WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Onduline v. Sumartono Budihardjo
Case No. D2018-0681
1. The Parties
Complainant is Onduline of Levallois-Perret, France, represented by Cabinet Signature, France.
Respondent is Sumartono Budihardjo of Surabaya, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <onduline-onduvilla.com> is registered with PT Ardh Global Indonesia (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 27, 2018. On March 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 18, 2018, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2018. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 16, 2018. On May 17, 2018, Respondent sent an email communication to the Center.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on May 22, 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
Complaint is a manufacturer of roofing materials and building products, founded in Virginia, United States, in 1976. Complaint's brands include ONDUVILLA, ONDURA, TUFTEX, and RIDGELINE.
Complainant is a company member of Onduline Group, a global leader in innovative residential and commercial roofing products with headquarters in Paris, France. Onduline's lightweight roofing materials are used worldwide for many residential, commercial, agricultural, and industrial applications. Onduline has operations on five continents with 10 production sites and 45 subsidiaries.
Complainant is the owner of a large worldwide trademarks portfolio composed in particular of the ONDULINE and ONDUVILLA trademarks and notably the following: Indonesian trademark No. 569194 for ONDULINE, registered on June 13, 2014; Indonesian trademark No. 565635 for ONDULINE ANY PLACE, ANY WEATHER, registered on February 17, 2014; Indonesian trademark No. 170018 for ONDUVILLA, registered on December 11, 2006; International trademark No. 1247739 for ONDULINE, registered on December 9, 2014 and International trademark No. 962420 for ONDUVILLA, registered on March 28, 2008.
The disputed domain name was registered on December 1, 2014. The disputed domain name is currently inactive and redirects to a "not found" page.
5. Parties' Contentions
Complainant alleges to be the holder of numerous trademarks registrations for ONDUVILLA and ONDULINE worldwide.
Complainant also argues that the disputed domain name <onduline-onduvilla.com> entirely incorporates Complainant's registered trademarks, which establishes a confusing similarity with it.
Besides that, Complainant contends that the addition of the generic top level domain ("gTLD")".com" does not exclude any likelihood of confusion since it is necessary for the registration of the domain name. Moreover, the ".com" extension should not have to be taken into account once the Complainant's trademarks ONDUVILLA and ONDULINE are phonetically, visually and conceptually identical to the disputed domain name <onduline-onduvilla.com>.
Complainant pleads that its trademarks ONDUVILLA and ONDULINE are being used on Respondent's webpage <onduline-onduvilla.com> without authorization.
According to Complainant, Respondent has not been licensed or authorized by Complainant to use the ONDULINE and ONDUVILLA trademarks. Moreover, Complainant contends that Respondent has not been commonly known by the disputed domain name. Furthermore, Complainant affirms that Respondent presents itself as an authorized distributor of Complainant's products, which is not true. This way, Complainant alleges that Respondent is making illegitimate commercial and non-fair use of the disputed domain name, which means that when using the disputed domain name <onduline-onduvilla.com> for selling roofing goods, Respondent misled consumers who may think that it holds Complainant's products license. Complainant submits that by using the disputed domain name, Respondent has intentionally attempted to attract for commercial gain Internet users to its website, by creating a likelihood of confusion with Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent's website.
Respondent did not submit any response. The Center notified the Respondent's default on May 16, 2018.
6. Discussion and Findings
To succeed, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The burden of proving these elements is on Complainant.
A. Identical or Confusingly Similar
Complainant has duly proven the first element under paragraph 4(a) of the Policy is met by evidencing that it owns several registrations for the ONDUVILLA and ONDULINE trademarks worldwide and that both trademarks are contained in its entirety in the disputed domain name < onduline-onduvilla.com>.
The Panel acknowledges that Onduline is a widely known company and believes that the disputed domain name may cause confusion, since its dominant features, namely "onduline-onduvilla", fully reproduces Complainant's trademarks.
Thus, the Panel finds that the disputed domain name <onduline-onduvilla.com> is confusingly similar to Complainant's trademarks.
Therefore, the Panel considers the requirements of the first element of paragraph 4(a) of the Policy satisfied.
B. Rights or Legitimate Interests
Respondent had twenty days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the complaint, the panel's decision shall be based upon the complaint.
The view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") as follows: "[W]here 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."
The disputed domain name was registered on December 1, 2014, that is, several years after registration of Complainant's first trademark. The Panel acknowledges that Complainant's trademarks are widely known, and, as a result thereof, the Panel holds that Respondent must have been aware of Complainant's trademark at the time of registration.
The Panel finds that Complainant has never entered into any agreement with Respondent nor granted any authorization or license to Respondent regarding the use of Complainant's trademarks, nor is Respondent affiliated with Complainant's activities.
Accordingly, Complainant established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Since Respondent has not replied to Complainant's contentions and, thus, has not presented any evidence or elements to justify any rights or legitimate interests in connection with the disputed domain name, the Panel has found no indication that any of the circumstances described in paragraph 4(c) of the Policy could apply to the present matter.
The Panel further notes that Respondent falsely presents itself as an authorized distributor of Complainant's products. It is therefore falsely representing its relationship with Complainant. This does not confer rights to Respondent.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include, under 4(b)(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 web site or location or of a product or service on your web site or location."
The Panel finds it highly unlikely that Respondent had no knowledge of Complainant's rights to the ONDUVILLA and ONDULINE trademarks at the time of registration of the disputed domain name, taking into consideration its protection and activity worldwide; on the contrary, the evidence shows that Respondent was likely deliberately trying to create confusion.
In this connection, the Panel verified in the Complaint dockets that the disputed domain name <onduline‑onduvilla.com> points to webpage that advertises products under the trademarks ONDUVILLA and ONDULINE, containing also a reproduction of the trademark ONDULINE registered by Complainant.
In addition, and noting the false representation of Respondent to be the Complainant's authorized distributor, the Panel believes that the only intention of Respondent in registering and using the disputed domain name was to attract Internet users for commercial gain. In order to achieve such goal, Respondent created a likelihood of confusion with Complainant's trademarks as to the source, sponsorship affiliation, or endorsement of Respondent's webpage.
Thus, the Panel concludes that Respondent acts in bad faith for the following reasons:
(i) the widespread reputation of Complainant's products and services makes it highly unlikely that Respondent had no prior knowledge of Complainant's rights in its registered trademarks at the moment of the domain name registration;
(ii) Respondent has no rights or legitimate interests in the disputed domain name;
(iii) the disputed domain name entirely reproduces Complainant's International and Indonesian trademarks; and
(iv) the disputed domain name misrepresents Complainant and deceives its customers or potential customers by leading them to think that they are accessing Complainant's official website, while instead they are redirected to a page from non-authorized resellers of Complainant's products.
Lastly, the Panel notes that Respondent filed an untimely response claiming for a payment in order to transfer the disputed domain name to Complainant, which further suggests that Respondent acted in bad faith.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
As such, the Panel finds that Complainant has satisfied 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 <onduline-onduvilla.com> be transferred to Complainant.
Gabriel F. Leonardos
Date: June 5, 2018