WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Poclain Marketing & Services S.A. v. The Polygenix Group Co.

Case No. D2013-0293

1. The Parties

The Complainant is Poclain Marketing & Services S.A. of Luxembourg, represented by Cabinet Beau de Loménie, France.

The Respondent is The Polygenix Group Co. of Niagara Falls, Ontario, Canada.

2. The Domain Names and Registrar

The disputed domain names <poclain.com>, <poclain.net> and <poclain.org> are registered with

Wild West Domains, LLC. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2013. On February 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 12, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details for the disputed domain names. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 18, 2013.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 19, 2013. On March 13, 2013, due to an administrative error in the Notification of Complaint, the Response due date was extended until March 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2013.

The Center appointed Steven A. Maier as the sole panelist in this matter on March 26, 2013. 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 company registered in Switzerland with its head office located in Luxembourg. It is part of the Poclain Hydraulics Group, which is a supplier of hydrostatic transmission products.

The Complainant is the owner of a number of registered trademarks including the following:

(a) United States (“U.S.”) trademark registration number 1229273 for the word and device mark POLCLAIN registered on March 8, 1983, for goods and services in International classes 7 and 37 for machines for earth moving, construction and handling and related services.

(b) International (Madrid) Trademark registration number 446171 for the word and device mark POLCLAIN registered on July 12, 1979, for goods and services in International Classes 7, 12, 37 and 39 and having effect in a total of 36 national territories in Europe, North Africa and Asia.

(c) Australian trademark registration numbers 336042, 336043, 336044 and 336045 registered on August 1, 1979, for goods and services in International Classes 7, 12, 37 and 39.

All three of the disputed domain names were registered on February 13, 1999.

At the date of filing of the Complaint, none of the disputed domain names resolved to any website or online location.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).

The Complainant relies on its registrations for the trademark POCLAIN referred to above.

The Complainant additionally submits that it has sold its products under the mark POCLAIN throughout the world for a great many years, and has used the mark in connection with hydraulic and hydrostatic systems, equipment and components for machines and related services. The Complainant states that trademark has been in use since about 1930.

The Complainant submits that each of the disputed domain names is identical to its POCLAIN trademark save for the addition of the gTLDs, respectively, “.com”, “.net” and “.org”.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names (paragraph 4(a)(ii) of the Policy).

The Complainant states that it has exclusive rights in the name and mark POCLAIN, which has no meaning other than to refer to the Complainant’s trademark.

The Complainant states that it has never licensed or authorised the Respondent to use the POCLAIN mark. Nor does the Complainant believe that the Respondent has ever been known by the name “Poclain” or that it has used, or made preparations to use, any of the disputed domain names in connection with any bona fide offering of goods or services.

In the circumstances, the Complainant submits that it has established a prima facie case that the Respondent has no rights or legitimate interests in respect of any of the disputed domain names.

The Complainant submits that the disputed domain names were registered and are being used in bad faith (paragraph 4(a)(iii) of the Policy).

The Complainant submits that it is improbable that the Respondent was unaware of the Complainant’s trademark POCLAIN as it has been in use since about 1930.

The Complainant points to the fact that the Respondent does not appear to have used the disputed domain names for the purpose of any website or in connection with any bona fide offering of goods or services.

In the circumstances, the Complainant believes the Respondent registered each of the disputed domain names either to prevent the Complainant from reflecting its trademark in a corresponding domain name or primarily for the purpose of disrupting the Complainant’s business. The Complainant submits that either purpose would constitute bad faith.

The Complainant seeks a transfer of the disputed domain names.

B. Respondent

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

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

Even in a case where the Respondent has failed to reply to the Complaint, it is still necessary for the Complainant to prove its case in respect of each of the above elements WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.6).

A. Identical or Confusingly Similar

The Complainant has demonstrated that it is the owner of the trademark POCLAIN for which it has registrations in numerous territories throughout the world. Each of the disputed domain names is identical to the Complainant’s trademark POCLAIN but for the addition in each case of the gTLD, respectively, “.com”, “.net” and “.org”. Accordingly, it is clear that each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).

B. Rights or Legitimate Interests

The Complainant contends that the name POCLAIN has no meaning other than to refer to the Complainant’s trademark. It also submits that it has never authorised the Respondent to use that name and mark, that the Respondent has not been known by that name and that the Respondent has not used, or made preparations to use, any of the disputed domain names in connection with a bona fide offering of goods or services.

The Panel accepts the Complainant’s contentions in this regard and finds that the Complainant has, therefore, made out a prima facie case that the Respondent lacks any rights or legitimate interests in respect of the disputed domain names (WIPO Overview 2.0, paragraph 2.1). Since the Respondent has chosen not to answer the Complaint, and in the absence of any other evidence of rights or legitimate interests on the Respondent’s part, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names (paragraph 4(a)(ii) of the Policy).

C. Registered and Used in Bad Faith

The Panel accepts the Complainant’s evidence that it has used the mark POCLAIN in commerce since about 1930, and that it has relevant trademark registrations going back to at least 1979. The Panel has also accepted the Complainant’s (uncontradicted) evidence that the name “Poclain” has no meaning other than to refer to the Complainant’s trademark. In the circumstances, the Panel concludes that it is more likely than not that the Respondent was aware of the Complainant’s trademark at the date of registration of each of the disputed domain names.

There is no evidence that the Respondent has made any use of the disputed domain names since registration, other than to maintain them as “passive” holdings. However, the passive holding of a domain name does not prevent a finding of bad faith if such is indicated by the other circumstances of the case (WIPO Overview 2.0, paragraph 3.2).

In this case the Panel notes that the Respondent has registered three domain names corresponding to the Complainant’s trademark POCLAIN without any addition or adornment other than the respective gTLDs “.com”, “.net” and “.org”. The Respondent has chosen not to participate in this case and has therefore offered no explanation for its choice of the disputed domain names. In the circumstances, the Panel is unable to identify any legitimate use that the Respondent has made or could make of the domain names and finds, accoridngly, that each of them was registered and has been used in bad faith (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 names <poclain.com>, <poclain.net> and <poclain.org> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: March 28, 2013