The Complainant is SSAB Technology AB of Stockholm, Sweden, represented by Gün & Partners, Turkey.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”)/ Seyfettin Polat of Kiziltoprak, Turkey.
The disputed domain name <hardoxsac.com> is registered with Wild West Domains, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2016. On July 4, 2016, the Center transmitted to the Registrar by email, a request for registrar verification in connection with the disputed domain name. On July 5, 2016, 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 of the Respondent. The Complainant filed an amended Complaint on July 14, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2016.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on August 21, 2016. 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.
SSAB Technology AB, the Complainant, is a Swedish company. It is a major manufacturer of steel and steel products, with factories in Sweden, Finland and United States. The Complainant also has the capacity to process and finish steel products in China and other countries and employs approximately 17,300 people in 50 countries.
The Complainant is the owner of numerous trademarks under the sign HARDOX, including:
- International Trademark HARDOX No. 838917, registered on November 5, 2004, duly renewed and covering goods in class 6; and
- Turkish Trademark HARDOX + logo No. 153519, registered on July 4, 1994, duly renewed and covering goods in class 6.
The disputed domain name <hardoxsac.com> was registered on August 20, 2007 and renewed on June 9, 2016. The Respondent registered the disputed domain name using a privacy protection service.
The disputed domain name redirects to the website “www.seyfettinpolat.com.tr” operated by the Respondent.
Firstly, the Complainant contends that the disputed domain name is confusingly similar to its HARDOX trademarks.
The Complainant argues that the only difference between the protected and widely known trademarks is the addition of a descriptive term “sac” meaning “steel plate” in Turkish, which does not prevent a confusing similarity since this term refers precisely to the products manufactured by the Complainant.
Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests relating to the disputed domain name.
According to the Complainant, the Respondent has no relationship with the Complainant and has never been granted any authorization or license to use its trademark HARDOX.
The Complainant also asserts that the Respondent does not use the disputed domain name <hardoxsac.com> in connection with a bona fide offering of goods or services and uses the Complainant’s trademark HARDOX to attract customers to the Respondent’s website.
Moreover, the Complainant argues that the Respondent has not been commonly known by the disputed domain name whereas the Complainant has widely promoted its trademark HARDOX which is also a central feature of the Complainant’s website and is closely associated with the Complainant.
The Complainant indicates that the Respondent does not make a legitimate noncommercial or fair use of the disputed domain name <hardoxsac.com>.
Thirdly, regarding the criteria of bad faith, the Complainant contends that due to the reputation of the Complainant and the widely known HARDOX trademarks, the global presence and extensive use, the Respondent must have been aware of the existence of the HARDOX trademark prior to the registration of the disputed domain name.
Furthermore, according to the Complainant, the disputed domain name redirects to another website “www.seyfettinpolat.com.tr” owned by the Respondent, where steel products under the Complainant’s trademarks including HARDOX are proposed for sale without any authorization.
In respect of these elements, the Complainant argues that the Respondent has registered the disputed domain name for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant or to the competitors of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name.
Therefore, the Complainant requests the Panel to order that the disputed domain name <hardoxsac.com> be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions and is therefore in default.
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Respondent did not reply to the Complainant’s 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 consensus view of UDRP panelists is that a respondent’s default does not automatically result in a decision in favor of the complainant. Although, the Panel may draw appropriate inferences from the respondent’s default, paragraph 4 of the UDRP requires the Complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.
Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, the Complainant shall prove the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
At the same time, in accordance with paragraph 14 of the Rules:
(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel finds that in this case, there are no such exceptional circumstances. Consequently, failure on the part of the Respondent to file a response to the Complaint permits an inference that the Complainant’s reasonable allegations are true. It may also permit the Panel to infer that the Respondent does not deny the facts that the Complainant asserts (see Harrods Limited v. Harrod’s Closet, WIPO Case No. D2001-1027; see also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Two requirements must be satisfied under the first element of the Policy. Firstly, the Complainant must prove that it has rights in a trademark and secondly that the disputed domain name is identical or confusingly similar to this trademark.
