WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bantrel Co. v. Domain Administrator / Fundacion Privacy Services LTD

Case No. D2021-1053

1. The Parties

Complainant is Bantrel Co., Canada, represented by Norton Rose Fulbright Canada LLP, Canada.

Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.

2. The Domain Name and Registrar

The Disputed Domain Name <connectebantrel.com> is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2021. On April 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 9, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center sent email communications to Complainant on April 12, 2021 and on April 15, 2021 regarding mutual jurisdiction. Complainant filed an amended Complaint on April 16, 2021.

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 Respondent of the Complaint, and the proceedings commenced on April 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 7, 2021.

The Center appointed Richard W. Page as the sole panelist in this matter on May 14, 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

Complainant is one of the largest EPC firms in Canada. Complainant primarily services companies in the oil, gas, chemicals, power, mining and metals and infrastructure industries across North America.

Complainant owns, among others, the registered trademark for BANTREL (the “BANTREL Mark”) and the associated design marks in Canada, including:

- Canadian Trademark registration No. TMA600679 for BANTREL, registered on January 27, 2004, in Canada; and

- Canadian Trademark registration No. TMA6000680 for the BANTREL Design, registered on January 27, 2004 in Canada.

Complainant’s services have been publicly advertised in Canada since at least as early as 1998 in association with the BANTREL Mark through Complainant’s website and advertising campaigns. Complainant is the registrant of the domain name <bantrel.com> which has always prominently displayed the BANTREL Mark in association with Complainant’s services.

Complainant also actively promotes and advertises its services through its website and social media accounts, namely, You Tube and LinkedIn, among others.

Complainant is also the owner of the domain name <ebantrel.com>. Complainant registered <ebantrel.com> in July 2001 and has owned it since that time. Complainant has used the <connect.ebantrel.com> sub-domain as a remote access site for Complainant’s employees since early 2000.

The Disputed Domain Name was registered on March 1, 2021 and resolves to a parking page with pay-per-click (“PPC”) links related to Complainant’s business.

5. Parties’ Contentions

A. Complainant

Complainant contends that, adopting the name “Bantrel Co.” in 1983, it has developed substantial goodwill and reputation for its business and services conveyed by its name and the BANTREL Mark and that the Disputed Domain Name is confusingly similar to the BANTREL Mark, pursuant to paragraph 4(a)(i) of the Policy.

Complainant further contends that the BANTREL Mark has become a distinctive identifier associated with Complainant’s services both in North America and internationally. Complainant, a private entity, has completed over one hundred engineering, procurement and/or construction projects. Project locations predominately include Canada and the United States of America; however, Complainant has also completed projects internationally in India, Iraq, Iran, Mongolia and Venezuela (Bolivarian Republic of).

Complainant further contends the Disputed Domain Name was registered through Media Elite Holding Limited on March 1, 2021. As of April 6, 2021, the Disputed Domain name directed users to a parked website containing a series of links entitled “Construction Projects”, “Construction Company”, “Construction”, “Canada”, “Contractors Nearby” and “Project”. According to the footer at the bottom of the website to which the Disputed Domain Name resolves, the webpage is generated by Dedo Domain Parking, a PPC parking webpage generator. The Disputed Domain Name webpage displays a series of PPC links including links entitled “Construction Projects”, “Construction” and “Construction Company”. Clicking on any of these links leads to advertisements being displayed on the webpage, including advertisements for Complainant’s competitors’ services.

Complainant alleges that the Disputed Domain Name wholly contains the BANTREL Mark, plus the term “connecte”. Complainant further alleges that the addition of a generic word to a recognized mark to form a domain name does not dispel confusing similarity between such domain name and the recognized mark. Complainant further alleges that the Disputed Domain Name is also confusingly similar with Complainant’s subdomain <connectebantrel.com>, the only difference being that “connect” and “ebantrel” do not have a period or dot between the words.

Complainant asserts that Respondent does not have rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

Complainant further asserts that Respondent has not been authorized or licensed by Complainant to use the BANTREL Mark in any way, including in respect of the Disputed Domain Name, and has no connection or affiliation with Complainant.

Complainant further asserts that Respondent never made bona fide use of the Disputed Domain Name. In particular, Respondent did not register the Disputed Domain Name until well after Complainant had begun using and promoting the BANTREL Mark in association with its services and as a result had created widespread recognition of the BANTREL Mark. The fact that Respondent’s Disputed Domain Name <connectebantrel.com> is virtually identical to Complainant’s domain name <connect.ebantrel.com>,suggest that Respondent’s intention was and is to misleadingly divert Complainant’s website users for Respondent’s profit.

Complainant further asserts that there is no evidence that Respondent, who registered the Disputed Domain Name as recently as March 1, 2021, has become commonly known by the Disputed Domain Name. In any event, once Complainant makes a prima facie case, the onus is on Respondent to produce concrete credible evidence that he is commonly known by the Disputed Domain Name.

Complainant further asserts that the Disputed Domain Name is used in connection with a “parked” webpage displaying PPC advertisements that lead consumers to potential competitors of Complainant. Recent UDRP panel decisions have made it clear that this type of conduct does not constitute a bona fide or legitimate offering of goods or services under the Policy.

Complainant further asserts that Respondent’s use of the Disputed Domain Name cannot be considered “fair” because it falsely suggests affiliation with the BANTREL Mark and Complainant. In this case, the Disputed Domain Name suggests that accessing Respondent’s website will “connect” users to Complainant’s services.

Complainant states that Respondent has registered and used the Disputed Domain Name in bad faith, pursuant to paragraph 4(a)(iii) of the Policy.

