WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sandvik Intellectual Property AB and Walter AG v. Jie Sheng and Domain Admin, Whois Privacy Corp.

Case No. D2020-3488

1. The Parties

The Complainants are Sandvik Intellectual Property AB (the “first Complainant”), Sweden, and Walter AG (the “second Complainant”), Germany, represented by SILKA AB, Sweden (hereinafter collectively the “Complainants”).

The Respondents are Jie Sheng, Hong Kong, China, and Domain Admin, Whois Privacy Corp., Bahamas (hereinafter collectively the “Respondents”).

2. The Domain Names and Registrars

The disputed domain names are <sandvik-coromant.tools> (the “first Disputed Domain Name”) and <walter-tools.net> (the “second Disputed Domain Name”) (hereinafter collectively, the “Disputed Domain Names”). The first Disputed Domain Name is registered with Tucows Inc. (the “first Registrar”), and the second Disputed Domain Name is registered with Internet Domain Service BS Corp. (the “second Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2020. On December 22, 2020, the Center transmitted by email to the first and second Registrars a request for registrar verification in connection with the Disputed Domain Names. On December 23, 2021, the first Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the first Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. On December 23, 2020, the second Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the second Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on January 21, 2021 providing the registrant and contact information disclosed by the first and second Registrars, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed a request for consolidation of the proceedings on January 25, 2021. The Complainants filed an amendment to the Complaint on January 26, 2021.

The Center verified that the Complaint together with the amendment to 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 Respondents of the Complaint, and the proceedings commenced on January 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on February 23, 2021. Due to an apparent issue with the notification, in accordance with the Rules, paragraphs 2 and 4, the Center re-notified the Respondents of the Complaint on March 18, 2021. In accordance with the Rules, paragraph 5, the new due date for Response was April 7, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on April 12, 2021.

The Center appointed Lynda M. Braun as the sole panelist in this matter on April 16, 2021. 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 Complainants are related entities and form part of the Sandvik Group, a high-tech and global engineering group with approximately 43,000 employees and sales in more than 150 countries. The first Complainant is a subsidiary company of Sandvik AB. In 2001, Sandvik AB signed an agreement with the second Complainant covering the acquisition of shares which resulted in a controlling interest in the second Complainant.

The Complainants fall within the business unit named Sandvik Machining Solutions, which focuses on tools and tooling systems for metal cutting. The first Complainant was founded in 1986 and provides intellectual property consultancy services. The first Complainant owns the trademark SANDVIK COROMANT. The second Complainant was founded in 1919 and is a metalworking company. The second Complainant owns the trademark WALTER.

The first Complainant owns the following trademarks:

- SANDVIK COROMANT, International Trademark Registration No. 1160354, registered on January 14, 2013 (designating the Russian Federation);
- SANDVIK COROMANT, Russian Federation Trademark Registration No. 316154, registered on October 13, 2005; and
- SANDVIK COROMANT, International Trademark Registration No. 1337878, registered on November 25, 2016 (designating the Russian Federation).

The second Complainant owns the following trademarks:

- WALTER, International Trademark Registration No. 985034, registered on October 8, 2008 (designating the Russian Federation); and
- WALTER, International Trademark Registration No. 985038, registered on October 8, 2008 (designating the Russian Federation).

The foregoing trademarks are hereinafter collectively referred to as the “SANDVIK COROMANT and WALTER Marks”.

The Complainants (through the first Complainant) registered several domain names, namely <walter-tools.com>, <walter-tools.ru>, <sandvikcoromant.com>, and <sandvik-coromant.ru>, all of which resolve to websites through which they inform potential customers about their trademarks, their products and services.

The first Disputed Domain Name, <sandvik-coromant.tools>, was registered on November 26, 2016 and the second Disputed Domain Name, <walter-tools.net>, was registered on February 11, 2020. The Disputed Domain Names resolve to websites created by the Respondents that use the Complainants’ SANDVIK COROMANT and WALTER Marks and logos, and purportedly offer for sale the Complainants’ products as well as the products of third parties.

The Complainants have sent several cease-and-desist letters to the second Registrar and web hosts, demanding that they should suspend the Disputed Domain Names, and cease providing related services to the Respondents’ websites. The Complainants have never received a response to their letters.

5. Parties’ Contentions

A. Complainants

The following are the Complainants’ contentions:

- the Respondents are one and the same person or entity, are more likely than not subject to common ownership or control, and therefore, consolidation would be efficient, fair and equitable;
- the Disputed Domain Names are confusingly similar to the Complainants’ trademarks;
- the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and
- the Disputed Domain Names were registered and are being used in bad faith.

The Complainants seek the transfer of the Disputed Domain Names from the Respondents to the Complainants in accordance with paragraph 4(i) of the Policy.

B. Respondents

The Respondents did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1 Preliminary Issue: Consolidation

The Complainants submitted a request for consolidation in this proceeding. In the case of multiple complainants filing against multiple respondents, paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes. Where a complaint is filed against multiple respondents, panels look at whether “(i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. In this proceeding, the layout and design of the websites to which the Disputed Domain Names resolve are almost identical, they both use the Complainants’ SANDVIK COROMANT and WALTER Marks, they both operate in the Russian Federation and are displayed in the Russian language, they both use the same phone number, and use the similar copyright notice on their homepages. Therefore, the Panel submits that the criteria set out above are met and accepts consolidation of multiple Respondents in the present case. Further, as described under the Factual Background, the Panel equally finds that it is adequate to accept consolidation of multiple Complainants in the present case. See WIPO Overview 3.0, section 4.11.1.

