WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clariant International Ltd v. Majane Oligarch, Invanka Inc.
Case No. D2018-1176
1. The Parties
The Complainant is Clariant International Ltd of Muttenz, Switzerland, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Majane Oligarch, Invanka Inc., Australia.
2. The Domain Name and Registrar
The disputed domain name <clariantoilserv.com> is registered with Registrar of Domain Names REG.RU LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 28, 2018. On May 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 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 June 1, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent an email to the Parties in Russian and English in regard to the language of the proceedings. The Complainant filed an amended Complaint on June 4, 2018 and requested English to be the language of the proceedings. The Responded did not comment on the language of the proceedings.
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 June 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 28, 2018.
The Center appointed Taras Kyslyy as the sole panelist in this matter on July 3, 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 major international chemicals company headquartered in Switzerland, with its global reach covering Europe, Asia Pacific, North America, Latin America, the Middle East, and Africa. Inter alia the Complainant provides oil services.
The Complainant owns trademarks as follows:
- Swiss trademark No. 2P-418950, CLARIANT, registration date September 28, 1995, international classes 1, 2;
- international trademark No. 650771, CLARIANT, registration date September 28, 1995, international classes 1, 2;
- Swiss trademark No. 460277, CLARIANT, registration date April 1, 1999, international classes 1, 2, 4, 5, 9, 16, 17, 18, 35, 36, 37, 38, 39, 40, 41, and 42;
- international trademark No. 714175, CLARIANT, registration date April 1, 1999, international classes 1, 2, 4, 5, 9, 16, 17, 18, 35, 36, 37, 38, 39, 40, 41, and 42.
The Complainant operates via its website at "www.clariant.com".
The disputed domain name <clariantoilserv.com> was registered on March 20, 2018 and currently resolves to an inactive webpage. Before the Complaint was filed, the disputed domain name was resolving to a webpage designed similarly to the Complainant's website "www.clariant.com".
5. Parties' Contentions
The disputed domain name is confusingly similar to the Complainant's registered trademark. The disputed domain name incorporates the Complainant's trademark. Extension ".com" shall not be taken into account when comparing the disputed domain name and the Complainant's trademark. Addition of a descriptive term "oilserv" describing Complainant's business does not add distinctiveness to the disputed domain name. Use of the disputed domain name for the Respondent's website featuring the Complainant's logo also contributes to the confusion.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is not commonly known by the disputed domain name. The Complainant has not licensed, authorized or permitted the Respondent to register the disputed domain name incorporating the Complainant's trademark. The disputed domain name used to resolve to a website designed to deceive Internet users into believing that the disputed domain name and the website were associated with the Complainant. Also, the website was used by the Respondent to offer work for individuals for the Complainant and request associated payments.
The disputed domain name was registered and is being used in bad faith. The Respondent knew of the Complainant and its trademark when registering and using the disputed domain name. The Respondent used the disputed domain name to intentionally pass of its website as belonging to the Complainant as a part of the Respondent's fraudulent scheme. The Respondent employed privacy service to hide its identity.
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) the Respondent is located in Australia, where the main language is English, (ii) the disputed domain name is comprised of Latin characters, (iii) the disputed domain name used to resolve to a website with entire content in English, (iv) the term "Clariant" as a dominant part of the disputed domain name does not have any meaning in Russian. The Complainant also believes that the language of the proceedings shall 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 generic Top-Level Domain ("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.
According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
The disputed domain name <clariantoilserv.com> includes the Complainant's trademark CLARIANT, adding descriptive "oilserv" associated with the Complainant's business and the gTLD ".com", which does not preclude a finding of confusing similarity between 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, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).
The disputed domain name used to redirect Internet users to a website with a logo similar to the Complainant's and designed similarly to the Complainant's website to make the Internet users believe that they actually access the Complainant's website. Past UDRP panels confirmed that such actions prove registrant has no rights or legitimate interests in a disputed domain name (see Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No. D2000-0598, Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211).
The Respondent has intentionally and fraudulently attempted to pass itself off as the Complainant and / or an affiliate of the Complainant by using an email address associated to the disputed domain name in an effort to obtain significant amounts of money from Internet users. Past UDRP panels confirmed that such actions prove registrant has no rights or legitimate interests in a disputed domain name (see Allianz SE v. Whois Privacy Protection Service, Inc. / Allianz Survey WIPO Case No. D2016-1658).
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, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location. In this case, the disputed domain name was resolving to a website confusingly similar to the Complainant's website to intentionally attract Internet users by creating likelihood of confusion with the Complainant's trademark as to the source of the website and its service. It was also further used to support communication to third parties to get from them money. The Panel finds the above confirms the disputed domain name was registered and used in bad faith.
Moreover, the Respondent used a privacy service to register the disputed domain name. According to section 3.6 of the WIPO Overview 3.0, the use of a privacy or proxy service merely to avoid being notified of a UDRP proceeding, may support an inference of bad faith; a respondent filing a response may refute such inference. However, no such response was provided by the Respondent. The Panel finds that such use of the privacy service here confirms registration of the disputed domain name in bad faith.
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 <clariantoilserv.com> be transferred to the Complainant.
Date: July 17, 2018