Complainant is Afton Chemical Corporation of Richmond, Virginia, United States of America ("US"), represented by Emch, Schaffer, Schaub & Porcello Co., L.P.A., US.
Respondent is Seyed Hamidreza Khademolfoghara of Esfahan, Islamic Republic of Iran ("Iran").
The disputed domain name <aftonchemical.asia> ("Domain Name") is registered with Realtime Register B.V. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 3, 2014. On September 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 4, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 29, 2014.
The Center appointed Clive L. Elliott QC as the sole panelist in this matter on October 2, 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.
According to the Whois record, the Domain Name was registered on July 9, 2014.
Complainant states that it is a wholly-owned subsidiary of NewMarket Services Corporation and owns trademark and service mark registrations globally for AFTON, AFTON CHEMICAL and AFTON CHEMICAL & Design (hereinafter referred to as "Complainant's Marks").
Complainant further states that it has carried on business under the company name "Afton Chemical Corporation" since 2004, and that Complainant's Marks are widely used as trademarks and service marks for its many products and services, as well as it being its company name. Complainant asserts it owns dozens of trademark registrations for the AFTON CHEMICAL trademark globally and owns several domain names which include its AFTON CHEMICAL trademark.
Complainant contends that it had registered a number of domain names incorporating "AFTON CHEMICAL" long before Respondent registered the Domain Name in July 2014. Complainant asserts that it is well known in the chemical, fuel, oil and industrial additives industries, and has used Complainant's Marks globally since at least as early as 2004. Complainant also states that its annual revenue exceeded USD 2.1 billion in 2011 and USD 2.2 billion in 2012 and 2013.
Complainant submits that the Domain Name is visually and aurally identical to Complainant's AFTON and AFTON CHEMICAL trademarks in that the Domain Name incorporates Complainant's AFTON CHEMICAL trade and service mark in its entirety. It says it is also confusingly similar to Complainant's AFTON trademark as the entire AFTON trademark is present in the Domain Name, and the word "Afton" is the dominant portion of the mark that imparts the strongest commercial impression. The addition of the generic word "chemical" increases the confusing similarity between the Domain Name and Complainant's mark.
Complainant advises that it has no relationship with Respondent, and has not given Respondent permission to use Complainant's Marks. It submits that Respondent's use of the term "Chemical" in conjunction with the word "Afton" shows that Respondent is intentionally referencing Complainant and its goods and services.
Complainant states that it attempted to contact Respondent on August 1, 2014, and again August 12, 2014, by email. Prior to those dates, Respondent exhibited no use of the Domain Name in connection with a bona fide offering of goods or services. Complainant points out that when one directs an Internet browser to the Domain Name one is led to a page that states "under construction" and "site is under construction process." Complainant contends that the status of the site has not changed as of the date of this Complaint and there is no evidence of Respondent's preparation to use the Domain Name other than the posting of the "under construction" page.
Complainant contends that it has discovered no evidence suggesting a connection between the individual named in the WhoIs information for the Domain Name and the term "Afton," or the phrase "Afton Chemical", and that further, the term "Afton" is not a common term with generic or descriptive meaning in any industrial or business application of which Complainant is aware. Complainant does not use Complainant's Marks in a generic or descriptive sense, Complainant is not located in any of the geographic locations called "Afton," and "Afton" does not have any meaning in Complainant's industry. Complainant argues that "Afton" is an entirely arbitrary word for its goods and services, and therefore, the Domain Name is not one that Respondent would tend to legitimately choose. Complainant alleges that Respondent registered the Domain Name seeking to create an impression of association with Complainant, seeking to offer the Domain Name for sale to Complainant, or seeking to prevent Complainant from reflecting Complainant's Marks in a corresponding domain name.
Complainant further submits that Respondent should be held to have had actual or constructive knowledge of Complainant's rights in Complainant's Marks, or at least should be held to have been willfully blind to Complainant's rights. Complainant already had significant goodwill and reputation globally when the Domain Name was registered and it is considered to be one of the four largest manufacturers and suppliers in the petroleum additives marketplace.
Complainant contends that the use of the term "chemical," which refers to one of Complainant's fields of activity, reinforces the risk of confusion between the Domain Name and Complainant's Marks, and is further evidence that the Respondent was familiar with the Complainant and registered the Domain Name with the Complainant in mind.
