WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sandvik Intellectual Property AB v. DomainsByProxy.com Private Registration
Case No. D2014-1496
1. The Parties
The Complainant is Sandvik Intellectual Property AB of Sandviken, Sweden, represented by Valea AB, Sweden.
The Respondent is DomainsByProxy.com Private Registration of Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sandvik.org> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2014. On September 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 2, 2014, 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 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2014.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on October 13, 2014. 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 corporation established under Swedish law. It is a subsidiary of Sandvik AB and part of Sandvik Group.
Sandvik Group is an international group of engineering companies which has been in operation for over 150 years. It provides engineering products and services within such fields as mining, machining solutions and materials technology.
In the course of its business activity, the Complainant has registered a number of trademarks. It owns, inter alia:
- SANDVIK – International Trademark No. 1039878, registered on February 2, 2010 for products and services in classes 06, 07, 08, 09, 10, 11, 12, 14, 37, 38;
- SANDVIK – Community Trademark No. 002423531, registered on April 24, 2003 for products and services in classes 06, 07.
The Complainant has also registered several hundred domain names involving SANDVIK trademark.
According to the latest WhoIs data, the Respondent is DomainsByProxy.com Private Registration of Arizona, United States of America.
The disputed domain name has been registered on August 6, 2014.
5. Parties’ Contentions
Firstly, the Complainant contends that the disputed domain name is identical to its business name and the SANDVIK trademark. It further states that SANDVIK is a well-known and reputable trademark which enjoys protection through more than thousand trademark registrations worldwide.
Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name as it is not affiliated or related to the Complainant in any way, or licensed or authorized to use the SANDVIK trademark, especially for the purpose of registering a domain name. The Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services, is not commonly known by the “Sandvik” name and has no trademark or service mark rights in the name. Moreover, the Complainant claims that the disputed domain name resolves to a pay-per-click website.
Thirdly, according to the Complainant, the disputed domain name has been registered and is being used in bad faith. In the Complainant’s view, the disputed domain name has no other purpose than referring to the SANDVIK trademark as it is well-known worldwide.
A further indication of bad faith is that Sandvik Mining Systems Africa, an affiliate of the Complainant, received an email from a third party, an URL agent at Name Cove, LLC, with an offer to purchase the disputed domain name from the Respondent. The Complainant contends that the Respondent has either engaged said domain broker or claimed to be a broker for the purpose of selling the disputed domain name to the Complainant’s affiliate or another party. In the Complainant’s view, both alternatives are enough evidence of bad faith as they create a strong presumption of the Respondent’s intention to sell the disputed domain name for an amount exceeding out-of-pocket cost for registering a domain name.
Moreover, the Complainant refers the Panel to the previous UDRP decisions to claim that an offer to be considered in excess of the out-of-pocket costs does not have to necessarily mention any specific figure. As the Respondent (or it’s broker) used a word “promotion”, it attempted to create an auction-like bid for the disputed domain name.
Lastly, the Complainant submits that since the Respondent does not actively use the disputed domain name in any legitimate way, it has shown so far nothing but bad intentions in registering the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(b) the respondent has no rights or legitimate interests in the domain name; and
(c) the domain name has been registered and is being used by the respondent in bad faith.
A complaint may only succeed in these Policy proceedings if the above criteria are met simultaneously.
A. Identical or Confusingly Similar
The Complainant holds many trademark registrations for the SANDVIK mark . The disputed domain name <sandvik.org> incorporates the Complainant’s trademark in its entirety without any other word or letter. The Panel notes that the generic Top-Level domain (gTLD) “.org” is not typically taken into account while comparing the Complainant’s trademark and the disputed domain name.
Therefore, the Panel finds that the disputed domain name is identical to the SANDVIK trademark and as a consequence, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) the Respondent is neither licensed nor authorized by the Complainant to use the SANDVIK trademark; (c) there is no evidence that the Respondent has been commonly known by the disputed domain name; (d) the Respondent has been making a commercial use of the disputed domain name (through the pay-per-click scheme). In line with the previous UDRP decisions, the Panel accepts that the Complainant has presented a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, and as such the burden of production shifts to the Respondent (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Accordingly, and in the absence of any response from the Respondent providing any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel concludes that the Respondent has no such rights or legitimate interests.
Therefore, the second element of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The disputed domain name was registered in August 2014 and incorporates the SANDVIK trademark that was registered years before and is commonly known worldwide in an engineering industry.
The disputed domain name resolves to a webpage containing sponsored links, from which the Respondent likely benefits (pay-per-click scheme). This fact supports the inference that the purpose of the Respondent’s diversion of traffic from the Complainant to itself is for the Respondent’s own commercial gain. Such facts constitute bad faith under paragraph 4(b)(iv) of the Policy.
Furthermore, the Panel finds that the email received by one of the Complainant’s affiliate can be deemed as circumstances indicating that the disputed domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or other people for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name. The Panel agrees that even if it was a broker who approached the Complainant’s affiliate, it still creates a strong presumption that the Respondent intended to sell the disputed domain name for the cost exceeding out-of-pocket expenses (Statoil ASA v. Bellnames Privacy Protection Whois Agent/WhoIs Agent, YourJungle Privacy Protection Service/Best Domains Limitada, WIPO Case No. D2014-0560).
All facts considered, the Complaint satisfies the requirements from paragraphs 4(b)(i) and (iv) 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 <sandvik.org> be transferred to the Complainant.
Date: October 27, 2014