The Complainant has demonstrated that it owns valid HARDOX trademarks, registered throughout the world, including in Turkey where the Respondent is located.
The Panel therefore turns to the second requirement.
Previous UDRP panels have held that when a domain name incorporates entirely a complainant’s registered trademark, this fact might be sufficient to establish confusing similarity for purposes of the Policy (see, e.g., RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059; Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; Hoffmann-La Roche Inc., Roche Products Limited v. Vladimir Ulyanov, WIPO Case No. D2011-1474).
In the present case, the disputed domain name entirely reproduces the HARDOX trademark which has no particular meaning and is therefore highly distinctive.
Besides, the HARDOX sign is followed by the generic term “sac” meaning “steel plate” in Turkish, which is not sufficient to dispel the likelihood of confusion. On the contrary, the addition of this generic term enhances the risk of confusion, as it refers to the products associated to the Complainant’s business activity promoted under the trademark HARDOX.
It is well established that generic Top-Level Domains such as “.com” are typically disregarded in asserting whether or not the disputed domain name is identical or confusingly similar to a complainant’s trademark (see, e.g., Diamonique Corporation v. Foley Services, WIPO Case No. D2007-0893).
In view of the above, the Panel considers that the Complainant has proven that the disputed domain name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name.
Prior UDRP panels have stated that it is sufficient that the complainant shows a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see, e.g., Crédit Industriel et Commercial S.A. v. Zabor Mok, WIPO Case No. D2015-1432).
In the present case, the Complainant has not authorized, licensed or permitted the Respondent to register or use the disputed domain name or to use the HARDOX trademark. Moreover, there is no business relationship between the Complainant and the Respondent. Also, the Respondent is not commonly known under the HARDOX sign. There is no evidence that the Respondent has used or is using such term in connection with a bona fide offering of goods or services.
Furthermore, the Respondent’s name does not bear any resemblance to the disputed domain name nor is there any basis to conclude that the Respondent is commonly known by the HARDOX trademark or the disputed domain name.
Consequently, the Panel concludes that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name and the condition of paragraph 4 (a)(ii) of the Policy has been fulfilled.
Paragraph 4(a)(iii) of the Policy requires that the Complainant must also prove that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that are evidence of registration and use of a domain name in bad faith.
As stated above, the disputed domain name fully incorporates the Complainant’s HARDOX trademark without any authorization.
The Complainant’s trademark rights on the HARDOX sign preceded the registration of the disputed domain name by several years.
The disputed domain name is redirected to a website operated by the Respondent and promoting the business related to the steel products. It is obvious that by the registration and use of the disputed domain name the Respondent seeks to associate its commercial activity to the Complainant’s trademark, by suggesting that the Respondent is an authorized distributor of the Complainant’s products.
By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website. Accordingly, the requirement under paragraph 4(b)(iv) of the Policy has been satisfied.
Moreover, the Respondent originally registered the disputed domain name under a Whois proxy service.
Although using privacy services alone is not accepted as an element of bad faith, it has been found by many UDRP panels that such usage, in conjunction with other factors, may indicate bad faith (see, e.g., WSFS Financial Corporation v. Private Registrations Aktien Gesellschaft 2, WIPO Case No. D2012-0033). In the present case, the Respondent’s use of a privacy service to register the disputed domain name is additional evidence of the Respondent’s bad faith.
Finally, the Complainant has sent a cease and desist letter to the Respondent but no reply has been received, which also constitutes an additional evidence of the Respondent’s bad faith.
Consequently, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith and the condition of paragraph 4(a)(iii) of the Policy has been fulfilled.
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 <hardoxsac.com> be transferred to the Complainant.
Nathalie Dreyfus
Sole Panelist
Date: August 26, 2016