WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sperre Mek. Verksted AS v. Perfect Privacy, LLC / The Allied Valve Spares Mfg. Co.

Case No. D2018-2904

1. The Parties

The Complainant is Sperre Mek. Verksted AS of Ellingsøy, Norway, represented by Onsagers AS, Norway.

The Respondent is Perfect Privacy, LLC, of Jacksonville, Florida, United States of America (“United States”) / The Allied Valve Spares Mfg. Co. of Mumbai, India.

2. The Domain Name and Registrar

The disputed domain name <sperreparts.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2018. On December 20, 2018, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On December 20, 2018, the Registrar transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to the Complainant on January 7, 2019, 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 amendment to the Complaint on January 7, 2019.

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 Respondent of the Complaint, and the proceedings commenced on January 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2019.

The Center appointed A. Justin Ourso III as the sole panelist in this matter on February 6, 2019. 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 Sperre Mek. Verksted AS, a Norwegian manufacturer and seller, internationally, of compressors and pumps, which has been in business for over 80 years. The Complainant owns trademark registrations for its figurative trademark SPERRE (& design), which is registered in Norway, the European Union, Japan, Republic of Korea, and China in Classes 07, 12, and 37, including for compressors. All of its registered marks are figurative (design) marks, with the word portion “Sperre” dominant in the mark. The Complainant’s earliest application filing date for Norwegian trademark No. 228562 was in 2004, registered in October 7, 2005, and its mark was registered in all of these countries in all three classes by 2009. The Complainant also owns the domain name <sperre.com> and provides information on its goods and services at its web site, “www.sperre.com”.

The Respondent, Perfect Privacy, LLC, of the United States / The Allied Valve Spares Mfg. Co. of India, which has not submitted a response to the Complaint, owns a registration for the Domain Name, <sperreparts.com>, which was registered on October 14, 2011, and is currently registered through a privacy service.

The Domain Name resolves to a site advertising and selling compressor parts, including photographs of some of the goods offered.

5. Parties’ Contentions

A. Complainant

Generally, the Complainant contends:

1. It has operated over 80 years, with a strong, long-standing, and widespread use of its SPERRE brand internationally, in the manufacture and sale of state-of-the-art compressors and pumps, and offers information on its goods and services at its web site www.sperre.com.
2. It owns registrations for its trademark SPERRE (& figure) in Norway, the European Union, Japan, Republic of Korea, and China.
3. The Respondent’s trademark infringement is taking unfair advantage of the distinctive character and reputation of the Complainant’s mark.
4. The marketing and sale by the Respondent of inauthentic goods using the Complainant’s mark SPERRE on goods identical to those sold by the Complainant is trademark infringement.

Regarding the first element of a claim set forth in the Policy, paragraph 4(a)(i), the Complainant contends:

1. It owns trademark registrations for goods in Classes 07, 12, and 37, including compressors.
2. The Domain Name is confusingly similar to the Complainant’s registered trademark.
3. The Domain Name is a compound of the Complainant’s distinctive mark SPERRE and the generic word “parts,” thereby fully incorporating the Complainant’s mark.
4. The added word “parts” is void of distinctive character and directly points to the Complainant’s goods.
5. It claims priority for its trademark registrations from September 9, 2004, and the Domain Name was not registered until October 14, 2011.
6. The Respondent’s use of the word “Sperre” in its Domain Name for the sale of compressor spare parts on its web site at “www.sperreparts.com” and the Respondent’s use of the Complainant’s figurative SPERRE mark on photos of machines on this site infringe the Complainant’s trademark rights.

Regarding the second element set forth in the Policy, paragraph 4(a)(ii), the Complainant contends:

1. The Respondent registered the Domain Name <sperreparts.com> and is advertising and selling compressor components through its web site “www.sperreparts.com”.
2. The Respondent is using the Complainant’s mark in the Domain Name.
3. The Respondent is using the mark SPERRE in advertising and selling compressor parts at the Respondent’s web site, including in photographs of the goods offered on the Respondent’s web site.
4. None of the goods offered for sale on the Respondent’s web site are authentic goods manufactured by the Complainant.
5 The Respondent is unfairly profiting by illegal use of the Complainant’s mark and reputation, by offering goods covered by the Complainant’s trademark registrations.
6. The Respondent has no rights or legitimate interests in respect of the Domain Name.

