WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Amicus Trade AB v. Dharshinee Naidu

Case No. D2014-0418

1. The Parties

The Complainant is Amicus Trade AB of Båstad, Sweden, represented by Staffan Gunnarsson, Sweden.

The Respondent is Dharshinee Naidu of New York, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <holdon.com> is registered with eNom (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 18, 2014. On March 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 18, 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 March 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 16, 2014.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on April 24, 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 markets and distributes fastening clips under the trademark HOLDON. The Complainant's website indicates that the trademark was derived from the combination of the word "Hol", which is a village in Sweden, and the Swedish word "don" which means device or gear. The first application for a Swedish trademark for the mark HOLDON was filed on February 19, 1999.

Since then the Complainant has registered the HOLDON trademark in the OHIM (Europe) and Chinese Trademarks Offices. The following are the details of the Complainant's trademark registrations:

Swedish Trademark Registration No. 344415;

OHIM Trademark Registration No. 004471199; and

Chinese Trademark Registration No. 9782802.

The Complainant also owns domain names which revert to the Complainant's website, namely <holdonsystems.com> and <holdon.info>.

The Complainant has marketed its HOLDON products throughout Europe, Asia and Sweden for 15 years and has developed a substantial reputation in the HOLDON trademark.

The disputed domain name <holdon.com> was initially registered on March 18, 1997. The Complainant wrote to the original owner of the disputed domain name in 1999 seeking to purchase the disputed domain name, but the owner did not respond to that communication. From 2002 to 2006 the disputed domain name reverted to a website that provided news content. In 2009, the disputed domain name appeared to be registered in the name of Domain Finance Inc.

In 2013, the ownership of the disputed domain name changed to the current registrant, Dharshinee Naidu. When the ownership of the disputed domain name changed hands in 2013, the Complainant again wrote to the owner of the disputed domain name, the Respondent), but no response to that communication has been received.

At the time the Complaint was filed, the disputed domain name reverted to a click-through website that provided links to third party sites.

5. Parties' Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant submits that it owns trademark registrations for the trademark HOLDON in Sweden, Europe and China, including the following Registrations:

Swedish Trademark Registration No. 344415;

OHIM Trademark Registration No. 004471199; and

Chinese Trademark Registration No. 9782802.

The Complainant contends that the disputed domain name <holdon.com> is confusingly similar to the Complainant's registered trademark HOLDON.

Rights and Legitimate interests

The Complainant contends that the Respondent was never authorized or licensed to use the Complainant's HOLDON trademark. The Respondent is not commonly known by that name as an individual or business. The Complainant submits that the use of a confusingly similar trademark in association with a click-through site does not demonstrate a bona fide offering of goods and services.

Registered and Used in Bad Faith

The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith because the Respondent must have been aware of the Complainant's HOLDON trademark when it acquired the domain name in 2013. The Respondent registered and is using the disputed domain name to interfere with the Complainant's business. The fact that the Respondent never responded to the Complainant's correspondence, and is using the disputed domain name which comprises the Complainant's registered trademark in association with a click-through site for purposes of monetary gain is all evidence of bad faith under the Policy.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(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 Panel finds that the Complainant owns registered trademark rights in the trademark HOLDON by virtue of the trademark registrations listed in paragraph 4 above.

The Panel further finds that the domain name <holdon.com> is confusingly similar to the Complainants' registered trademark HOLDON. The disputed domain name consists entirely of the Complainants' trademark HOLDON. In the absence of any contrary evidence, Complainant's registered marks are sufficient to satisfy this element of the Complaint.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Thus, the burden of proof shifts to the Respondent to demonstrate any rights or legitimate interests it may have in the disputed domain name.

In the absence of any Response, the Panel accepts the Complainant's contentions that the Respondent was never authorized or licensed to use the Complainant's trademark, and that the Respondent is not commonly known either in business or as an individual by the Complainant's HOLDON trademark. The Panel further concludes that the Respondent's use of a confusingly similar domain name in association with a click-through site is not in the present circumstances evidence of use in association with a bona fide offering of goods and services.

Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In the absence of any Response, the Panel accepts that the domain name <holdon.com> was acquired by the Respondent in 2013¹ . At the time the disputed domain name was acquired in 2013, the Complainant's HOLDON trademark had been registered for over 12 years, and had been extensively used on products and had been marketed in Europe and Asia for 15 years. At that time, the Complainant had also been active on the Internet for quite some time via its domain names <holdonsystems.com> and <holdon.info>. The Panel is further prepared to accept the Complainant's uncontested assertions that the use of the disputed domain name in association with a click-through site has interfered and/or is interfering with the Complainant's business, and that the disputed domain name is leading Internet customers seeking the Complainant's website to the Respondent's unauthorized website for purposes of monetary gain. In the absence of any evidence to the contrary, the Panel finds that the disputed domain name was registered and used in bad faith by the Respondent.

The Panel finds that the Complainant has satisfied the requirement under 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 <holdon.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist
Date: May 2, 2014

¹ The Panel notes in this regard that the transfer of a domain name to a third party amounts to a new registration for purposes of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.7.