WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NORDTEK IMEXCO v. Nordtek imex
Case No. D2017-2446
1. The Parties
The Complainant is NORDTEK IMEXCO of Csomád, Hungary, represented by SBGK Law Office, Hungary.
The Respondent is Nordtek imex of Singapore.
2. The Domain Name and Registrar
The disputed domain name <nordtekimex.com> 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 December 12, 2017. On December 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 12, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a request for amendment by the Center, the Complainant filed an amended Complaint on December 21, 2018.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 18, 2018.
The Center appointed James A. Barker as the sole panelist in this matter on February 1, 2018. 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
The main activity of the Complainant is, somewhat vaguely, described in the Complaint as "non-specialised wholesale trade", including sale via mail order or the Internet, and publishing and packaging activities. The description of the Complainant on Wikipedia is somewhat clearer, which is as follows:
"Nordtek Imexco creates, produces, sells and distributes packaging and packaging components for cosmetics, toiletries and household chemicals. They distribute the products of both local and foreign manufacturers. Their aim is to ensure a supermarket type service with wide selection, availability and favourable pricing for small buyers as well. Products from the Nordtek group are used for the shampoos, liquid soaps, face creams, body lotions and cleansers sold in all major chain stores in the region."
The Complainant is the owner of the domain name <nordtek.hu> which it registered in 1998.
The Complainant provides evidence of the website at the disputed domain name. That website appears to purport to be a contact page for the Complainant. It provides address and contact details for its 'Hungary Office' and 'Thailand Address' and contains links to subpages for things such as 'Paper Products Available' and 'Wood Products Available'. The website includes photographs of photocopy paper and states, among other things, that "The company registered capital of 25 million, more than 1000 employees. Our main products is A4 Copy paper all brands available as we do private label (OEM services for free)".
In the absence of a Response, there is no direct evidence about the business of the Respondent.
The Registrar has provided WhoIs details that give an address for the Respondent in "bhubanesawar orissa" Singapore. From the records of transmission of the case file, this appears to the Panel not to be a real address.
The disputed domain name was registered by the Respondent on March 17, 2017.
5. Parties' Contentions
The Complainant relies on having an unregistered mark for NORDTEK IMEXCO, which it says has become a distinctive identifier associated with the Complainant's goods and services. The Complainant says that this mark is used in Hungary and other countries based on the Complainant's sales of products online. As evidence of the distinctiveness of its claimed mark, the Complaint attaches evidence of its profit and loss accounts, and invoices to demonstrate that it sells its products world-wide. The Complaint also attaches statistics of visits to its website at <nordtek.hu> and invoices relating to its marketing and advertising costs.
The Complainant makes its substantive allegations briefly.
The Complainant says that the disputed domain name is confusingly similar to its unregistered mark, since they differ only in the two letters ("co") which evidently refer only to the company status of the Complainant.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is the sole legal holder of its unregistered mark, which is also its company name, and which it says is protected by personal and intellectual property rights.
The Complainant says that the disputed domain name was registered and has been used in bad faith. The Complainant says that it is the responsibility of the Respondent to determine whether its domain name registration infringes or violates someone else's rights. The disputed domain name was registered in bad faith, since the Respondent has used the Complainant's company details without its consent. The Complainant provides evidence that the Respondent sells goods in the name of the Complainant and asks customers to pay in advance. The Complainant also refers to "an ongoing process against the Respondent before the competent Hungarian Police Headquarters".
The Complaint provides evidence of what it says are fake invoices issued by the Respondent, and copies of associated emails from the Respondent to prospective customers. One of those emails in March 2017 purports to be from an address "@nordtekimex.com" and opens with the statement "Accept greetings from the entire staff of Nordtek imexco kft…in confirmation to the purchase order, find attached to this email our proforma invoice for this order. You are hereby advised to proceed further with the 30% deposit as stipulated in the proforma invoice so we can start working on your order."
The Complainant says that the Respondent was not contactable at its given address, phone number or email.
The Complainant also provides copies of cease and desist "orders" that it sent to the Registrar, demanding that it cease from hosting a fraudulent website at the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered in bad faith and is being used in bad faith.
