD”) suffix “.com”.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that the Respondent is not a licensee of the Complainant and has not been authorized by the Complainant to register the Complainant’s mark as a domain name. The Complainant adds that the Respondent’s website displays a distorted version of the Complainant’s logo, giving the impression that it is authorized by the Complainant. Furthermore, according to the Complainant, there is no evidence of any legitimate use of the Domain Name by the Respondent or that the Respondent has been commonly known by the Domain Name or that the Respondent is making a legitimate noncommercial or fair use of the Domain Name.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant points out that its use of the mark HARDOX predates the registration of the Domain Name and that the Respondent’s use of a distorted version of the Complainant’s logo shows that the Respondent was aware of the Complainant’s mark. The Complainant says that the Respondent may have registered the Domain Name to get an offer from the Complainant. Noting the Persian writing on the Respondent’s webpage, the Complainant observes that its HARDOX mark has been registered in the Islamic Republic of Iran since July 18, 1994 under registration number 73351.
The Complainant requests a decision that the Domain Name be transferred to it.
As stated above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove:
(i) That the Domain Name is identical or confusingly similar to a mark or marks in which it has rights
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name
(iii) That the Domain Name was registered and is being used in bad faith.
It is appropriate to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default in failing to file a response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered rights in the word mark HARDOX and a logo containing the words HARDOX IN MY BODY.
The Panel further finds that the Domain Name is confusingly similar to these marks. The gTLD suffix “.com” and the descriptive term “inside”do not provide any distinction between the Domain Name and these marks. Many Internet users would understand “inside”to refer to the use of HARDOX steel inside a product, in line with the message conveyed by the HARDOX IN MY BODY logo.
The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Panel finds on the undisputed evidence that the Respondent has not used or made demonstrable preparations to use the Domain Name for any bona fide offering of goods or services or for any legitimate noncommercial or fair use. It is also evident that the Respondent is not commonly known by the Domain Name.
On the material in the file, there is no other basis on which the Respondent could claim any rights or legitimate interests in respect of the Domain Name.
The Panel accordingly finds on the evidence that the Respondent has no rights or legitimate interests in respect of the Domain Name. The second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
In view of the representation of the Complainant’s mark in a manner derived from the Complainant’s logo on the Respondent’s web page, it seems clear that the Respondent now has knowledge of the Complainant’s mark, and it is reasonable infer that the Respondent had this knowledge when registering the Domain Name. It is also evident that the Respondent appreciates that the Domain Name is confusingly similar to the Complainant’s mark, since the representation of the Complainant’s mark on the Respondent’s web page cannot be a mere coincidence. It is also clear that the Respondent has registered and is using the Domain Name in this way without the Complainant’s authorization.
In the absence of any plausible explanation for this conduct that would be consistent with good faith, the Panel infers that the Respondent has acted in bad faith, either for the purpose of selling the Domain Name to the Complainant or a competitor of the Complainant or to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s mark.
In all the circumstances, the Panel finds on the balance of probabilities that the Domain Name was registered and is being used in bad faith. All three requirements of the UDRP are satisfied and it is appropriate to direct that the Domain Name be transferred to the Complainant.
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, <hardoxinside.com> be transferred to the Complainant.
Date: October 23, 2017