6.2 Substantive Issues

Paragraph 4(a) of the Policy requires that the Complainants prove the following three elements in order to prevail in this proceeding:

(i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) the Disputed Domain Names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, do the Complainants have rights in a relevant trademark or trademarks and, second, are the Disputed Domain Names identical or confusingly similar to those trademarks.

It is uncontroverted that the Complainants have established rights in the SANDVIK COROMANT and WALTER Marks based on their years of use as well as their registered trademarks for the SANDVIK COROMANT and WALTER Marks in several jurisdictions worldwide, including in the Russian Federation. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive” (see CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734). The Respondents have not rebutted this presumption, and therefore the Panel finds that the Complainants have enforceable rights in the SANDVIK COROMANT and WALTER Marks.

The first Disputed Domain Name consists of the SANDVIK COROMANT Mark in its entirety, joined by a hyphen and then followed by the generic Top-Level Domain (“gTLD”) “.tools”. The second Disputed Domain Name consists of the WALTER Mark in its entirety, joined by a hyphen to the dictionary term “tools”, and then followed by the gTLD “.net”. When a disputed domain name incorporates the entirety of a trademark, the disputed domain name will generally be considered confusingly similar to that mark for purposes of UDRP standing (see WIPO Overview 3.0, section 1.7). Moreover, “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” (see WIPO Overview 3.0, section 1.8). Here, the Disputed Domain Names contain the Complainants’ SANDVIK COROMANT and WALTER Marks in their entirety, and the second Disputed Domain Name contains a dictionary term, and thus, the Disputed Domain Names are confusingly similar to the SANDVIK COROMANT and WALTER Marks. It is also well established that a disputed domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a hyphen. The presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity (see Six Continents Hotels, Inc. v. Helen Siew, WIPO Case No. D2004-0656).

Finally, the addition of a gTLD such as “.tools” or “.net” in a domain name is technically required. Thus, it is established that such element may typically be disregarded when assessing whether a disputed domain name is identical or confusingly similar to a trademark (see Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11). Thus, the Panel considers that the Disputed Domain Names are confusingly similar to the Complainants’ Marks.

Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainants.

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 that demonstrates rights or legitimate interests in the disputed 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 3.0, section 2.1).

In this case, the Panel finds that the Complainants have made out a prima facie case. The Respondents have not submitted any arguments or evidence to rebut the Complainants’ prima facie case. Furthermore, the Complainants have not authorized, licensed, or otherwise permitted the Respondents to use their SANDVIK COROMANT and WALTER Marks. Nor do the Complainants have any type of business relationship with the Respondents. Finally, the names of the Respondents have no apparent connection to the Disputed Domain Names that would suggest that they are related to a trademark or trade name in which the Respondents have rights. In addition, the Respondents are using the Disputed Domain Names to trade on the Complainants’ SANDVIK COROMANT and WALTER Marks and to deceive Internet users into thinking that they arrived at websites belonging to the Complainants.

Finally, in the present proceeding, the first Disputed Domain Name comprising the entirety of the SANDVIK COROMANT Mark joined by a hyphen, and the second Disputed Domain Name containing the WALTER Mark followed by a hyphen and a dictionary term related to the Complainants’ business, carries a risk of implied affiliation and cannot constitute fair use, as the Disputed Domain Names effectively impersonate or suggest sponsorship or endorsement by the Complainants (see WIPO Overview 3.0, section 2.5.1).

Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainants.

C. Registered and Used in Bad Faith

The Panel finds that based on the record, the Complainants have demonstrated the existence of the Respondents’ bad faith pursuant to paragraph 4(b) of the Policy.

First, the Panel concludes that the Respondents are using the Disputed Domain Names for a purpose that demonstrates knowledge of the Complainants’ trademark rights and a bad faith intent to register and use the Disputed Domain Names. As the Respondents repeatedly mention the Complainants, their trademarks, and their products on the Respondents’ websites, there is no doubt that the Respondents were aware of the Complainants, their business, and their SANDVIK COROMANT and WALTER Marks when registering the Disputed Domain Names and were thus intentionally capitalizing on potential customer confusion. In light of the circumstances in this case, it is not possible to conceive of a plausible situation in which the Respondents would have been unaware of the Complainants’ SANDVIK COROMANT and WALTER Marks at the time the Respondents registered the Disputed Domain Names (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Second, the Disputed Domain Names resolve to websites that use the Complainants’ SANDVIK COROMANT and WALTER Marks and logos, and purportedly offer for sale the Complainants’ products as well as the products of third parties. Therefore, the Panel finds that the Respondents have used the Disputed Domain Names to intentionally attempt to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation or endorsement of the Respondents’ websites, demonstrating registration and use in bad faith. The Respondents’ registration and use of the Disputed Domain Names indicate that such registration and use had been done for the specific purpose of trading on the name and reputation of the Complainants and their SANDVIK COROMANT and WALTER Marks (see Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com, WIPO Case No. D2000-0847 “[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain.”).

Third, the registration of domain names that reproduce trademarks in their entirety (being identical or confusingly similar to such trademarks) by individuals or entities that have no relationship to those marks, without any reasonable explanation on the motives for the registration, may be sufficient in certain circumstances to infer opportunistic bad faith (see Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000‑0163). Based on the circumstances here, the Respondents registered and are using the Disputed Domain Names in bad faith to target the Complainants’ SANDVIK COROMANT and WALTER Marks for commercial gain.

Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainants.

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 Names, <sandvik-coromant.tools> and <walter-tools.net>, be transferred to the Complainants.

Lynda M. Braun
Sole Panelist
Date: April 29, 2021