ADMINISTRATIVE PANEL DECISION
Koppers, Inc. and Koppers Delaware, Inc. v. WhoisGuard Inc. / Uche Joseph
Case No. D2018-0760
1. The Parties
The Complainants are Koppers, Inc. of Pittsburgh, Pennsylvania, United States of America (“United States” or “U.S.”) and Koppers Delaware, Inc. of Wilmington, Delaware, United States1 (hereinafter, the “Complainant”), represented by Metz Lewis Brodman Must O’Keefe LLC, United States.
The Respondents are WhoisGuard Inc. of Panama City, Panama / Uche Joseph of Houston, Texas, United States (hereinafter, the “Respondent”).
2. The Domain Name and Registrar
The disputed domain name <kopperrs.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2018. On April 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 7, 2018, the Registrar transmitted by email to the Center its verification response 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 April 10, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed two amended Complaints on April 10, 2018 and April 11, 2018, respectively.
The Center verified that the Complaint together with the amended Complaints 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 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2018.
The Center appointed Lynda M. Braun as the sole panelist in this matter on May 8, 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 Complainant is an integrated global producer of carbon compounds, chemicals, and treated wood products for the aluminum, railroad, specialty chemical, utility, rubber, steel, residential lumber, and agriculture industries. The Complainant serves customers through a comprehensive global manufacturing and distribution network with facilities located in many parts of the world.
Originally founded in 1921, the Complainant is the owner of multiple trademarks in the United States. These include KOPPERS, U.S. Registration No. 1,919,197 in International Classes (“IC”) 4 and 19, registered on September 19, 1995; KOPPERS, U.S. Registration No. 1,902,735 in IC 19, registered on July 4, 1995; KOPPERS, U.S. Registration No. 1,940,412 in IC 1, 2 and 4, registered on December 12, 1995; KOPPERS and Design, U.S. Registration No. 3,085,821 in IC 1, 2, 4, 17 and 19, registered on April 25, 2006; KOPPERS, U.S. Registration No. 3,156,761 in IC 40, registered on October 17, 2006; and KOPPERS and Design, U.S. Registration No. 4,409,596 in IC 17, registered on October 1, 2013 (collectively, the “KOPPERS Mark”)
The Disputed Domain Name was registered by the Respondent on December 12, 2017. The Disputed Domain Name, <kopperrs.com>, is a misspelling of the Complainant’s official domain name, <koppers.com>. At the time the Complainant submitted the Complaint, the Disputed Domain Name resolved to a landing page containing sponsored pay-per-click hyperlinks and advertisements. As of the date of this Decision, the page appears to have been taken down.
5. Parties’ Contentions
The following are the Complainant’s contentions:
- The Disputed Domain Name is identical or confusingly similar to the Complainant’s trademarks.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(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 and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
The Panel concludes that the Disputed Domain Name is confusingly similar to the KOPPERS Mark.
First, it is uncontroverted that the Complainant has established trademark rights in the KOPPERS Mark based on its longstanding use as well as its numerous trademark registrations for the KOPPERS Mark. The Disputed Domain Name <kopperrs.com> consists of a misspelling of the KOPPERS Mark, with an additional “r” followed by the generic Top-Level Domain (“gTLD”) “.com”. A domain name which contains misspelling of a trademark will be found to be confusingly similar to such trademark where the misspelled trademark, as in the present case, remains the dominant or principal component of the domain name. See Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971.
Second, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its KOPPERS Mark. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Neither does the Complainant have any type of business relationship with the Respondent. Based on the use of the Disputed Domain Name, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.
The Respondent registered the Disputed Domain Name long after the KOPPERS Mark had become well-known. The only use that the Respondent made of the Disputed Domain Name is to host a website that contained hyperlinks to sponsored ads. Such use does not give rise to any rights or legitimate interests on the part of the Respondent. See The Chase Manhattan Corporation v. John Whitely, WIPO Case No. D2000-0346.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the Respondent’s bad faith registration and use of the Disputed Domain Name.
First, based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the Complainant’s KOPPERS Mark. It appears that the Respondent registered the Disputed Domain Name to intentionally attempt to attract for commercial gain, Internet visitors to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Second, the Respondent’s action of registering the Disputed Domain Name evidences its intent to disrupt the Complainant’s business. The Respondent’s use of the Disputed Domain Name to resolve to a parking page with pay-per-click hyperlinks and sponsored advertisements demonstrates the Respondent’s bad faith in registering and using the Disputed Domain Name.
Finally, the Respondent knew or should have known of the Complainant’s rights in its KOPPERS Mark when registering the Disputed Domain Name. The Complainant’s KOPPERS Mark, first used in 1921, is well-known and widely used. It therefore strains credulity to believe that the Respondent had not known of the Complainant or its KOPPERS Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (“a finding of bad faith may be made where Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name”).
Accordingly, the third element of paragraph 4(a) of the Policy has been met by 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 Disputed Domain Name <kopperrs.com> be transferred to the Complainant.
Lynda M. Braun
Date: May 10, 2018
1The Complainant Koppers Delaware, Inc. is a subsidiary of the Complainant Koppers, Inc. of Pittsburgh, Pennsylvania. For purposes of this Decision, they will be referred to as the “Complainant”.