WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Klimex International BV v. Manager, Domain, Designbureau

Case No. D2007-1047

1. The Parties

The Complainant is Klimex International BV of Sittard, Netherlands, represented by Howrey LLP, The Netherlands.

The Respondent is Manager, Domain, Designbureau of St. Petersburg, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <klimex.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2007. On July 20, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On July 23, 2007, Network Solutions, LLC 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”), 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 July 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2007.

The Center appointed William A. Van Caenegem as the sole panelist in this matter on August 29, 2007. 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 incorporated in the Netherlands. It has used the trademark KLIMEX since 1989. It holds Benelux and International trademark registrations, the latter nominating France and Germany, for chemical products and construction goods (International Classes 1 and 19). The Complainant uses its trademarks primarily for decorative concrete products for houses and gardens.

The disputed domain name was registered on March 26, 1997.

5. Parties’ Contentions

A. Complainant

The trademark KLIMEX is internationally associated with the Complainant’s business, especially in the United Kingdom of Great Britain and Northern Island, Germany, France, Italy and Spain with respect to decorative concrete products for houses and gardens. International goodwill and reputation have accumulated from 18 years of legitimate use.

The trademark of the Complainant and the domain name are completely identical. Incorporation in its entirety has been recognized by previous panels as resulting in an identical domain name. The domain name at issue is also identical to the corporate name of the Complainant, and therefore it is highly probable that it would be associated in the public’s mind with the Complainant and its trademark.

The Respondent has not made use or prepared to use the disputed domain name in connection with the offering of bona fide goods or services. It has not engaged in any action establishing that it has rights or legitimate interests in the domain name. At the time the Complainant first learned the Respondent had bought the domain name, it resolved to a website displaying hyperlinks to other websites concerned with travel, finance, e-commerce, lifestyle and real estate. More recently the domain name has resolved to a website with hyperlinks, mostly to sites with pornographic content. Previous panels have held that such use is to be qualified as tarnishing the trademark at issue. An infringing use of a trademark already owned by a Complainant cannot give rise to a legitimate right or interest in it, as has been held by previous panels. The Respondent is also not related in any way to the Complainant and not commonly known under the domain name, nor licensed or permitted to use the trademark at issue. The Respondent by using the disputed trademark is dishonestly suggesting a connection exists with the Complainant.

On May 4, 2007, the Complainant received an email from a Mr. Bryant stating that he recently had acquired the domain name at issue and was selling it at a specified price, with an answer requested by 6pm on May 5, 2007. At the same time the Complainant discovered that the concerned registrar Network Solutions, LLC intended to auction the domain name because it had expired. The Complainant notified the registrar that it wished to purchase the domain name and in the absence of a response applied to bid at the auction, but was then informed that the auction had already closed. Then the Complainant discovered that the Respondent had purchased the domain name. These circumstances, according to the Complainant, indicate that the Respondent (with whom Mr. Bryant was probably affiliated) acquired the domain name primarily for the purpose of selling it to the Complainant for valuable consideration beyond out-of-pocket expenses. In light of these circumstances, it is inconceivable that the Respondent acquired the domain name at issue without knowledge of the Complainant.

Further, the Complainant contends, there is no indication on the website or elsewhere that it is the Respondent who holds the domain name, which means the Respondent is not actively using the domain name, itself an indication of bad faith. In Kleinwort Benson Private Bank v. Designbureau Ltd,, WIPO Case No. D2007-0158 (April 19, 2007) the panel held that the respondent “Designbureau Ltd,” had no rights or legitimate interests and that the domain name was registered and used in bad faith. These facts imply the Respondent is engaging in a pattern of registering or acquiring domain names in order to prevent the legitimate owner of the trademark from reflecting the mark in the corresponding domain name. Finally consumers will inevitably be led into confusion because an average person would be likely to assume that the domain name was owned, sponsored or licensed by the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Incorporation in its entirety of a trademark without additions, subtractions or other modifications results in an identical domain name for the present purposes. Previous panels have consistently arrived at the same conclusion. The “.com” part of the domain name is immaterial for the purposes of comparison in this context.

The Panel finds that the domain name is identical to the trademark of the Complainant.

B. Rights or Legitimate Interests

The Respondent has apparently not been licensed or authorized either to use the Complainant’s trademark or to apply for the registration of a domain name including or deriving from it. The Respondent does not appear to be related to the Complainant, nor to be commonly known or doing business under the domain name at issue.

The Respondent did not file a response and thus no evidence has been provided to the Panel that could support a finding of bona fide use or non-commercial fair use (see Paragraph 4 (c) (i-iii) of the Policy). In fact, none of the factual information presented to the Panel is consistent with the kind of circumstances enumerated in Paragraph 4(c) of the Policy. The domain name has resolved to different pages with lists of hyperlinks (at one stage relating to travel, finance, e-commerce, lifestyle and real-estate and at a later stage to pornographic material) all of which appear to be unrelated to the nature of the domain name itself, or to any legitimate business that the Respondent may have. Using a domain name merely in connection with a web page containing hyperlinks to various and disparate websites offering unrelated services does not amount to the bona fide offering of goods and services. The use of the domain name by the Respondent here is consistent with seeking commercial gain from misleading consumers about a non-existent connection between the website and the Complainant, and may furthermore have the effect of tarnishing the trademark at issue.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name at issue.

C. Registered and Used in Bad Faith

The Complainant’s trademark is distinctive and does not have any primary descriptive meaning in English and has been publicly used over a considerable period by the Complainant in relation to the supply of concrete products in a number of national markets in Europe.

The factual circumstances related to the Complainant’s contentions above are consistent with the Respondent having acquired the domain name with full knowledge of the existence of the Complainant and its rights to the KLIMEX trademark. Presumably the Respondent, being aware of the imminent expiry of the domain name, sought through the offices of Mr. Bryant, to gauge the Complainant’s interest in and terms for the acquisition of the domain name. This it likely did with a view to then acquiring the domain name at auction for a price enabling it to profit from the on-sale to the Complainant. The circumstances thus indicate that the domain name, which is identical to the Complainant’s KLIMEX mark, was registered primarily for the purpose of profiting from the on-sale of the domain name to the Complainant for more than out-of-pocket expenses, or to profit in other ways from likely confusion between the domain name and that mark.

Further there is evidence of the Respondent having engaged in a pattern of acquiring domain names in order to prevent trademark owners from reflecting their marks in a corresponding domain name (see previous panel decision Kleinwort Benson Private Bank Limited v. Designbureau Ltd., WIPO Case No D2007-0158 (April 19, 2007) as referred to above).

The only use the Respondent appears to have made of the domain name is to attract users to a website which contains hyperlinks to unrelated websites with disparate goods or services on offer. This is not in the circumstances indicative of a good faith use of the domain name related to any apparent and legitimate business of the Respondent. Rather, it is consistent with the kind of use recited in Paragraph 4(b)(iv) of the Policy.

The Panel finds that the domain name was registered and used in bad faith.

7. Decision

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

WiIliam A. Van Caenegem
Sole Panelist

Dated: September 11, 2007