The Complainant is Miracon Technologies, LLC of Richardson, Texas, United States of America, represented by Crouch & Ramey LLP, United States of America.
The Respondent is Alex Soh, Miracon Sdn Bhd of Selangor Darul Ehsan, Malaysia.
The disputed domain name <miracon.net> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2014. On April 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 2, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 12, 2014.
The Center verified that the Complaint together with the amended 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 May 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2014.
The Center appointed Isabel Davies as the sole panelist in this matter on June 18, 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.
On July 8, 2014, Administrative Panel’s Procedural Order No. 1 (“Procedural Order No 1”) seeking further information was issued to the parties. The Complainant responded on July 13, 2014. The Respondent did not reply.
The Complainant started business in 1999. They obtained the US trademark MIRACON on August 13, 2002, and registered the domain name <miracontech.com> on May 18, 1999.
The Domain Name <miracon.net> was registered on January 23, 2004.
The Complainant states that it is a company that designs base slurries and delivery systems for various construction binder systems, such as those using any type of chemical or material binder as used in cement compositions for multiple industries. It was registered as a corporation in 1999 and has continually used “Miracon” as its brand name since that time. The Complainant has also had rights in the United States registered mark MIRACON (Registration No. 2608048). The Complaint states that this has been used since 1999 for a liquid chemical admixture, foam generating equipment, and industrial process control software for use in a wide variety of cement and other binder-based compositions. The mark referred to (annexed at Annex 4 of the Complaint rather than Annex 2 as pleaded) shows a registration date of August 13, 2002.
The Complainant states that recently it became aware of the use of the “Miracon” name on the website at the Domain Name <miracon.net> and contends that this website solicits business from the construction industry, the same industry in which Miracon LLC, the Complainant, sells its products. It states that individuals who believed they were accessing the Complainant’s website notified the Complainant about the Respondent’s use of the Domain Name. The Complainant states that on April 10, 2014, it sent the Respondent a letter demanding return of the Domain Name, but received no response.
The Complainant states that its rights in MIRACON are demonstrated both by United States trademark registrations (although only one is pleaded) and the Complainant’s common law usage of the name for over 15 years. Since its incorporation, the Complainant has continually used the “Miracon” name in advertising campaigns and in the community, including through its website at “www.miracontech.com” that it registered on May 18, 1999.
It states that, in addition, it has been actively involved in efforts to promote its brand further and that as a result of these efforts, its customers, and the general public, have come to recognize it as an established business in the construction industry.
Furthermore the Complainant states, it filed an Affidavit of Incontestability for the registered mark MIRACON under 15 U.S.C. §1115. It states that the Affidavit of lncontestability is conclusive evidence of the validity of the registered mark and its registration, of its ownership of the mark, and of its exclusive right to use the registered mark in commerce.
The Respondent did not file a formal Response nor replied to the Complainant’s contentions.
The Complainant states that according to Go Daddy LLC’s WhoIs’ database at “www.godaddy.com/whoistd.aspx” which it accessed on April 16, 2014, the Respondent in this administrative proceeding is Alex Soh.
It states that the website at the Domain Name <miracon.net> references a company by the name of Miracon Sdn. Bhd. with an address in Malaysia and that the Domain Name was registered in 2004.
It states in the response to Procedural Order No. 1 that, as the Respondent has not responded to the Complaint, there is no evidence of its use of the name Miracon and no evidence of the company which was claimed to be originally incorporated. It also states that the parties are competitive in that they both supply products which are designed for use in mortar systems for the building and construction industry.
In requesting the transfer of the Domain Name, the Complainant seeks to demonstrate the existence of each of the three elements set out in Paragraph 4 of the Policy, namely:
a. The Domain Name includes the Complainant’s mark and is confusingly similar to marks that the Complainant owns;
b. The Respondent has no rights or legitimate interest in the Domain Name; and
c. The Domain Name was registered and is being used in bad faith.
The Complainant avers that it has rights to the Domain Name both through its registered trademark and through its common law usage since at least 1999. They state that, should the registered trademark not be sufficient, UDRP panels must often examine the sufficiency of claims to unregistered or unexamined marks as the basis for a UDRP complaint.
