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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hexatronic Group AB v. WhoisGuard Protected, WhoisGuard, Inc. / Josias Anissey, Main Soft

Case No. D2020-2781

1. The Parties

The Complainant is Hexatronic Group AB, Sweden, represented by AWA Sweden AB, Sweden.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Josias Anissey, Main Soft, Benin.

2. The Domain Name and Registrar

The disputed domain name <hexa-tronic.com> (“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 October 22, 2020. On October 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 22, 2020, 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 October 23, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 27, 2020.

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 October 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2020.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on November 27, 2020. 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 technology group which specializes in fiber communications. The Complainant supplies fiber optic products and solutions and provide a complete range of passive infrastructure for telecom companies. The Complainant consists of 20 companies with a total of 665 employees. The Complainant’s headquarters are in Gothenburg, Sweden.

Furthermore, the Complainant is the owner of several trademark registrations all over the world, for the term HEXATRONIC, among others:

- HEXATRONIC, Swedish Registration No. 551479, registered on September 25, 2019; and
- HEXATRONIC, European Union Trade Mark Registration No. 017595794 registered on March 11, 2019.

In addition, the Complainant has also registered a large number of domain names under generic Top-Level Domains (“gTLDs”) and country-code Top-Level Domains (“ccTLDs”) containing the term “hexatronic”, for example, <hexatronic.com>, <hexatronic.se>, <hexatronic.co.uk> and <hexatronic.no>.

The Respondent registered the Disputed Domain Name <hexa-tronic.com> on June 24, 2020. The Disputed Domain Name resolves to a web page which offers electronic products such as cameras, televisions, cell phones and tablets, game consoles, and vacuum cleaners. In addition, the Respondent is using the previous contact information of one of the Complainant’s subsidiaries.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

Identical or confusingly similar

The Complainant contends that the Disputed Domain Name is visually, phonetically and conceptually confusingly similar to the Complainant’s trademark. The mere addition of the hyphen sign “–” does not differentiate the Disputed Domain Name from the Complainant’s trademark, since it is obvious that the hyphen sign is simply an inconsequential addition used to hyphenate a word or name, or in terms of domain names a “typo” or addition which is often used to circumvent the situation where the original word is already registered.

Furthermore, the addition of the gTLD “.com” do not differentiate the Disputed Domain Name from the Complainant’s HEXATRONIC trademark.

Thus, the Disputed Domain Name is without a doubt confusingly similar to the Complainant’s trademark.

Rights or legitimate interests

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant further states that the Respondent has also falsely been using the previous address and contact information of one of the Complainant’s subsidiaries when marketing different goods on the Disputed Domain Name.

In addition, the Complainant has no relationship with the Respondent, as the Respondent is not a licensee or subsidiary of the Complainant and it has no authority or approval to use the Complainant’s trademarks or tradename.

A simple Google search on “hexatronic”, or a simple trademark search, would have disclosed the Complainant’s HEXATRONIC trademark.

Consequently, the Respondent does not have rights or a legitimate interest in respect of the Disputed Domain Name.

Registration and use in bad faith

The Complaint states that its HEXATRONIC trademark significantly predates the registration of the Disputed Domain Name. Moreover, considering the Complainant’s business presence and online presence (for example on the virtually identical domain name), it seems highly unlikely that the Respondent was not aware of the unlawful registration of the Disputed Domain Name.

The Complainant further contends, that the Respondent currently displays information on the website under the Disputed Domain Name where it falsely states that the Respondent is in fact Hexatronic GmbH (the Complainant’s subsidiary). In addition, the Respondent is claiming to use the previous physical address and contact information of the Complainant’s subsidiary, which is totally false and misleading.

In this regard, the Complainant states that the Respondent’s intention is to attempt to mislead potential customers of the identity and legitimacy of the Respondent. This clearly denotes that the Respondent was aware of the Complainant both before and after the registration of the Disputed Domain Name, and therefore that the registration and subsequent use have been made in bad faith.

Thus, the Respondent has registered and subsequently used the Disputed Domain Name in bad faith by intentionally adopting the Complainant’s trademark in violation of the Complainant’s rights, as well as by displaying the Complainant’s subsidiary’s name and previous address and registration number on the website under the Disputed Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name in this case:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the 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.

A. Identical or Confusingly Similar

Based on the evidence submitted, this Panel finds that the Disputed Domain Name <hexa-tronic.com> is confusingly similar to the Complainant’s HEXATRONIC trademark. The Disputed Domain Name wholly incorporates the Complainant’s HEXATRONIC trademark.

Furthermore, the Disputed Domain Name contains the Complainant’s HEXATRONIC trademark in its entirety; the addition of the hyphen in the middle of the trademark does not change this finding of confusing similarity.

Moreover, the addition of the gTLD “.com” does not change this finding, since the gTLD is generally disregarded in such an assessment of confusingly similarity.

Therefore, this Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the respondent has rights or legitimate interests in the domain name:

- before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

- you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

- you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name. The Complainant has prior rights in the trademark, which precede the Respondent’s registration of the Disputed Domain Name. In addition, the Respondent is not commonly known by the Disputed Domain Name.

The Respondent has failed to show that it has acquired any rights or legitimate interests with respect to the Disputed Domain Name. Moreover, the Respondent had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions.

As such, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The Respondent was aware of the Complainant’s prior rights and business, since the Disputed Domain Name was created on June 24, 2020, while the Complainant had the registration of its trademarks since 2019. Thus, it is very likely that the Respondent could have been aware of the Complainant’s trademark and business when it acquired the Disputed Domain Name. In addition, this is demonstrated by the fact that the Respondent displays information on the website under the Disputed Domain Name where it falsely states that the Respondent is the Complainant’s subsidiary, by using its trade name and the previous physical address and contact information.

The Respondent has not denied these assertions because of its default. The Panel is of the view that the Respondent knew of the Complainant’s trademark and prior rights at the time of registration of the Disputed Domain Name.

Paragraph 4(b)(iv) of the Policy states: “by using the domain name, you 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”.

In the case at hand, the Respondent’s registration of a domain name almost identical to the Complainant’s trademark (wholly incorporating the trademark into the Disputed Domain Name) with the previous contact details of one of the Complainant’s subsidiaries on the website, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Name and its failure to respond to the Complaint, constitute bad faith.

Further, the Disputed Domain Name resolves to a web page which offers electronic products such as cameras, televisions, cell phones and tablets, game consoles, and vacuum cleaners. Due to this conduct, it is obvious that the Respondent intentionally created likelihood confusion with the Complainant’s trademark in order to attract Internets users for its own commercial gain, as required by paragraph 4(b)(iv) of the Policy.

Therefore, taking all circumstances into account and for all the above reasons, the Panel concludes that there is bad faith in the registration and use of the Disputed Domain Name, and the third requirement of paragraph 4(a) of the Policy.

7. Decision

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 <hexa-tronic.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: December 11, 2020

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