Each of these three elements is discussed in turn below.
A. Identical or Confusingly Similar
Rights in a trademark or service mark
A complaint can proceed, under paragraph 4(a)(i) of the Policy, on the basis of a complainant establishing either unregistered or registered trademark rights (see section 1.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). As noted above, the Complainant in this case relies on having an unregistered trademark for NORDTEK IMEXCO.
A threshold issue in this case is whether the Complainant has provided sufficient evidence of having such an unregistered trademark. The things which a complainant must demonstrate to successfully assert unregistered or common law trademark rights is set out in section 1.3 of the WIPO Overview 3.0. As relevantly set out in that section:
"To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant's goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys."
"Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning."
"The fact that a respondent is shown to have been targeting the complainant's mark (e.g., based on the manner in which the related website is used) may support the complainant's assertion that its mark has achieved significance as a source identifier."
The Complainant has not provided strong evidence of having unregistered trademark rights. Having regard to the factors set out in the WIPO Overview 3.0:
- The Complainant has not provided any clear evidence of how long it has used its claimed mark, and the nature of that use. This said, the Complainant points to its registration of a domain name incorporating at least the element "nordtek" in 1998. The Complainant also says that it was registered as a company in 1997, and claims (without any direct evidence) that it has used its claimed mark from that establishment date. Despite this, the evidence of the Complainant's registration as a company in 1997, and its registration of a domain name incorporating an element of its claimed mark in 1998, suggests that it is reasonable to infer that the Complainant has been using its claimed mark, in some way, since at least that time.
- Neither does the Complainant give any clear picture of the amount of sales it has achieved under that mark. The Complainant provides its "profit and loss" accounts for the years 2015 and 2016. However those accounts, by themselves, do not show sales using its claimed mark per se or, for that matter, any other associated mark.
- The Complainant has also not provided any direct evidence of the nature and extent of advertising using its mark. The Complainant provided some evidence from 2016 and 2017 of its "advertising costs". This evidence does not directly show that the Complainant had undertaken advertising by reference to its claimed mark. All that this evidence demonstrates is how much the Complainant has spent. It does not provide direct evidence of the Complainant's actual marketing efforts for its products using, or in connection with, its claimed mark.
- The Complainant provided no direct evidence of actual public recognition of its mark. The Complainant provides some evidence of visits to its website in 2016-2017, in particular numbers of 'page views'. Again, this evidence does not directly point to recognition of the Complainant's claimed mark.
- The Complainant provided no evidence of consumer surveys.
It appears to the Panel that the Complainant thinks that evidence of the extent of its business and business expenses necessarily demonstrates rights in its corporate name NORDTEK IMEXCO as an unregistered trademark. This argument is further confused by the Complainant's own evidence. For example, the Complainant provides a selection of invoices as apparent evidence for its claimed mark NORDTEK IMEXCO. However those invoices appear to show that it uses the term NORDTEK as a logo (which appears in stylized form the top left corner of each invoice), while the term NORDTEK IMEXCO KFT appears only as the Complainant's corporate name. NORDTEK IMEXCO does not appear to be used as a logo or mark, standing alone. While the Complainant relies on having an unregistered mark in NORDTEK IMEXCO, from the evidence in the case file, it is not clear to the Panel whether the Complainant additionally or alternatively may have claims to marks for NORDTEK or NORDTEK IMEXCO KFT. The Complaint itself makes no such additional or alternative claims.
While the evidence that the Complainant has provided in this respect is underwhelming, the Panel nevertheless finds that there is sufficient evidence, in all the circumstances of this case, to point to the Complainant having a common law mark in NORDTEK IMEXCO. This is for the following reasons:
Firstly, it does not appear to the Panel that the term NORDTEK IMEXCO is generic or descriptive as a combined term. The Panel admits that it makes this finding somewhat tentatively, as the Complainant provided no explanation or evidence at all for the origin of its mark, and the Panel has no familiarity with whether term may have some meaning in Hungarian or some other language. While the Complainant provided no evidence on this point, the Panel understands that IMEX may stand for "import export" and that CO may simply stand for "company". Even if this is so, the term NORDTEK does not appear descriptive when combined with these elements. The apparent distinctiveness of these combined elements at least suggests to the Panel that the Complainant has a viable claim to having unregistered trademark rights. In this connection, the Panel agrees with the statement by a previous panel that "the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on the complainant to present the panel with extensive supporting evidence": Bernardelli Cesarina v. Paola Ferrario, Ferrario Photography, WIPO Case No. D2017-0091.
