WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sandvik Intellectual Property AB and Seco Tools AB v. Domain Admin, Whois Privacy Corp.

Case No. D2021-3840

1. The Parties

The Complainants are Sandvik Intellectual Property AB and Seco Tools AB, Sweden, represented by SILKA AB, Sweden.

The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.

2. The Domain Names and Registrar

The disputed domain names <pramet.net> and <sandvik-tools.com> are registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2021. On November 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 18, 2021, 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.

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 the Respondent of the Complaint, and the proceedings commenced on November 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2021.

The Center appointed Oleksiy Stolyarenko as the sole panelist in this matter on December 27, 2021. 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

According to the Complaint, the Complainants are Swedish companies and members of a group of companies that are collectively known as the “Sandvik Group”.

The Sandvik Group is a high-tech and global engineering group of companies with approximately 37,000 employees and sales in more than 150 countries. Its operations are based on unique expertise in materials technology, extensive knowledge of industrial processes and close customer cooperation.

The Complainant Sandvik Intellectual Property AB was founded in 1986 to provide services, including intellectual property consultancy services and is a subsidiary of Sandvik AB. The Complainant Sandvik Intellectual Property AB is the owner of the trademarks SANDVIK and SANDVIK COROMANT covering various goods of steel and metal alloys, machines and machine tools, hand tools and parts registered in a number of jurisdictions including the following:

- International Trademark Registration for SANDVIK No. 1039878, registered on February 2, 2010 for the goods and services in classes 6, 7, 8, 9, 10, 11, 12, 14, 37 and 38 designating inter alia the Russian Federation;

- International Trademark Registration for SANDVIK COROMANT and design No. 1160354, registered on January 14, 2013 for the goods and services in classes 6, 7, 8, 9, 35, 37, 40, 41 and 42 designating inter alia the Russian Federation;

- International Trademark Registration for SANDVIK COROMANT and design No. 1337878, registered on November 25, 2016 for the goods in classes 7 and 9 designating inter alia the Russian Federation.

The Complainant Seco Tools AB is one of the world’s largest providers of comprehensive metal cutting solutions for milling, stationary tools, holemaking and tooling systems. In 2012, the Complainant Seco Tools AB became a wholly owned part of the Sandvik Group, operating as part of its Sandvik Machining Solutions business area. Today, the Complainant Seco Tools AB operates in more than 75 countries, continuing to build upon its rich history of supplying manufacturers with the solutions needed to optimize their productivity. The Complainant Seco Tools AB is the owner of the trademark PRAMET covering various goods of steel and metal alloys, dies with hard carbides, machine tools, hand tools and parts registered in a number of jurisdictions including the following:

- International Trademark Registration for PRAMET No. 367748A, registered on April 6, 1970 for the goods in classes 3, 6, 7, 8, 9 and 17 designating inter alia the Russian Federation;

- International Trademark Registration for PRAMET and design No. 1165872, registered on May 13, 2013 for the goods in classes 6, 7 and 8 designating inter alia the Russian Federation.

The Complainants own a number of domain names under generic Top-Level Domains (“gTLDs”) and country-code Top-Level Domains (“ccTLDs”) containing the terms “pramet” and “sandvik”, including <sandviktool.com> registered on November 11, 2018, <sandvikcoromant.com> registered on May 4, 2005, <sandvik-coromant.ru> registered on July 4, 2019, <pramet.ru> registered on July 15, 2003, and <pramet.com> registered on May 13, 1999. The Complainants use these domain names to connect to websites through which they informs potential customers about their trademarks, products and services.

The Respondent appears to be a privacy or proxy service based in Bahamas. According to the WhoIs, the disputed domain name <pramet.net> was registered in the name of the Respondent on February 11, 2020. The disputed domain name <sandvik-tools.com> was registered in the name of the Respondent on April 7, 2021. The disputed domain names resolve to active websites in Russian with the similar design prominently depicting SANDVIK, SANDVIK COROMANT and PRAMET marks respectively and purportedly offering the Complainants’ products for sale. The websites also contain catalogs of the Complainants’ products with the promise to deliver products from warehouses in the Russian Federation or the European Union. The websites are supplemented with the copyright notices in Russian translating as “2003 All rights reserved ‘SANDVIK COROMANT’” and “2003 All rights reserved ‘PRAMET’” respectively. The websites also promote third party products that compete with the Complainants.