Complainant further states that Respondent showed bad faith when it registered the Disputed Domain Name because it had actual and constructive knowledge of the BANTREL Mark. Respondent registered the Disputed Domain Name intentionally to misdirect Internet users looking for Complainant’s “www.connect.ebantrel.com” website. The Disputed Domain Name is being used to divert potential users away from Complainant’s website at “www.connect.ebantrel.com” to Respondent’s website at “www.connectebantrel.com” which displays PPC links relating to third-parties websites offering competing EPC services. Where a respondent is found to be diverting Internet users to its website (and/or websites associated with third-parties) to generate traffic and sales commissions for its own commercial benefit, such conduct is recognized as constituting use in bad faith under the Policy.

Complainant further states that UDRP panels have in the past proceedings involving the same Respondent recognized that “there is strong evidence that Respondent has engaged in a mass pattern of cybersquatting”. Complainant has identified the ten most recent published decisions involving Respondent, nine of which are decisions rendered in 2021, wherein Respondent has been recognized as having registered domain names in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the BANTREL Mark in which Complainant has rights; and

ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant contends that it has numerous registrations of the BANTREL Mark. Section 1.2.1 of the WIPO Overview 3.0 states that registration of a trademark is prima facie evidence of Complainant having enforceable rights in the BANTREL Mark.

The Panel finds that Complainant has made a prima facie case and that Respondent has not contested Complainant’s contentions.

The Panel also finds that Complainant has enforceable rights in the BANTREL Mark for purposes of this proceeding.

Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the trademark pursuant to the Policy paragraph 4(a)(i).

Complainant alleges that the Disputed Domain Name wholly contains the BANTREL Mark, plus the term “connecte”. Complainant further alleges that the addition of a dictionary word to a recognized mark to form a domain name does not dispel confusing similarity between such domain name and the recognized mark. Complainant further alleges that the Disputed Domain Name is also confusingly similar with Complainant’s domain name <connectebantrel.com>, the only difference being that “connect” and “ebantrel” do not have a period or dot between the words.

Section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in a domain name will be considered confusingly similar. Also Section 1.8 of the WIPO Overview 3.0 instructs that the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not prevent a finding of confusing similarity. Also Section 1.11.1 of the WIPO Overview 3.0 instructs that generic Top-Level Domains (“gTLDs”) such as “.com” may be disregarded for purposes of assessing confusing similarity.

Respondent has not contested Complainant’s allegation of confusing similarity.

The Panel finds that Complainant has met the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where the respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the BANTREL Mark.

The Panel finds that Respondent has not been authorized or licensed by Complainant to use the BANTREL Mark in any way, including in respect of the Disputed Domain Name, and has no connection or affiliation with Complainant.

Respondent never made bona fide use of the Disputed Domain Name. In particular, Respondent did not register the Disputed Domain Name until well after Complainant had begun using and promoting the BANTREL Mark in association with its services and as a result had created widespread recognition of the BANTREL Mark. The fact that Respondent’s Disputed Domain Name <connectebantrel.com> is virtually identical to Complainant’s domain name <connect.ebantrel.com> suggest that Respondent’s intention was and is to misleadingly divert Claimant’s website Customers for Respondent’s profit.

There is no evidence that Respondent, who registered the Disputed Domain Name as recently as March 1, 2021, has become commonly known by the Disputed Domain Name. In any event, once Complainant makes a prima facie case, the onus is on Respondent to produce concrete credible evidence that he is commonly known by the Disputed Domain Name.

The Disputed Domain Name is used in connection with a “parked” webpage displaying PPC advertisements that lead consumers to potential competitors of Complainant. Recent UDRP panel decisions have made it clear that this type of conduct does not constitute a bona fide or legitimate offering of goods or services under the Policy. See WIPO Overview 3.0 section 2.9.

Respondent’s use of the Disputed Domain Name cannot be considered “fair” because it falsely suggests affiliation with the BANTREL Mark and Complainant. In this case, the Disputed Domain Name suggests that accessing Respondent’s website will “connect” users to Complainant’s services.

In view of the above, the Panel finds that Complainant has shown unauthorized and intentionally misleading use by Respondent which cannot be considered bona fide, legitimate or fair use of the Disputed Domain Name, thus demonstrating a prima facie showing.

Respondent has not contested Complainant’s allegations.

The Panel finds that Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the BANTREL Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the BANTREL Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, you [Respondent] 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 BANTREL Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.

The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“Telstra”). In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

In this case, the Panel finds that the Disputed Domain Name is being used to divert potential users away from Complainant’s website at “www.connect.ebantrel.com” to the Respondent’s website at “www.connectebantrel.com” which displays PPC links relating to third-parties websites offering competing EPC services. Where a respondent is found to be diverting users to its website (and/or websites associated with third-parties) to generate traffic and sales commissions for its own commercial benefit, such conduct is recognized as constituting use in bad faith under the Policy.

Furthermore, the Panel notes that UDRP panels have in past proceedings involving the same Respondent recognized that “there is strong evidence that Respondent has engaged in a mass pattern of cybersquatting”. Complainant has identified the ten most recent published decisions involving Respondent, nine of which are decisions rendered in 2021, wherein Respondent has been recognized as having registered domain names in bad faith.

In view of the above, the Panel finds that Complainant has met the requirements of paragraph 4(b)(iv) of the Policy and shown the additional element of actual and constructive knowledge of Complainant’s rights in the BANTREL Mark when it registered the Disputed Domain Name, and that the Disputed Domain Name is being used in bad faith.

The further finds that Complainant has met the requirements of paragraph 4(a)(iii) 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 <connectebantrel.com> be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: May 25, 2021