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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arconic Inc. v. Toloo Trading

Case No. D2019-2189

1. The Parties

Complainant is Arconic Inc., United States of America (“United States”), represented by Greenberg Traurig, LLP, United States of America.

Respondent is Toloo Trading, United States.

2. The Domain Name and Registrar

The disputed domain name <reynobond.net> (the “Domain Name”) is registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2019. On September 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2019, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 8, 2019.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on October 16, 2019. 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

Complainant, is a specialized manufacturer of lightweight metals engineering and manufacturing for the automotive, aerospace, commercial transportation, packaging, construction, and defense industries. Complainant’s predecessor company, Alcoa, was founded in 1888 and was renamed as Arconic, Inc. in 2016. Complainant is today a publicly traded company on the New York Stock Exchange with USD 14 billion in revenue and 41,000 employees worldwide as of 2018.

Complainant manufactures and markets aluminum composite panels under the REYNOBOND mark (the “Mark”) and owns numerous registrations for the Mark, including United States trademark registration No. 1506804 for REYNOBOND, registered on October 4, 1988 for “aluminum composite panels having an aluminum skin and a plastic core for use in the construction industry” in class 6. Complainant operates its website at “www.reyonbond.com” and owns numerous related domain names.

The Domain Name, <reynobond.net>, was registered on July 25, 2017. It currently resolves to an inactive website. The case materials contain screenshots of the previous website which prominently features Complainant’s Mark and purports to offer “Reynobond” products for sale.

In July and August of 2019, prior to commencing this proceeding, Complainant sent cease-and-desist letters by mail to the email address visible on Respondent’s website and to an email address revealed by the registrar requesting that Respondent cease use of the Domain Name, destroy materials containing the Mark, and transfer the Domain Name to it. Respondent did not reply.

5. Parties’ Contentions

A. Complainant

Complainant’s submissions may be summarized as follows:

Under the first element, Complainant alleges that it has rights in the REYNOBOND mark based on trademark registrations worldwide dating from 1988. In addition, Complainant operates websites under domain names including <reynobond.com>. To Complainant’s knowledge, no other person or entity in the United States or anywhere else has the legal right to use any marks that include or are confusingly similar to Complainant’s Mark without a license from Complainant. The Domain Name is identical to Complainant’s Mark with the addition of the generic Top-Level Domain (“gTLD”) “.net” after the Mark. Therefore, the Domain Name is identical similar to Complainant’s Mark and its domain names.

Under the second element, Complainant alleges that Respondent registered the Domain Name long after Complainant established rights in its Mark. Respondent “Tooloo Trading” is not commonly known by the Domain Name, has not used or prepared to use the Doman Name in connection with a bona fide offering of goods or services, nor has Complainant authorized Complainant to register and/or use the Domain Name. Respondent has never operated any bone fide or legitimate business under the Domain Name, since Respondent is using the Domain Name to host a website impersonating Complainant. The website displays Complainant’s Mark along with the logo of Alcoa Corp., an entity related to Complainant. The website identifies its owner as “ReynoBond, Inc,” yet Complainant has been unable to identify any company registered under that name. The contact information on the website displays “Reyno Industrial Co.” of Tehran, Iran. The content of the website leads to the conclusion that Respondent has created the website for fraudulent purposes, which could be setting counterfeit goods, charging clients for products that will not be delivered, or phishing for personal information. Such actions demonstrate that Respondent lacks rights or legitimate interests in the Domain Name.

Under the third element, Complainant alleges that Respondent registered and is using the Domain Name in bad faith. Respondent had actual knowledge of Complainant’s Mark when registering the Domain Name, which was chosen deliberately as it is identical to a famous trademark of a well-known company. Further, Respondent had constructive knowledge of Complainant’s Mark through the trademark registrations of the Mark. Respondent’s bad faith use of the Domain Name is clear, as Respondent used the Domain Name to redirect users to a website that prominently displays Complainant’s famous trademarks, which is used to charge consumers for services they will never receive or to steal their personal or company information. Such use may also be considered as disrupting the business of a competitor. Complainant is not aware of any use of Complainant’s Mark in the United States or anywhere in the world other than in connection with Complainant and its products, and the use of Complainant’s Mark on Respondent’s website obviously refers to Complainant. Such use is opportunistic bad faith. Finally, Respondent failed to reply to Complainant’s cease and desist letters.

Complainant requests transfer of the Domain Name.

B. Respondent

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

6. Discussion and Findings

Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(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 in respect of the Domain Name; and

(iii) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the Mark, through trademark registrations in the United States and numerous other countries and longstanding use of the Mark, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.

In comparing Complainant’s Mark with the Domain Name, the Panel finds that the Domain Name wholly incorporates and is therefore confusingly similar to Complainant’s Mark. It is the well-established view of UDRP panels that the addition of a gTLD to the Domain Name does not prevent the Domain Name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. The Panel finds that there is no evidence that Respondent is commonly known by the Domain Name or is using the Mark with permission of Complainant. Rather, the case materials contain Complainant’s letters to Respondent expressly stating that such permission does not exist. Complainant’s rights in the Mark predate the registration of the Domain Name by many years.

The circumstances and evidence indicate that Respondent has no rights or legitimate interests in the Domain Name. The nature of the Domain Name (which is identical to Complainant’s Mark) cannot constitute fair use because it effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner (see WIPO Overview 3.0, section 2.5.1). Further, the evidence presented clearly demonstrates that the Domain Name was used by Respondent to operate a website prominently featuring Complainant’s Mark and the trademark of Alcoa Corp, a related entity. Such a use cannot support a finding of rights or legitimate interests in the Domain Name (see WIPO Overview 3.0, section 2.13.1 and cases cited).

Once Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy showing that Respondent has no rights or legitimate interests in the Domain Name, the burden of production shifts to Respondent (see, for example, L’Oréal v. Zhao Jiafei, WIPO Case No. D2015-1458). Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the Domain Name.

The Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the evidence in the record demonstrates that Respondent chose the Domain Name deliberately for the purpose of impersonating Complainant. Complainant’s rights in the Mark predate the registration of the Domain Name. The Mark is highly distinctive in respect of the goods for which it is registered and used. The Domain Name contains Complainant’s Mark in its entirety, without any alteration whatsoever. There can be no doubt that Respondent registered the Domain Name in full awareness of Complainant’s Mark.

The evidence also demonstrates that Respondent used the Domain Name in bad faith. The fraudulent website operated by Respondent incorporate the Domain Name and Complainant’s Mark, including images of aluminum composite products purportedly manufactured by Complainant. Complainant credibly asserts that said products, if they exist, are counterfeit, and that the “Reynobond” entities listed do not exist. In the view of the Panel, such circumstances, taken together, clearly indicate that Respondent used the Domain Name in bad faith.

Additional circumstances further support a finding of bad faith: Respondent’s failure to respond to Complainant’s cease and desist letters and Respondent’s failure to file a substantive response to the Complaint (see WIPO Overview 3.0, section 3.1.1).

The Panel finds that Complainant has established the third element under paragraph 4(a) of the Policy.

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 <reynobond.net> be transferred to the Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: October 30, 2019

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