5. Parties’ Contentions

A. Complainants

The Complainants contend that they have rights in the SANDVIK, SANDVIK COROMANT and PRAMET marks by virtue of longstanding use and registration of the marks in a number of jurisdictions around the world, including in the Russia Federation. The Complainants also note that they enjoy a high degree of renown around the world, including in the Russian Federation due to extensive use, advertising, and revenue associated with their marks.

The Complainants argue that the disputed domain names are identical or confusingly similar to the Complainants’ SANDVIK and PRAMET marks as the disputed domain names incorporate the Complainants’ registered marks entirely. While disputed domain name <sandvik-tools.com> contains the generic word “tools” it does nothing to alleviate any confusing similarity between the Complainant’s SANDVIK mark and the disputed domain name.

The Respondent has no rights or legitimate interests in the disputed domain names.

The Complainants have not authorized the Respondent to use the SANDVIK, SANDVIK COROMANT and PRAMET marks in the disputed domain names, along with reproduction of these trademarks on the websites to which the disputed domain names resolve.

The Respondent is not involved in the bona fide offering of goods or services within the meaning of paragraph 4(c) of the Policy.

The Respondent is not commonly known by the disputed domain names.

The Respondent was fully aware of the Complainants’ reputation and the Complainants’ trademark rights in the SANDVIK, SANDVIK COROMANT and PRAMET trademarks when the Respondent registered the disputed domain names.

The Respondent used a privacy shield to register the disputed domain names. Although the use of a privacy or proxy service is not in itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith.

The Respondent is using the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of its websites, and therefore, the disputed domain names have been registered and are being used in bad faith.

The Complainants seek a decision that the disputed domain names be transferred to the Complainants.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

A. Consolidation of the Complainants

The Complainants have brought a single consolidated Complaint against the Respondent. Section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states the following with respect to a single complaint brought by multiple complainants: “Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. […] In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.”

There is sufficient evidence to support a consolidation of the Complainants. The Complainants are part of the same group of companies and share a common legal interest and grievance against the Respondent, and the Respondent has engaged in common conduct that has affected the Complainants’ rights in a similar fashion. Because of the similarity of the issues raised concerning the disputed domain names, consolidation of the Complainants would be equitable and procedurally efficient.

B. Identical or Confusingly Similar

The Complainants proved their rights in the SANDVIK, SANDVIK COROMANT and PRAMET trademarks through international registrations designating numerous countries worldwide including the Russian Federation, and also through national trademark registrations registered in various countries of the world.

Therefore, the Panel considers that the Complainants have satisfied the threshold requirement of having relevant trademark rights.

The disputed domain name <sandvik-tools.com> is comprised of the words “sandvik” and “tools” combined with the gTLD “.com”. Thus, the Panel finds that the disputed domain name incorporates the Complainants’ SANDVIK trademark entirely. Therefore, the Panel considers that the disputed domain name <sandvik-tools.com> is confusingly similar to the Complainants’ the SANDVIK trademark. Further, the Panel notes that the addition of the dictionary word “tools” and a hyphen to the Complainants’ SANDVIK trademark in the disputed domain name does not prevent the Complainants’ SANDVIK trademark from being recognizable in the disputed domain name. Previous UDRP panels have consistently held that the addition of a descriptive term or a hypen to a domain name that incorporates a trademark in its entirety does not prevent a finding of confusing similarity. See LEGO Juris A/S v. DBA David Inc/ DomainsByProxy.com, WIPO Case No. D2011-1290.

The disputed domain name <pramet.net> is identical to the Complainants’ PRAMET mark combined with the gTLD “.net”.

The gTLD is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0. Therefore, the Panel disregards the gTLDs for the purposes of this comparison with respect to the disputed domain names.

