WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ameropa AG v. Eugene Maslyanitsin

Case No. D2013-0095

1. The Parties

The Complainant is Ameropa AG of Binningen, Switzerland, represented by Lenz Caemmerer, Switzerland.

The Respondent is Eugene Maslyanitsin of Kostroma, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <ameropa-ag.com> is registered with Instra Corporation Pty Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2013. On January 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 21, 2013, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 22, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was February 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2013.

The Center appointed Brigitte Joppich as the sole panelist in this matter on February 18, 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant was incorporated in 1994, with the main business purpose of trading in industrial and raw materials. The Complainant as well as its predecessor-in-title has been trading under the name “Ameropa” since 1948, when the first company was incorporated under the registered name of “Ameropa AG” (today known as “Ameropa Holding AG”). In 2011, the Ameropa group of companies, consisting of Ameropa Holding AG, the Complainant and their various subsidiaries, reported sales of USD 7.4 billion, trading in 10 million tons of fertilizer and 7 million tons of grain. At the end of that year, the group had 4,875 employees. Today, the Complainant acts through offices and representatives in about 30 countries around the world and most of its offices are using the name “Ameropa”.

In 2004, the Complainant was ranked number 101 in the Swiss Top 500 companies, and from 2002 to 2011, it was often subject of press articles dealing with the chemical and fertilizer industries on the online service ICIS and Bloomberg. It first registered the domain name <ameropa.ch> in 1997 and maintains a website at ‘’www.ameropa.com’’ (having registered the domain name <ameropa.com> in 2004).

The Complainant has no registered trademark including the name “Ameropa”.

The disputed domain name was registered on April 24, 2012 and is used in connection with a website copying the look and feel of the Complainant’s website, including the Complainant’s logo and providing content purporting to be extracts from newspapers which report on the alleged activities of the Complainant, its board members and directors, and its business partners.

The Respondent is also the registered owner of the domain name <ameropa-ag.ch>, which is currently subject to a proceeding under the “Rules of procedure for dispute resolution proceedings for .ch and .li domain names”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:

(1) The Complainant claims unregistered rights under the Policy in the name “Ameropa” and states that, due to its use of such name in commerce for decades it has an extensive reputation in its name and trade mark AMEROPA, which is distinctive of the trading activities of and services rendered by the Complainant. The Complainant argues that the disputed domain name is identical to the Complainant’s registered name “Ameropa AG” and confusingly similar to its name and trade mark AMEROPA, which is an invented name.

(2) The Respondent has no rights or legitimate interests in the disputed domain name as he has no permission or authority from the Complainant to use the disputed domain name or the above-described features of the Complainant’s website or to publish a website purporting to be that of the Complainant or to be associated with the Complainant, and as the Respondent does not appear to offer any goods or services on his website available at the disputed domain name but is only using the disputed domain name to divert customers and potential customers of the Complainant and persons who deal with, or wish deal with the Complainant, to tarnish the Complainant’s name.

(3) The Complainant contends that the disputed domain name was registered and is being used in bad faith. It states that the Respondent provides a website at the disputed domain name which is similar to the Complainant’s website in that it uses a red background with a Swiss cross, with the name of “Ameropa” appearing in nearly the same font as it appears on the Complainant’s website, includes a logo with the words “Fairness, Integrity, Fun”, which, but for one term, is the same as the logo appearing on the Complainant’s homepage, includes an aerial photograph, probably taken from Google Maps, of the Complainant’s head office in Basel, Switzerland, and finally also includes an almost exact reproduction of the contact details of the Complainant from the Complainant’s contact page. The Complainant further contends that the Respondent was aware of the Complainant when he registered the disputed domain name as he registered not only the disputed domain name but also the domain name <ameropa-ag.ch> under the Swiss top level domain, where the Complainant is incorporated. The Complainant submits that the only conclusion which can be drawn from the actions of the Respondent is that he has registered and is using the disputed domain name solely in order to pretend that his website is the website of the Complainant. The Complainant also contends that the content available on the website at the disputed domain name is mostly to be considered as being defamatory. The Complainant finally contends that, even if it were to be assumed that the Respondent is using the websites for genuine, noncommercial free speech, such use would not entitle the Respondent to register and use a domain name that is identical or confusingly similar to the Complainant's proprietary name and trademark.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and

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

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant relies on common law rights arising from its use of AMEROPA in commerce.

It is consensus view that common law trade mark rights may be sufficient for the purposes of establishing rights under paragraph 4(a)(i) of the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.7; UITGERVERIJ CRUX v. W. FREDERIC ISLER, WIPO Case No. D2000-0575; Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314; Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083; Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786; Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322). However, a complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. A conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice. In fact, specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.