It states that common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner.
The Complainant states that it must demonstrate that the Domain Name is confusingly similar. Previous UDRP decisions have often held that the mere incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to complainant’s registered mark. See Allianz SE v. Antonio Porchia, WIPO Case No. D2010-0694 and Alstom v. Value-Domain Com, WIPO Case No. D2009-1249. In regards to <miracon.net>, because the Domain Name is exactly the same as the mark, the Complainant avers that the confusion is obvious; the Domain Name incorporates the Complainant's mark in its entirety.
The Complainant states that, to their knowledge, the Respondent does not own any trademark or any other relevant rights to the name that corresponds to the Domain Name. Also, the Complainant has not licensed or otherwise authorized the Respondent to use the mark.
The Complainant avers that the Respondent is not making any legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark at issue. On the contrary, the Complainant avers, the Respondent is using the Domain Name for a website that offers products that compete with the Complainant’s products.
The Complainant relies on an extract from one of many UDRP decisions transferring domain names from the Respondent:
“Visitors are being attracted to the website by means of the disputed domain name which incorporates the Complainant’s known and well established trade mark with the descriptive term “truck”. It is very likely that the public searching for information about the Complainant and its goods will search for the trade mark together with a descriptive term, such as “truck”. This kind of search will lead users to the Respondent’s website. The Respondent is thereby making commercial gain by use of the Domain Name, which is confusingly similar to the Complainant’s trade mark.
Accordingly, the Respondent has no rights or legitimate interests in respect of the disputed domain name.” Cargotec Solutions LLC v. Private Registrations Aktien Gesellschaft, WIPO Case No. D2011-0812.
The Complainant contends that the Respondent is seeking to attract Internet users through Complainant’s mark for the Respondent’s own commercial purposes and that use of the Domain Name demonstrates the Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the Domain Name.
The Complainant refers to Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore, a 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, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
The Complainant reiterates that it has not licensed or otherwise authorized the Respondent to use its trademark and that because it has made a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the Respondent to come forward with evidence of rights or legitimate interests in the Domain Name.
The Complainant states that the Respondent has registered and is using the Domain Name in bad faith and that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Respondent's website with the intent of causing confusion as to the source, sponsorship, affiliation, and endorsement of the Respondent’s website. Pursuant to the section 4(b)(iv) of the Policy, such use is evidence of bad faith.
It states that examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant, however, to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
UDRP panels may draw inferences about bad faith registration and use in light of the circumstances, including the failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows, Supra.
Furthermore, Respondent’s failure to reply to Complainant's cease-and-desist letter supports an inference of bad faith. (See Guccio Gucci S.p.A. v. Domain Administrato - Domain Administrator, WIPO Case No. D2010-1589).
It states that, as the Respondents already have a domain name <miracon.com.sg>, the Domain Name served no legitimate commercial purpose other than to cause confusion among consumers. It also states that in May 2014, after it received notice of these proceedings, the Respondent registered <miracom.com.my> to which visitors to the website “www.miracon.net” site are redirected meaning that the Domain Name is now being used solely to capitalize on Internet traffic intended for the Complainant’s website and to redirect that traffic to the Respondent’s website.
The Complainant states that, for these reasons, the evidence shows Respondent registered and is using the Domain Name in bad faith
The Respondent did not reply to the Complainant’s contentions.
The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:
(i) The 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 interest in respect of the Domain Name;
(iii) The Domain Name has been registered and is being used in bad faith.
Each of these elements will be addressed below.
The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including the Respondent’s failure to file a Response.
In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009). However, it is common practice for panelists to make their own enquiries when considering the claims set out in the Complaint.
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Domain Name.
The Panel accepts that the Complainant is a company that designs base slurries and delivery systems for various construction binder systems, such as those using any type of chemical or material binder as used in cement compositions for multiple industries and that the Complainant was registered as a corporation in 1999 and has continually used “Miracon” as its brand name since that time. The Panel also accepts that the Complainant has had rights in the United States trademark MIRACON (Registration No. 2608048) since 2002 for a liquid chemical admixture, foam generating equipment, and industrial process control software for use in a wide variety of cement and other binder-based compositions.
