WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Perstorp AB v. Mats Persson, Perstorp AB
Case No. D2018-0785
1. The Parties
The Complainant is Perstorp AB of Malmö, Sweden, represented by Ports Group AB, Sweden.
The Respondent is Mats Persson, Perstorp AB, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <perstorps.com> is registered with Registrar of Domain Names REG.RU LLC (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on April 9, 2018. On April 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 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. The Center sent an email communication in English and Russian to the Parties on the same date in regard to the language of proceedings. The Complainant filed an amendment to the Complaint on the same date and requested English to be the language of proceedings to which the Respondent did not reply.
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 the Respondent of the Complaint in both English and Russian, and the proceedings commenced on April 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 15, 2018.
The Center appointed Taras Kyslyy 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
The Complainant is a Swedish chemicals company being part of a group of companies with manufacturing units in Asia, Europe and North America with more than 1,500 employees.
The Complainant owns trademarks as follows:
- European Union Trade Mark No. 005786348, P PERSTORP, filing date March 8, 2007, International classes 2, 4, 17, 30, 31;
- French trademark No. 95601566, P PERSTORP, filing date December 18, 1995, International classes 1, 17;
- United Kingdom trademark No. 00000866317, P PERSTORP, filing date June 30, 1964, International class 17;
- Spanish trademark No. 2000208, P PERSTORP, filing date December 5, 1995, International class 17;
- United States of America trademark No. 2181123, P PERSTORP, filing date May 23, 1996, International class 1.
The Complainant operates via its website at "www.perstorp.com".
The disputed domain name <perstorps.com> was registered on March 17, 2018 and resolves to the Complainant's website at "www.perstorp.com". One of the former Complainant's employees is mentioned as a registrant of the disputed domain name.
5. Parties' Contentions
The disputed domain name is confusingly similar to the Complainant's registered trademark. Addition of "s" letter to the disputed domain name compared to the Complainant's trademark does not change the similarity, as well as the addition of the generic Top-Level Domain ("gTLD") ".com".
The Respondent has no rights or legitimate interests in respect of the disputed domain name, since no respective permission or license was issued by the Complainant. Also, the fact that the disputed domain name resolves to the Complainant's website strongly suggests that the disputed domain name was registered with the Complainant's business and trademark in mind. In addition, there is no evidence that the Respondent has been commonly known by the disputed domain name or is making a legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith, since it was registered to be used for spoofed invoices or any other fraudulent actions or primarily for selling or otherwise transferring to the Complainant or disrupting the business of the Complainant, since the Respondent was well aware of the Complainant's prior trademarks and business when registering the disputed domain name and used the name of one of the Complainant's employees for the registration data of the disputed domain name to make it hard to discover the infringing registration. The only thing that differentiates the disputed domain name from the Complainant in the DNS data, is the country, email address and the phone number provided in WHOIS. The Respondent ignored the Complainant's cease and desist letter in this regard.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Language of Proceedings
The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that "unless otherwise agreed by the Parties, or specified otherwise 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 Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).
In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all "the relevant circumstances" of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the parties.
The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Respondent must be familiar with the English language since (i) it did not react to the cease and desist letter in English, (ii) English is a dominant language which most people can communicate, (iii) for registration of the disputed domain name the Respondent used the Complainant's details taken from the Complainant's website hosted in English, (iii) the disputed domain name includes the Complainant's trademark and provides information on the business same to the Complainant's and the Complainant's website is in English, (iv) website for the disputed domain name provides all information in English. The Complainant also believes that the language of the proceedings be English, otherwise due to additional costs and undue delay the Complainant would be unfairly disadvantaged by being forced to translate the Complaint to Russian.
The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant's request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference, but did not do so.
The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.
Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.
B. Identical or Confusingly Similar
The gTLD ".com" in the disputed domain name is viewed as a standard registration requirement and is disregarded for the purposes of the confusing similarity test (see, e.g., Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the "WIPO Overview 3.0") in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
The disputed domain name <perstorps.com> includes dominant part of the Complainant's trademark P PERSTORP, adding meaningless "s" letter and the gTLD ".com", which does not preclude similarity of the disputed domain name and the Complainant's trademark.
Considering the above the Panel believes the disputed domain name is confusingly similar to the Complainant's trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.
The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).
The Complainant did not license or otherwise agree for use of its priory registered trademarks by the Respondent.
Considering the above and since the disputed domain name redirects to the Complainant's website, which in combination with the established confusing similarity with the Complainant's trademark confirms lack of the Respondent's rights or legitimate interests.
Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
At the time of the registration of the disputed domain name the Respondent knew, or at least should have known about the existence of the Complainant's priory registered and known trademark (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
Established similarity of the disputed domain name and the Complainant's trademark in combination with use of one of the Complainant's former employees' name for registration details of the disputed domain name suggests it was intention of the Respondent when registering the disputed domain name to confuse public and make it believe the disputed domain name belongs to or is authorized by the Complainant, which is not the case.
Further use of the disputed domain name by way of redirection to the Complainant's website in combination with its established confusing features suggests that such use was in bad faith.
The Respondent ignored its possibility to comment on the contrary and provide any good explanations to prove its good faith while registering and using the disputed domain name.
Considering the above the Panel believes the disputed domain name was registered and is being used in bad faith. Therefore, 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 <perstorps.com> be transferred to the Complainant.
Date: June 5, 2018