WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Omya AG and Omya UK Limited v. DomainProtect LLC

Case No. D2012-0164

1. The Parties

The Complainants are Omya AG of Oftringen, Switzerland and Omya UK Limited of Chaddesden Derby, United Kingdom of Great Britain and Northern Ireland, represented internally.

The Respondent is DomainProtect LLC of Saint Petersburg, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <omyauk.com> is registered with Neudomain LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2012. On January 31, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 7, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on February 7, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. In their email of February 10, 2012, the Complainants declined to file an amendment to the Complaint.

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 February 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2012.

The Center appointed Alfred Meijboom as the sole panelist in this matter on March 13, 2012. 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 Complainants are producers of industrial mineral materials. Omya AG is the owner of the trademark OMYA for chemicals in several jurisdictions, including the United Kingdom of Great Britain and Northern Ireland, the European Union and the Russian Federation.

The disputed domain name <omyauk.com> was registered or acquired by the Respondent on September 13, 2011.

5. Parties’ Contentions

A. Complainant

The Complainants allege that the disputed domain name is identical and/or confusingly similar to trademarks and company names in which the Complainants have rights. They have provided evidence of trademark registrations for OMYA in connection with, inter alia, chemicals, raw materials used for paints and coloring pigments in several jurisdictions. The Complainants contend that the only distinctive element in the disputed domain name is “omya”, which is neither a descriptive nor a common term. The Complainants argue that the element “uk” in the disputed domain name is understood as a geographical indication, whereas “.com” is not distinctive. They argue that the disputed domain name is identical to the company name Omya UK Limited of the fist Complainant, and confusingly similar with the company name Omya AG of the second Complainant. Furthermore, they contend that the disputed domain name is confusingly similar to a host of other trademarks owned by Omya AG, such as (but not exclusively) BRITOMYA, OMYABOND, OMYACARB and OMYACURE.

The Complainants further argue that the Respondent has no rights or legitimate interests in the disputed domain name. They have sent a cease and desist notice to the Respondent, to which the Respondent did not reply. There is no evidence of use, or demonstrable preparations to use, the disputed domain name. Also, there is no evidence that the Respondent has ever been commonly known by the disputed domain name. Finally, according to the Complainants, the Respondent makes no legitimate noncommercial or fair use of the disputed domain name.

The Complainants finally contend that the disputed domain name was registered and is being used in bad faith. To substantiate this claim, the Complainants argue that the Respondent had to be well aware of the Complainants’ rights and interests in the disputed domain name as Omya and Omyauk is a brand and company name, respectively, which have been registered as trademarks in several jurisdictions. Further circumstances to conclude that the disputed domain name was registered and is being used in bad faith are the fact that the Respondent “hides” his identity behind a privacy shield and has not answered the cease and desist letter to justify its registration.

B. Respondent

The Respondent did not reply to the Complainants’ contentions, neither did the Registrar-disclosed registrant of the disputed domain name.

6. Discussion and Findings

A. The Respondent

The Complaint was notified to two separate addresses on February 13, 2012. First to the registrant and contact information provided by the Registrar and the second to the privacy service. According to the Complainants’ email of February 10, 2012 to the Center, declining to amend the Compliant to include the registrant identified by the Registrar, the Complainants’ Russian affiliate performed a search of the Russian commercial register to discover that the registrant and contact information provided by the Registrar does not exist in Russia and that the address in Saint Petersburg provided by the Registrar has an incorrect postal code. The Panel has no reason to doubt the Complainants’ allegations and has no reason to doubt that the name and address provided by the Registrar are false. The Panel therefore agrees with the Complainants that the Complaint did not necessarily need to be amended in this case.

Secondly, the Complaint was also notified to the Respondent, which is an organization that provides privacy shields. This is evident from its name and from previous panel decisions under the UDRP (e.g., Limited Liability Company Infomedia v. c/o Office-Mail processing center / Whois privacy services, provided by DomainProtect LLC / 1) Eurofirm Ltd. 2) Ethno Share PO, Domain Manager, WIPO Case No. D2010-1239, Hess Group AG v. Eurobox Ltd./Whois privacy services, provided by DomainProtect LLC. / “Hess Group LTD”, WIPO Case No. D2008-0060, Daimler AG v. Whois privacy services, provided by DomainProtect LLC/Designbureau Ltd., Domain Manager, WIPO Case No. D2010-1269). The Panel agrees with the panel in Dr. Martens International Trading GmbH, Dr Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753, who recognized that in certain circumstances it may be appropriate to treat the privacy service as a proper respondent in a UDRP case in addition to taking due account of any other apparently reliable registrant data that may be available. In this case, although the Registrar has disclosed registrant and contact information apparently connected to the disputed domain name, it appears that this information may be false or incorrect, as such, the Panel therefore finds DomainProtect LLC to be the applicable registrant of record (and in the absence of any other reliable registrant information) the sole Respondent in this case¹.

B. Assessment of the Case

The Respondent did not reply to the Complainants’ contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), the majority view of panelists is that the Respondent's default does not automatically result in a decision in favor of the Complainants. The Complainants must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent's default, paragraph 4 of the Policy requires the Complainants to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.

Under the Policy, the Complainants must prove that:

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

C. Identical or Confusingly Similar

The disputed domain name is confusingly similar to the Complainants’ trademarks. The disputed domain name reproduces the trademarks OMYA in its entirety. It is consistently decided that adding a generic term – in this case “uk”, which is the acronym for “United Kingdom” – to an established mark does not affect the finding that a domain name is confusingly similar (e.g., Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 and Allianz, Compañia de Seguras y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942). Furthermore, the addition of the suffix “.com” is non-distinctive because it is required for the registration of a domain name.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainants’ trademark OMYA, and the first element is met.

D. Rights or Legitimate Interests

The Complainants must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Complainants contend that they did not authorized the use of their trademarks to the Respondent. Furthermore, the Panel is satisfied that there is no indication that the Respondent has been commonly known by the disputed domain name or that it has used the disputed domain name for a bona fide offering of goods or services.

In absence of a reply from the Respondent, the Panel finds that the Complainants have made a prima facie case. As a result, the Panel finds the Respondent has no rights or legitimate interests in the disputed domain name and the second element of paragraph 4(a) of the Policy is also met.

E. Registered and Used in Bad Faith

The Panel is satisfied that the trademark OMYA is distinctive and lacks a specific meaning, so that is likely that the Respondent was aware of the Complainants’ rights and interests in the trademark OMYA when it registered the disputed domain name.

Further, failure of the Respondent in this case to reply to the Complainants’ cease and desist notice or to respond to the Complaint supports an inference of bad faith (e.g., Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.)

Furthermore, the Panel endorses the consensus panel view regarding use of privacy registration services, that although use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can constitute a factor indicating bad faith. The registrant of the disputed domain name used a privacy shield in this case purely to mask its identity, which is evident from the fact that it seem to have provided a nonexistent name and address to the Registrar, as discussed above. Consequently, the Panel concludes that the registrant has no legitimate reason for using a privacy shield and its use of a privacy shield also supports a finding of bad faith in this case.

Accordingly, the Panel concludes that the disputed domain name was registered and used in bad faith. The third, and last element is therefore also met.

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 <omyauk.com> be transferred to the Complainants.

Alfred Meijboom
Sole Panelist
Dated: March 16, 2012

¹ In any event, and in so far as any implementation under the Policy may be concerned, whether the Respondent would be formally regarded as the privacy service or the Registrar disclosed registrant of the disputed domain name as recorded in paragraph 7, below, is for transfer to the Complainants.