WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Atlas Copco Aktiebolag v. MKC Supply Inc

Case No. D2011-1844

1. The Parties

The Complainant is Atlas Copco Aktiebolag of Nacka, Sweden, represented by LeClairRyan, United States of America.

The Respondent is MKC Supply Inc of Georgia, United States of America.

2. The Domain Name and Registrar

The disputed domain name <atlascopcoonline.com> 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 October 25, 2011. On October 26, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 2011, 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 November 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2011.

The Center appointed Peter Burgstaller as the sole panelist in this matter on December 19, 2011. 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 the owner of the trademark “ATLAS COPCO” registered in Sweden since September 13, 1974 (number 148653) and the United States since February 28, 1989 (number 1526505)(see Annex 3 of the Complaint).

The domain name was created on March 12 2010 (Annex 1 of the Complaint and as confirmed by the Registrar). The disputed domain name resolves to a generic inactive website that says “This Site Is Under Construction and Coming Soon,” etc (Annex 5 of the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant was incorporated in Sweden in 1873; together with its subsidiaries around the world, the Complainant is known as “Atlas Copco” and “the Atlas Copco Group”. The Complainant employs approximately 33,000 people worldwide and the Group’s worldwide revenues were approximately 7 billion EURO. The Complainant’s business includes development, manufacture, marketing, and servicing of compressed air equipment, industrial tools and assembly systems, construction equipment, and mining equipment. Its products are sold under various brands, including the ATLAS COPCO brand, through a world-wide sales and service network reaching approximately one hundred and fifty countries. Complainant’s primary website is located at “www.atlascopco.com”.

The disputed domain name is confusingly similar to the above mentioned trademarks over which the Complainant has rights. The Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has registered and is using the disputed domain name in bad faith.

For these reasons the Complainant requested the disputed domain name to be transferred.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

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

(ii) Respondent has no rights or legitimate interests with respect to the domain name; and

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

A. Identical or Confusingly Similar

The disputed domain name incorporates the entirety of the Complainant’s trademark. The use of the Complainant’s trademark with the suffix “online” does not make the disputed domain name distinctive from the Complainant’s trademark. In fact it is the Panel’s conviction that in using especially the suffix “online”, it rather strengthens the impression that the disputed domain name is in some way connected to the Complainant or at least “free rides” on the fame/publicity of Complainant’s trademark (see e.g. Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253, <quixtarmortgage.com>; Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511, <telstra-free-online.com> et.al.; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406, <dixons-online.com>; Ryder Cup Europe LLP v. Rydercuponline.com / Andrew Seaforth, WIPO Case No. D2010-0688, <rydercuponline.com>; Sanofi-aventis, AVENTISUB II Inc. v. Murugan Nadar / Rajesh Singh, WIPO Case No. D2010-1959, <buygenericallegra.com>).

It has also long been held that suffixes such as the gTLD suffix “.com” cannot typically negate confusing similarity where it otherwise exists, as it does in the present case.

The Panel therefore finds that the Complainant has made out the first of the three elements under paragraph 4(a) of the Policy that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

But by virtue of paragraph 4(c) of the Policy, it is open to a Respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

If the respondent proves any of these elements or anything else that shows it has a right or legitimate interest in the disputed domain name, the complainant will have failed to discharge its onus and the complaint will fail with respect to the disputed domain name. However, in the present case the Respondent failed to submit a Response.

It is well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second edition ("WIPO Overview 2.0") “…complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.

Considering all of the evidence in the Complaint and the annexes attached to it, the Panel finds that the Complainant has made out an undisputed prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, if the following circumstances, in particular but without limitation, are found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

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

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

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

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s web site or location.

As stated in many decisions adopted under the Policy (esp. Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001, <musicweb.com>) both conditions, registered and used in bad faith, are cumulative, consequently, the Complainant must show that:

- the domain name was registered by the Respondent in bad faith and,

- the domain name is being used by the Respondent in bad faith.

Registered in bad faith

The disputed domain name is composed by the Complainant’s distinctive trademark and the suffix “online”.

It is the Panel’s opinion that the choice of this suffix has the only purpose to attract Internet traffic while using the publicity and the reputation of the Complainant’s trademarks.

Previous panels moreover held that in certain circumstances when a trademark is well-known, the Respondent’s bad faith could be inferred (AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1088, <mobileatt.com>): “Bad faith can be presumed based on the fame of Complainant’s marks, such that the Respondent was aware or should have been aware of Complainant’s well-known marks and claims of rights thereto.”

With regard to the disputed domain name it is clear for this Panel, that the Respondent was aware of the Complainant’s marks otherwise it would not have used the Complainant’s trademark in its entirety together with the generic suffix “online” for registering the disputed domain name.

These findings together with the Complainant’s contentions and presented proofs lead this Panel to the conclusion that the disputed domain name has been registered in bad faith by the Respondent.

Used in bad faith

In order to meet paragraph 4(a)(iii) of the Policy the Complainant has also prove that the disputed domain name is being used in bad faith.

The Respondent does not present its own website under the disputed domain name - in the present case, the domain name at issue resolves to a generic inactive website that says “This Site Is Under Construction and Coming Soon,” etc.

The domain name in dispute therefore is apparently not actively used. This Panel, however, follows in this respect the arguments pointed out in several decisions especially in Telstra Corporation Limited v. Nuclear Marshmallows, ( WIPO Case No. D2000-0003, <telstra.org>):

“… [t]he relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept.”

In certain circumstances, therefore, it is possible that inactivity by the Respondent may amount to the domain name being used in bad faith. This understanding of paragraph 4(a)(iii) of the Policy is also supported by the actual provisions of the Policy – only paragraph 4(b)(iv) involves a positive action – and other Panel decisions (See e.g. Red Bull GmbH v. Manuel Sousa, WIPO Case No. D2001-0584, <redbullentertainment.com>, <redbullentertainment.net>, <redbullentertainment.org>; Deutsche Telekom AG v. Dexcom Holdings B.V., WIPO Case No. DTV2006-0001, <tmobile.tv>, <tmobil.tv>; Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273, <pentiumgroup.net>).

The circumstances identified in paragraphs 4(b)(i) to (iii) of the Policy involve also a passive holding/or inaction of the domain name registration, even though these provisions require additional facts. It should be recalled that the circumstances listed under paragraphs 4(b)(i) to (iv) of the Policy are “without limitation” – that is, paragraph 4(b) also expressly recognizes that other circumstances can provide evidence of bad faith. The Panel therefore has to examine all the circumstances of the case to determine whether the Respondent is acting in bad faith.

Given the fact that the Respondent incorporated the Complainant’s trademark in its entirety together with the generic suffix “online” and taking into account that the Respondent has given no evidence, whatsoever, of any actual or contemplated good faith use by it of the domain name, it is fairly difficult to conceive of any plausible actual or contemplated active use of the domain names by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

Moreover the fact that the disputed domain name points to a blank inactive website which says “This Site Is Under Construction and Coming Soon” is in the view of this Panel an “act preparatory” of undertaking a positive action in bad faith since it says “…coming soon”.

Taken together these elements are compelling enough for a finding that the disputed domain name is being used in bad faith.

Hence, it is the Panels conviction that the conditions set out in paragraph 4(a)(iii) of the Policy has been met by the Complainant.

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 domain name <atlascopcoonline.com> be transferred to the Complainant.

Peter Burgstaller
Sole Panelist
Dated: December 29, 2011