national arbitration forum

 

DECISION

 

EM Plastic & Electric Products Limited v. Milan Kovac

Claim Number: FA1104001382968

 

PARTIES

Complainant is EM Plastic & Clectric Products Limited (“Complainant”), represented by Frank Farfan of MacBeth & Johnson, Canada.  Respondent is Milan Kovac (“Respondent”), Slovakia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <emplastics.com>, registered with HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 11, 2011; the National Arbitration Forum received payment on April 27, 2011.  The Complaint was submitted in both Slovak and English.

 

On Apr 29, 2011, HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM confirmed by e-mail to the National Arbitration Forum that the <emplastics.com> domain name is registered with HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM and that Respondent is the current registrant of the names.  HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM has verified that Respondent is bound by the HEBEI GUOJI MAOYI (SHANGHAI) LTD DBA HEBEIDOMAINS.COM registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On May 2, 2011, the Forum served the Slovak language Complaint and all Annexes, including a Slovak language Written Notice of the Complaint, setting a deadline of May 23, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@emplastics.com.  Also on May 2, 2011, the Slovak language Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On June 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Slovak language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <emplastics.com> domain name is confusingly similar to Complainant’s EM PLASTIC mark.

 

2.    Respondent does not have any rights or legitimate interests in the <emplastics.com> domain name.

 

3.    Respondent registered and used the <emplastics.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, EM Plastic & Electric Products Limited, is a Canadian company offering a wide array of plastic products.  Complainant has been operating under the EM PLASTIC mark for over 40 years.  Complainant uses the EM PLASTIC mark to market and promote its plastics business.

 

            Respondent, Milan Kovac, registered the disputed domain name on May 6,

2010.  The disputed domain name resolves to a site offering links to Complainant’s competitors.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Under Policy ¶ 4(a)(i), the Complainant is required to establish its rights in the mark to successfully pursue a claim.  Prior panels have determined that it is not a requirement that Complainant have trademark registrations for the mark to establish those rights.  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).  Therefore, the Panel finds that Complainant’s lack of a registered trademark does not prohibit a finding of rights in the mark as long as Complainant can establish its common law rights in the mark under Policy ¶ 4(a)(i).

 

Complainant claims that it has established its rights in the EM PLASTIC mark via continuous use over the last 40 years in direct support of its business.  Complainant has offered ample evidence in the form of lease agreements, old publications, photographs of the factory, newsletters, and other advertising information to show that it has used the EM PLASTIC mark over the last four decades in support of and to market and promote is business.  Therefore, the Panel finds that Complainant has established its common law rights in the mark under Policy ¶ 4(a)(i) by using it continuously over the last 40 years in direct relation to its business.  See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).

 

Complainant also claims that the disputed domain name is confusingly similar to its own EM PLASTIC mark.  Respondent’s <emplastics.com> domain name contains the entire mark while adding the letter “s” and the generic top-level domain (“gTLD”) “.com” and removing a space.  The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s EM PLASTIC mark under Policy ¶ 4(a)(i) because the changes made do not sufficiently differentiate the two.  See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).

 

The Panel finds that Policy ¶ 4(a)(i) has been established.

 

Rights or Legitimate Interests

 

Respondent now bears the onus of proving its rights or legitimate interests in the disputed domain name because the Panel finds that Complainant has met its prima facie burden thereby shifting the burden to Respondent.  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”).  Respondent has failed to file a response in this matter which allows the Panel to assume that Respondent lacks rights or legitimate interests in the disputed domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  However, the Panel will still examine the record in its entirety to make a determination regarding Respondent’s rights or legitimate interests in the disputed domain name according to the factors enumerated in the Policy ¶ 4(c).

 

Complainant posits that Respondent is not commonly known by the disputed domain name.  Respondent has offered no evidence to support a finding a that it is commonly known by the disputed domain name.  The WHOIS information identifies the registrant of the <emplastics.com> domain name as “Milan Kovac.”  The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and the lack of other evidence on the record.  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

Complainant also claims that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <emplastics.com> domain name.  Respondent’s disputed domain name resolves to a website offering links to Complainant’s competitors.  Respondent presumably profits from this arrangement by collecting click-through fees.  The Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <emplastics.com> domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).  See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).

  The Panel finds that Policy ¶ 4(a)(ii) has been established.

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent’s disputed domain name disrupts its business constituting bad faith registration and use.  Respondent’s <emplastics.com> domain name resolves to a site offering links to Complainant’s competitors.  Internet users might click on one of the links resolving to a competitors site and then purchase goods from a competitor rather than Complainant.  The Panel finds that this does disrupt Complainant business under Policy ¶ 4(b)(iii) providing affirmative evidence of bad faith registration and use.  See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site.  The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Complainant also alleges that Respondent is gaining commercially from the use of the confusingly similar domain name constituting bad faith registration and use.  Respondent’s disputed domain name resolves to a site offering links to third-party websites.  Many of those websites resolve to Complainant’s competitors.  Respondent presumably collects a click-through fee for each Internet user diverted to the linked sites.  The Panel finds that Respondent is gaining commercially from the confusingly similar domain name constituting bad faith registration and use under Policy ¶ 4(b)(iv).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).

 

The Panel finds that Policy ¶ 4(a)(iii) has been established.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <emplastics.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  June 6, 2011

 

 

 

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