The Complainant is AB SKF of Göteborg, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is AB Company S.R.L. Societa/Ditta AB Company S.R.L. Societa/Ditta of San Prisco, Italy.
The disputed domain names <bearingskf.cloud>, <bearingskf.com>, <bearingskf.org>, <bearingsskf.cloud>, <bearingsskf.com>, <bearingsskf.org>, <cuscinettiskf.cloud>, <cuscinettiskf.com>, <cuscinettiskf.org>, <cuscinettoskf.cloud>, <cuscinettoskf.com>, <skfbearing.cloud>, <skfbearings.cloud>, <skf.cloud> are registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2017. On May 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2017.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on June 23, 2017. 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.
The Complainant is a Swedish company who has been a leading technology platform developer since 1907. In particular, the Complainant has been developing bearings and units, seals, mechatronics, services and lubrication systems. The Complainant owns SKF trademarks currently protected in numerous territories such as the European Union (registration No. 000146878, registered in July 14, 2000), as shown in the case file.
The Respondent is a company whose headquarters are located in Italy.
The disputed domain names <bearingskf.cloud>, <bearingskf.com>, <bearingskf.org>, <bearingsskf.cloud>, <bearingsskf.com>, <bearingsskf.org>, <cuscinettiskf.cloud>, <cuscinettiskf.com>, <cuscinettiskf.org>, <cuscinettoskf.cloud>, <cuscinettoskf.com>, <skfbearing.cloud>, <skfbearings.cloud>, <skf.cloud> were all registered by the Respondent on November 10, 2016, and all point towards a webpage displaying the phrase “reserved”.
Firstly, the Complainant contends that the disputed domain names are confusingly similar to their SKF trademark as they all reproduce said trademark in its entirety, either alone or together with the descriptive terms “bearings”, “bearing”, “cuscinetto”, “cuscinetti”, which refer to the Complainant’s main field of activity.
Secondly, the Complainant puts forward that the Respondent lacks rights or legitimate interests in the disputed domain names. The Complainant states that they have no connection with the Respondent and have at no time consented to the use of their SKF trademark by the Respondent, or the registration of any domain name incorporating said trademark. The Complainant further claims that the Respondent is not commonly known under any of the disputed domain names and is not using the disputed domain names in connection with a bona fide offering of goods and services.
Thirdly, the Complainant alleges that the disputed domain names have been registered and are being used in bad faith. As the disputed domain names amount to fourteen, the Complainant claims that the Respondent necessarily had the Complainant’s trademark in mind when registering the disputed domain names, and has therefore engaged in a pattern of cybersquatting. Furthermore, the Complainant puts forth that the Respondent is passively using the disputed domain names as neither of them is used through an active website.
The Respondent did not reply to the Complainant’s contentions and is therefore in default
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove in order for the disputed domain names to be transferred to it:
(i) the disputed domain names are identical or confusingly similar to a 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 names;
(iii) the disputed domain names have been registered and are being used in bad faith.
The Panel finds that the fact that the disputed domain names all incorporate the Complainant’s trademark in its entirety is sufficient to establish confusing similarity for the purposes of the Policy, pursuant to consistent UDRP prior decisions (see e.g. Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903).
It is also well established in prior decisions under the UDRP that the mere addition of descriptive and non-distinctive elements to a trademark in which the Complainant has rights is insufficient to avoid a finding of confusing similarity (see e.g., TPI Holdings Inc. v. Carmen Armengol, WIPO Case No. D2009-0361). On the contrary, the Panel finds that the addition of, respectively, the term “bearing”, “bearings”, “cuscinetto” (meaning “bearing” in Italian) or “cuscinetti” (meaning “bearings” in Italian), enhance the likelihood of confusion as these terms directly refer to the Complainant’s main field of activity (see e.g., WIKA Alexander Wiegand SE & Co. KG, v. CV. Media Kreasi Utama, WIPO Case No. D2011-2147).
For the purposes of the present comparison, the Panel agrees with the common view under the UDRP that generic Top-Level Domain (“gTLD”) extensions may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name (see e.g., Boehringer Ingelheim International GMBH v. Ralf Zinc, WIPO Case No. D2016-1236). In the present case, the Panel considers the gTLD extensions “.com”, “.org” and “.cloud” of the disputed domain names to be irrelevant.
The Panel consequently finds, on one hand, that the disputed domain name <skf.cloud> is identical to the Complainant’s trademark and, on the other hand, that the disputed domain names <bearingskf.cloud>, <bearingskf.com>, <bearingskf.org>, <bearingsskf.cloud>, <bearingsskf.com>, <bearingsskf.org>, <cuscinettiskf.cloud>, <cuscinettiskf.com>, <cuscinettiskf.org>, <cuscinettoskf.cloud>, <cuscinettoskf.com>, <skfbearing.cloud> and <skfbearings.cloud> are confusingly similar to the Complainant’s trademark. Therefore, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
Based on the evidence submitted in the case file, the Panel deems that the Complainant has proved its rights in the SKF trademarks and accepts the Complainant’s claim that the Respondent had never been granted any right to use the SKF trademark in relation to the disputed domain names. The Panel consequently deems that the Complainant has established a prima facie case that the Respondent does not have rights in the disputed domain names.
Furthermore, the Panel infers from the Respondent’s failure to defend itself while given the opportunity under paragraph 4(c) of the Policy that the Respondent was never granted any right to use the SKF trademark in relation to the disputed domain names. Based on the evidence submitted in the case file, the Panel finds that the Respondent does not have any legitimate interest in the disputed domain names as they are not known under any of the disputed domain names and are not using the disputed domain names in connection with a bona fide offering of goods and services. The Panel therefore finds that the Respondent does not have rights or legitimate interests in the disputed domain names.
In light of the above, the Panel therefore considers that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
The Panel finds very unlikely that the Respondent was unaware of the Complainant’s trademark at the time of registration of the disputed domain names as all fourteen disputed domain names were registered on the same day and reproduce the Complainant’s trademark in its entirety, alone or together with a term referring to the Complainant’s field of activity. As a result, the Panel finds that the Respondent could not have unintentionally incorporated the Complainant’s trademark in the disputed domain names and therefore, has registered the disputed domain names in bad faith (see e.g., Siemens AG v. Client, WIPO Case No. D2015-2035; Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320).
Furthermore, the Respondent, by having registered that many disputed domain names that incorporate the SKF trademark, has established a pattern of abusive registration. By registering the disputed domain names, the Respondent has prevented the Complainant from reflecting its SKF trademark in the disputed domain names in violation of paragraph 4(b)(ii) of the Policy (see e.g., Compagnie Générale des Etablissements Michelin v. Cameron Jackson, WIPO Case No. D2016-2392).
Finally, at all events, as the disputed domain names reproduce the Complainant’s trademark in its entirety and have not been used in connection with an active website, the Panel concludes that the Respondent has been passively holding the disputed domain names and, therefore, has been using it in bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii).
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 <skf.cloud> be transferred and the disputed domain names <bearingskf.cloud>, <bearingskf.com>, <bearingskf.org>, <bearingsskf.cloud>, <bearingsskf.com>, <bearingsskf.org>, <cuscinettiskf.cloud>, <cuscinettiskf.com>, <cuscinettiskf.org>, <cuscinettoskf.cloud>, <cuscinettoskf.com>, <skfbearing.cloud>, <skfbearings.cloud> be cancelled.
Nathalie Dreyfus
Sole Panelist
Date: July 5, 2017