The Panel notes that the Complainant recently became aware of the use of the Miracon name on the website at the Domain Name <miracon.net> and its statement that this website solicits business to the construction industry, the same industry in which the Complainant sells its products. The Panel accepts that individuals who believed they were accessing the Complainant’s website notified the Complainant about the Respondent's use of the Domain Name. On April 10, 2014, the Complainant sent the Respondent a letter demanding return of the Domain Name and referred to trademark infringement and listed the remedies which could be sought without indicating in which jurisdiction any such proceedings would be issued. The letter also referred to a domain name <miracon.com.sg> registered on May 2, 2000 by Miracon Singapore PTE Ltd. The Panel accepts that no response was received.
The Panel accepts that the Complainant has rights arising from its United States trademark registered on August 13, 2002 in respect of “An air entraining chemical and system which produces a stable, more predictable air product” as stated on the Complainant’s website. So far as common law usage since 1999 is concerned the Complainant has not submitted any details of use, advertising or other evidence to show the extent of any rights arising before the trademark registration.
The Complainant states in their response to Procedural Order No. 1 that, through its research and development, it is able to apply its technology to all parts of the world.
Furthermore, the Complainant filed an Affidavit of Incontestability for the registered mark MIRACON under 15 U.S.C. §1115.
While the Complainant refers to the website at the Domain Name <miracon.net> referencing a company by the name of Miracon Sdn. Bhd. with an address in Malaysia it does not mention that the website bears the prominent heading “Formulating epoxy systems since 1983”.
In response to Procedural Order No. 1, the Complainant states that the website is too vague to establish that the Respondent’s use of the name “Miracon” for its business preceded that of the Complainant or that the Respondent has unregistered or common law rights in the term “Miracon”, and indeed that the Respondent’s “Contact Us” page lists the name of a business called “Beeshem (M) Sdn Bhd”, and the relationship between these entities is unclear.
The Complainant states that the Respondent registered the Domain Name in 2004 but does not refer in the Complaint – only in the annexed cease and desist letter – to the domain name <miracon.com.sg> registered on May 2, 2000 by a sister company with the same logo as the Respondent.
The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Panel accepts that the Domain Name is confusingly similar to the Complainant’s trademark in which the Complainant has rights and that the first element of paragraph 4(a) of the Policy is met.
The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant refers to Paragraph 2.1 of the WIPO Overview 2.0 which explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore, a 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, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. [...] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
The Panel considers based on the facts and arguments set out above that the Complainant has made a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) resulting in the burden of proof being shifted to the Respondent to come forward with evidence of rights or legitimate interests in the Domain Name. It would have been appropriate for the Respondent to file a response to meet this burden of proof which could for example taken the form of evidence of the defenses outlined in Policy paragraph 4(c)(i) and (ii). By failing to do so, the Respondent has not rebutted the Complainant’s allegations, and therefore, the second element of paragraph 4(a) of the Policy is met.
The Panel accepts that the Domain Name was registered and is being used in bad faith e.g., in light of the Respondent’s redirection of traffic from the Domain Name to what the Respondent has apparently chosen to call its “new website” <miracon.com.my> which was registered by the Respondent after notice of this proceeding which suggests to the Panel that the Respondent may be engaged in a pattern of intentionally targeting the Complainant; of course, nothing in the mere registration itself of overlapping domains is per se objectionable, but without any Response the Panel bases its reasoning on the Complainant’s unrebutted claims. Moreover, if the Respondent were operating a legitimate business under the “Miracon” name under the Domain Name, it would have expected to participate in these proceedings; despite notice to the Respondent of this proceeding (evidenced e.g., by the signed receipt of Written Notice by “Ms Nor”) it has apparently chosen not to participate which in the Panel’s view indicates that even the Respondent may have been tacitly acknowledging bad faith. The third element of paragraph 4(a) of the Policy is met.
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 <miracon.net> be transferred to the Complainant.
Isabel Davies
Sole Panelist
Date: July 21, 2014