Secondly, the Complainant appears to have been in business for at least 20 years, trading under the corporate name NORDTEK IMEXCO, and offering its goods and services on a related website. Similar long-standing trade under a corporate name has been found to be a legitimate factor in establishing unregistered trademark rights in past decisions under the Policy: see e.g. Arnold Bernhard & Co., Inc. v. PrivacyProtect.Org / Kevin Dale Press, WIPO Case No. D2010-1511; Synthite Limited v. Synthite Chemicals, WIPO Case No. D2013-1518. (In both of those cases, the Panels also found that the respondents were operating fraudulent websites, on which the Panel in this case makes a similar finding as outlined below.)
Thirdly, the Complainant operates in a specialized field of business – that of packaging for particular products such as cosmetics. Within this particular field of business, and for those searching on the Internet in this field, the Panel considers it more likely than not that the Complainant's mark may have some distinctiveness in this field. The Panel also undertook a limited Google search for "NORDTEK IMEXCO" and notes that the top results related to the Complainant.
Fourthly, and as supported by the WIPO Overview 3.0, the fact that the Respondent has clearly and deliberately targeted the Complainant (considered further below) supports a finding that the Complainant's corporate name has acquired some distinctiveness as an unregistered mark.
Fifthly, the Respondent has not refuted the allegations in the Complaint. While this factor alone does not provide positive evidence to support the Complainant's claims to having an unregistered mark, it does mean that the limited evidence provided and allegations made by the Complainant are uncontested.
For all these reasons, the Panel finds that the Complainant has rights in an unregistered trademark for NORDTEK IMEXCO, for the purpose of these proceedings.
Identical or confusingly similar
The next issue is whether the disputed domain name is identical or confusingly similar to the Complainant's unregistered mark. In this case, ".com" operates only as a Top-Level Domain ("TLD") identifier, and so is not relevant for the purpose of determining if the disputed domain name is identical or confusingly similar.
Disregarding that element, it is apparent that the disputed domain name is only different from the Complainant's mark because it does not include the "co" element. The Panel does not consider that this difference is sufficient to avoid a finding of confusing similarity. The "co" element is textually small. It is also generally understood to be a reference to the corporate status of an entity, particularly when appearing at the end of a term, as it does in the Complainant's mark. The Complainant's mark is otherwise substantially incorporated in the disputed domain name.
For these reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant's mark.
B. Rights or Legitimate Interests
While the burden of proof for this requirement, like each element, falls on the Complainant, it is well-established that it is usually sufficient for a complainant to make a prima facie case against a respondent. Having made such a case, the burden of production shifts to the respondent to rebut that case. See, section2.1 of the WIPO Overview 3.0.
The Complainant has at least made a bare prima facie case in this respect. The Respondent has made no reply. All the other circumstances of this case, outlined further below, strongly suggest that the Respondent lacks rights or legitimate interests in the disputed domain name.
For these reasons, the Panel finds that the Complainant has established that the Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These include circumstances where:
"(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
The evidence in this case strongly indicates that this is what the Respondent has done. The Respondent has used the disputed domain name to establish a fraudulent website, and apparently sent emails (attached to the Complaint) in which the Respondent purports to use the Complainant's identity to deceive the recipients of such emails or the visitors to the website into believing that they were dealing with the Complainant. In the evidenced email correspondence, the Respondent asks for upfront deposits for packaging products that it claims to offer, which obviously were sent with the intention of commercial gain. Consistent with paragraph 4(b)(iv) of the Policy, this is clear evidence of both registration and use of the disputed domain name in bad faith. The Respondent's provision of apparently false contact details only reinforces this conclusion.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) 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 <nordtekimex.com> be cancelled.
James A. Barker
Date: February 15, 2018