Complainant claims that it has evidence that Respondent has registered a domain name that includes another third party trademark, specifically <lubrizol.co>, which includes the widely-registered trademark LUBRIZOL for chemical compounds additives for lubricants and engine fuels owned by the Lubrizol Corporation of Wickliffe, Ohio, US, a major competitor of Complainant in the fuel and lubricant additives industries. Complainant does not believe that Respondent is affiliated with the Lubrizol Corporation, and suggests that this registration is indicative of a pattern of bad faith registration by Respondent.
Respondent did not reply to Complainant's contentions.
Complainant asserts that it has carried on business under the company name Afton Chemical Corporation since 2004, and that Complainant's Marks (AFTON, AFTON CHEMICAL and AFTON CHEMICAL & Design) are widely used as trademarks and service marks for its products and services, as well as it being its company name. Complainant further asserts that it is well known in the chemical, fuel, oil and industrial additives industries, since at least 2004 and has a multi-billion dollar annual revenue.
Complainant provides clear evidence that it is the owner of Complainant's Marks and that Complainant's Marks are widely known in relation to the above goods and services.
The Panel concludes that Complainant's Marks are exclusively associated with Complainant. It is apparent that by virtue of its long-standing use that an unrelated entity or person using a domain name containing or comprising as a material part Complainant's Marks is likely to lead to members of the public being confused and deceived.
Complainant argues that the Domain Name is visually and aurally identical to Complainant's AFTON and AFTON CHEMICAL trademarks in that the Domain Name incorporates Complainant's AFTON CHEMICAL trade and service mark in its entirety. Further, it contends that the Domain Name is confusingly similar to Complainant's AFTON trademark as the entire AFTON trademark is present in the Domain Name, and the word "Afton" is the dominant portion of the mark that imparts the strongest commercial impression. Finally, Complainant argues that the addition of the generic word "chemical" adds to the confusing similarity between the Domain Name and Complainant's Marks.
The Panel accepts this argument and notes in addition that the Domain Name is at least confusingly similar to Complainant's Marks in so far as it incorporates AFTON in its entirety with the addition of or in conjunction with a completely descriptive element, namely "chemical", which fails to distinguish the Domain Name from Complainant's Marks.
On this basis the Panel finds:
a) Complainant has rights in respect of Complainant's Marks.
b) The Domain Name is identical to or confusingly similar to Complainant's Marks.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
As noted above, Complainant contends that Respondent has been using the Domain Name as a parked website and that when one directs an Internet browser to the Domain Name the page states "under construction". On the basis of this, Complainant contends there is no evidence of Respondent's preparation to use the Domain Name.
This is not a situation where Respondent is actively using the Domain Name to mislead or deceive consumers or potential consumers. Nevertheless, Complainant notes that "Afton" is an entirely arbitrary word for its goods and services, and therefore, questions why Respondent chose the Domain Name. Instead, Complainant alleges that Respondent registered the Domain Name seeking to create an impression of association with Complainant, seeking to offer the Domain Name for sale to Complainant, or seeking to prevent Complainant from reflecting Complainant's Marks in a corresponding domain name.
All of these allegations might be inferred from the circumstances. Equally, Respondent could have filed a response explaining why it chose the Domain Name, thereby refuting the assertions made by Complainant. It has however chosen to remain silent. Under the circumstances and based on the submissions made by Complainant. The Panel considers it reasonable and appropriate to draw an inference that Complainant has established to the requisite degree that Respondent lacks necessary rights or legitimate interests. Alternatively, it is difficult to see how, under the circumstances, Respondent's conduct could be characterized as legitimate and thus permissible.
On this basis, the Panel finds that Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met.
Having reached the view that Complainant has established, to the requisite level, that Respondent lacks rights or legitimate interests in the Domain Name, in the absence of any explanation from Respondent the Panel finds that it registered and used the Domain Name in bad faith. That is, so as to take advantage of Complainant's Marks and Complainant's reputation. The Panel cannot conceive of any plausible actual or contemplated active use of the Domain Name that would not be illegitimate.
Further, the Panel is satisfied that bad faith registration is supported by the fact that Complainant's Marks significantly pre-date Respondent's registration of the Domain Name, and in light of the long-established use and the protection of Complainant's Marks that Respondent knew or ought to have known of Complainant's prior rights.
The Panel thus has no difficulty in concluding that the third element of the Policy has been 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 <aftonchemical.asia> be transferred to Complainant.
Clive L. Elliott QC
Sole Panelist
Date: October 16, 2014