For all the foregoing reasons, the Panel finds that the first element of paragraph 4(a) of the Policy has therefore been satisfied by the Complainants with respect to both disputed domain names.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the complainant to establish that the respondent has no rights or legitimate interests in the domain name. Once the complainant establishes a prima facie case against the respondent under this ground, the burden of production shifts to the respondent to rebut it. See section 2.1 of the WIPO Overview 3.0. According to the Complainants, the Respondent is not authorized or licensed to use the SANDVIK, SANDVIK COROMANT, and PRAMET marks or to use them to register any domain names. In this case, the Respondent did not rebut the Complainants’ prima facie case regarding the lack of rights or legitimate interests.

However, the overall burden of proof remains with the Complainant. Paragraph 4(c) of the Policy provides circumstances that demonstrate the respondent’s rights or legitimate interests to the disputed domain name, and that the complainant frequently addresses to show that the activities of the respondent does not fall under the bona fide offering of goods or services (paragraph 4(c)(i) of the Policy), that the respondent is not commonly known by the disputed domain name (paragraph 4(c)(ii) of the Policy), and that the respondent is not involved in a legitimate noncommercial or fair use of the disputed domain name (paragraph 4(c)(iii) of the Policy).

The Panel finds that the nature of the disputed domain names <sandvik-tools.com> and <pramet.net> carries a risk of implied affiliation with the Complainants because the disputed domain names effectively impersonate or suggest sponsorship or endorsement by the Complainants. See section 2.5.1 of the WIPO Overview 3.0.

Furthermore, the disputed domain names resolve to websites displaying the SANDVIK, SANDVIK COROMANT, and PRAMET marks and logos without any accurate and prominent disclaimer regarding the Respondent’s relationship with the Complainants, and purportedly offering the Complainants’ products for sale. The websites also promote products from third parties that compete with the Complainants. Therefore, the Panel finds that the Respondent’s use of the disputed domain names can not be characterized as “bona fide” as it fails to satisfy at least criteria 2 and 3 set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, namely (ii) the respondent must use the site to sell only the trademarked goods or services, and (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder.

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain names, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Therefore, the Panel finds that the Respondent is not involved in a bona fide offering of goods or services (under paragraph 4(c)(i) of the Policy) and the Respondent’s activities do not fall under a legitimate noncommercial or fair use (under paragraph 4(c)(iii) of the Policy).

The Panel also does not find any evidence on record showing that the Respondent is commonly known by the disputed domain names. The Panel therefore concludes that the Respondent is not commonly known by the disputed domain names under paragraph 4(c)(ii) of the Policy.

Thus, the Panel finds that the Complainants have satisfied the second element of the Policy, namely paragraph 4(a)(ii).

D. Registered and Used in Bad Faith

As established above, the Complainants’ SANDVIK, SANDVIK COROMANT, and PRAMET trademarks were widely used in commerce well before the registration of the disputed domain names <pramet.net> on February 11, 2020 and <sandvik-tools.com> on April 7, 2021.

The Panel finds that the Respondent knew of the Complainants’ SANDVIK, SANDVIK COROMANT, and PRAMET trademarks when registering the disputed domain names. This conclusion is supported by the facts that the disputed domain names are identical or confusingly similar to the Complainants’ trademarks, and that the disputed domain names are linked to websites prominently displaying the Complainants’ trademarks and logos. Moreover, the websites purportedly offer for sale the Complainants’ products and even contain the copyright notices in Russian translating as “2003 All rights reserved ‘SANDVIK COROMANT’” and “2003 All rights reserved ‘PRAMET’” respectively. The websites also promote products from third parties that compete with the Complainants.

The Panel finds here that the Respondent’s intention of registering and using the disputed domain names is to intentionally attract, for commercial gain, Internet users to the websites at the disputed domain names by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the websites or of a product or service on the websites (see paragraph 4(b)(iv) of the Policy).

In this case, the Panel also concludes that the Respondent’s use of a privacy or proxy service supports an inference of bad faith. See section 3.6 of the WIPO Overview 3.0. Further, the Responded has failed to submit a Response or provide any evidence of good-faith use of the disputed domain names or to show rights or legitimate interests in the disputed domain names.

Therefore, under the totality of the circumstances of this case, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith and that the Complainants consequently have satisfied the third element of the Policy, namely, paragraph 4(a)(iii).

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 names <sandvik-tools.com> and <pramet.net> be transferred to the Complainants.

Oleksiy Stolyarenko
Sole Panelist
Date: January 10, 2022