In the present case, the Complainant provided evidence that the first use of AMEROPA dates back to 1948, that its group of companies is active in about 30 countries worldwide and had sales of USD 7.4 billion in 2011, that is was included in the Swiss Top 500 companies in 2004, and that it was repeatedly subject of media coverage within almost a decade in the recent past. The Panel finds that under these circumstances, where the Complainant’s name has been well-established for many years, the Complainant can rely on common law trademark rights in AMEROPA for purposes of the Policy.

The Panel finds the disputed domain name is confusingly similar to the AMEROPA mark, in which the Complainant has rights, as the additional term “ag” is merely an abbreviation of the Swiss legal form of a stock company (“Aktiengesellschaft”) and therefore is descriptive. This term is not an adequate criterion for differentiation.

Furthermore, it is well established that the specific top level domain name is generally not an element of distinctiveness that is taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).

As a result, the Panel finds that disputed domain name is confusingly similar to the Complainant’s mark and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the domain name will then shift to the respondent.

The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.

The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.

Under the circumstances of this case, the Panel will consider in greater detail the use made by the Respondent of the website at the disputed domain name.

Based on the evidence before the Panel, it finds the Respondent’s use of the disputed domain name does not meet any of the criteria set out in paragraph 4(c) of the Policy. The Respondent has used the disputed domain name in connection with a website which copies the look and feel of the Complainant’s website, which includes the Complainant’s logo, and which provides content purporting to be extracts from newspapers which report on the alleged activities of the Complainant, its board members and directors and its business partners. Even if the information available at the disputed domain name was considered permissible for purposes of the Policy as a genuine, noncommercial criticism of the Complainant, the Respondent’s use of the disputed domain name would not comply with the requirements for a noncommercial or fair use under paragraph 4(c)(iii) the Policy. It is noted that some UDRP panels have found that a legitimate noncommercial or fair use of a domain name can only be accepted if, inter alia, it is immediately apparent to Internet users visiting the website at the disputed domain name that it is not operated by the owner of the mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.4, with further references). In the present case, the Respondent’s website does not contain any kind of disclaimer but rather suggests being somehow endorsed by or affiliated with the Complainant. The Respondent, by failing to submit a response, has failed to provide any explanation or clarification of its actions that would have otherwise provided this Panel a basis to find rights or legitimate interests in the disputed domain name. Therefore, the Respondent cannot rely on rights or legitimate interests under paragraph 4(c)(iii) of the Policy or otherwise.

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.

The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of and for the purposes of impermissibly using the mark of the Complainant and thus in bad faith under paragraph 4(a)(iii) of the Policy. The name AMEROPA is an invented name, which has been used by the Complainant and related companies for decades. Given that the Respondent, located in the Russian Federation, registered the disputed domain name to use it in connection with a website copying the look and feel of the Complainant’s website, including the Complainant’s logo and providing content purporting to be extracts from newspapers which report on the alleged activities of the Complainant, it is almost inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant. The finding of bad faith registration is supported by the fact that the Respondent registered not only the disputed domain name but also the domain name <ameropa-ag.ch> under the ccTLD of Switzerland, where the Complainant is incorporated.

As to bad faith use, the Panel finds that the disputed domain name was used by the Respondent in an intentional attempt to benefit from the goodwill of the Complainant’s name and to catch web traffic initially intended for the Complainant. Furthermore, the Panel is convinced that the Respondent tries to create the impression that his website available at the disputed domain name is sponsored or endorsed by the Complainant. Even if the Respondent’s true reasons for registering and using the disputed domain name as described above remain somewhat unclear, on balance and without the benefit of a response, the Panel has found such use does not provide the Respondent with any rights or legitimate interests in the disputed domain name. Registration and use of the disputed domain name for this purpose leads the Panel, under the circumstances, to conclude that such registration and use was in bad faith (see Anastasia International Inc. v. Domains by Proxy Inc./rumen kadiev, WIPO Case No. D2009-1416). This finding of bad faith use is supported by the fact that the Respondent registered another domain name consisting of the Complainant’s name - if the Respondent intended to provide a website containing genuine, noncommercial criticism, there would have been no need to corner the Complainant by registering several domain names including the name AMEROPA.

As a result, the Panel is satisfied that the Respondent has registered and is using the disputed domain name in bad faith, and the Complainant has thus satisfied the requirements of paragraph 4(a)(iii) of the Policy as well.

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 <ameropa-ag.com> be transferred to the Complainant.

Brigitte Joppich
Sole Panelist
Date: February 27, 2013