Regarding the third element set forth in the Policy, paragraph 4(a)(iii), the Complainant contends:

1. The Respondent primarily registered the Domain Name to attract Internet users to the Respondent’s web site for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation, and endorsement of a product on the Respondent’s web site.
2. The Domain Name was registered and is being used in bad faith.

B. Respondent

The Respondent did not submit a response to the Complaint.

6. Discussion and Findings

A. The Effect of the Respondent’s Default

The Respondent has not responded to the Complaint. If a respondent does not submit a response, the panel decides the dispute based upon the complaint. Rules, paragraphs 5(f) and 14(a). The panel decides a complaint on the basis of the statements and documents submitted. Rules, paragraph 15(a).

Because the Complainant has the burden of proof, Policy, paragraph 4(a), the Respondent’s default, i.e., the Respondent’s failure to submit a response to the Complaint, does not mean that the Complainant necessarily prevails. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3. Accordingly, notwithstanding the Respondent’s default, the Complainant must prove the following three elements to obtain the requested relief: (i) the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).

However, in the absence of exceptional circumstances, the Respondent’s failure to respond to the Complaint requires that the Panel draw the inferences from this failure that it considers appropriate. Rules, paragraph 14(b). The Panel finds that no exceptional circumstances exist for the failure of the Respondent to submit a response. Accordingly, the Panel infers that the Respondent does not deny the facts alleged and the contentions urged by the Complainant based upon these facts, and will draw all reasonable inferences that are appropriate from the evidence and the facts found by the Panel. Id.; Facebook Inc. v. te5gfh gtfghbfh, WIPO Case No. D2018-2433; RX America, L.L.C. v. Tony Rodolakis, WIPO Case No. D2005-1190.

Although the Panel may draw negative inferences from the Respondent’s default, the Complainant may not rely on conclusory allegations and must support its allegations with evidence to prove the three elements and prevail. WIPO Overview 3.0, section 4.3.

B. Elements of a Claim

(i) Domain Name Identical or Confusingly Similar to the Complainant’s Trademark

To prove the first element, the Complainant must prove that (1) it has rights in a trademark and (2) the Domain Name is identical or confusingly similar to this trademark.

The Complainant’s trademark registrations in Norway, the European Union, Japan, Republic of Korea, and China establish the Complainant’s trademark rights. WIPO Overview 3.0, section 1.2.1.

The Panel finds that the Domain Name is confusingly similar to the Complainant’s SPERRE figurative trademark because of the predominance of the word “Sperre” in the figurative mark. The Domain Name incorporates the entire word portion of the SPERRE figurative trademark––the word “Sperre”––which is the predominant element in the registered mark, and the SPERRE trademark is easily recognizable within the Domain Name. WIPO Overview 3.0, section 1.7.

The inclusion of the generic word “parts” in the Domain Name does not prevent a finding of confusing similarity.

Lastly, the inclusion of the generic Top-Level Domain (“gTLD”) “.com” is disregarded in determining confusing similarity. WIPO Overview 3.0, section 1.11.

Accordingly, the panel concludes that the Complainant has proven the first element, namely, that the Domain Name is confusingly similar to a trademark in which it has rights.

(ii) Rights or Legitimate Interests in the Domain Name

This dispute would raise directly the perennially interesting question of the right of a retail seller of repair parts to use the mark of a manufacturer referentially in a domain name, but for one fact: the Respondent is selling inauthentic goods.

Generally, “Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name.” WIPO Overview 3.0, section 2.8.1.

The Policy expressly provides that a use is legitimate if, prior to the notice to a respondent in a dispute, the respondent used the domain name, or a name corresponding to the domain name, in connection with the bona fide offering of goods or services. Policy, paragraph 4(c)(i). The Policy also expressly provides a safe harbor for a legitimate “fair use” of a domain name, but this use must be “without intent for commercial gain to misleadingly divert consumers”. Policy, paragraph 4(c)(iii). The defenses set forth in paragraph 4 of the Policy, however, are “without limitation”. Policy, paragraph 4(c). Accordingly, notwithstanding this “commercial gain” limitation on the fair use defense, panels may potentially find fair use in cases where domain names confusingly similar to trademarks have been used by retail sellers of repair parts for commercial gain. Cf. General Motors LLC v. Flashcraft, Inc DBA Cad Company, WIPO Case No. D2011-2117.

UDRP Panels have long applied the four requirements set forth in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, in the case of authorized and unauthorized retail dealers. WIPO Overview 3.0, section 2.8.1. The first Oki Data requirement––that the Respondent must be offering the goods or services at issue––might seem applicable to this dispute in the general sense that the Respondent here is offering compressor parts. However, the Respondent here is not offering authentic goods bearing the trademark. The fourth requirement––that the Respondent must not be trying to corner the market on domain names reflecting the mark––also is not applicable, because the Complainant has not raised this issue or offered any evidence of this.

Two other requirements of Oki Data are potentially relevant: (1) that the Respondent use its site to sell only goods bearing the trademark and not also other goods to facilitate a bait-and-switch and (2) the site must accurately disclose the respondent’s relationship with the Complainant.

Lastly, and “[f]undamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.” WIPO Overview 3.0, section 2.5.

The Complainant has alleged that the Respondent is selling inauthentic goods and that the Respondent is branding the inauthentic goods with the Complainant’s registered trademark. The evidence, particularly, Annex 4, shows that the Respondent’s web site refers to products as SPERRE parts and that it features a photograph of a product bearing the SPERRE trademark. Because the Respondent has not contested these allegations in the Complaint, and the Complainant has certified that the information in the Complaint is complete and accurate, the Panel accepts these allegations as proven for purposes of the Policy. Rules, paragraph 14(b) and 10(d); WIPO Overview 3.0, section 4.3.

Additionally, the Panel visited the site, and finds that the Respondent offers for sale numerous competitive compressor parts and that the Respondent does not disclose that it has no relationship with the Complainant. WIPO Overview 3.0, section 4.8. Accordingly, the Panel finds that the Complainant has proven a prima facie case that the Respondent has no right or legitimate interest in the Domain Name.

Regarding the Oki Data requirements, these facts also demonstrate that the Respondent fails to meet the second and third requirements: the Respondent does not use its site to sell only (authentic) goods bearing the trademark and the Respondent has not accurately disclosed its relationship with the Complainant.

“[W]here a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” WIPO Overview 3.0, section 2.1.

The Respondent has failed to come forward with any evidence, having failed to respond to the Complaint.

The use of a complainant’s trademark (1) in a respondent’s domain name, (2) on the corresponding web site, and (3) on photographs of goods on the site, when only inauthentic and competitive goods are offered, is not a bona fide use of a mark in a domain name and is also not a fair use.

This principle compels the Panel to conclude that the Complainant has proven the second element, namely, that the Respondent lacks any right or legitimate interest in the Domain Name.

(iii) Registration and Use of the Domain Name in Bad Faith

The Policy provides that the following circumstance is “evidence of the registration and use of a domain name in bad faith: (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line 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.” Policy, paragraph 4(b)(iv).

“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: . . . (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, . . . and (vi) absence of any conceivable good faith use.” WIPO Overview 3.0, section 3.1.4.

The Panel finds that the Respondent’s use of the Complainant’s SPERRE trademark (1) in the Domain Name, (2) on the Respondent’s corresponding web site, and (3) on photographs of goods on the site, while only offering inauthentic and competitive goods is conclusive evidence that the Respondent is using the Domain Name intentionally to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark. Policy, paragraph 4(b)(iv). The failure of the Respondent to disclose that it has no relationship with the Complainant reinforces this finding.

The Domain Name itself demonstrates that the Respondent was aware of the SPERRE trademark at the time that it registered the Domain Name. The use of the SPERRE trademark on the Respondent’s web site reinforces this finding. In short, the evidence of the use of the Domain Name in bad faith also compels a finding that the Respondent registered the Domain Name in bad faith.

Accordingly, the panel concludes that the Complainant has proven the third element, namely, that the Respondent registered and is using the Domain Name in bad faith.

7. Decision

For the foregoing reasons, in accordance with the Policy, paragraph 4(i) and the Rules, paragraph 15, the Panel orders that the disputed domain name <sperreparts.com>, be transferred to the Complainant.

A. Justin Ourso III
Sole Panelist
Date: February 20, 2019