Alpha Industries, Inc. d/b/a Sigma Plastics Group v. Private Registrations Aktien Gesellschaft 3
Claim Number: FA1111001413998
Complainant is Alpha Industries, Inc. d/b/a Sigma Plastics Group (“Complainant”), represented by Peter E. Nussbaum of Wolff & Samson PC, New Jersey, USA. Respondent is Private Registrations Aktien Gesellschaft 3 (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sigmaplasticsgroup.com>, registered with Network Solutions, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 2, 2011; the National Arbitration Forum received payment on November 2, 2011.
On November 4, 2011, Network Solutions, LLC. confirmed by e-mail to the National Arbitration Forum that the <sigmaplasticsgroup.com> domain name is registered with Network Solutions, LLC. and that Respondent is the current registrant of the name. Network Solutions, LLC. has verified that Respondent is bound by the Network Solutions, LLC. 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 November 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 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@sigmaplasticsgroup.com. Also on November 4, 2011, the 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 December 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sigmaplasticsgroup.com> domain name is identical to Complainant’s SIGMA PLASTICS GROUP mark.
2. Respondent does not have any rights or legitimate interests in the <sigmaplasticsgroup.com> domain name.
3. Respondent registered and used the <sigmaplasticsgroup.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Alpha Industries, Inc. d/b/a Sigma Plastics Group, is the owner of the SIGMA PLASTICS GROUP mark. Complainant has developed common law rights and ownership of its mark by having used the mark in connection with the manufacture of plastic bags and film for packaging needs.
Respondent, Private Registrations Aktien Gesellschaft 3, registered the <sigmaplasticsgroup.com> domain name on May 8, 2008. The disputed domain name resolves to a website which displays links to third-party websites under headings such as “Sigma Plastic,” “Plastic Bottle,” and “Sheet Plastic.” These links divert users to various third-party websites that provide plastics-related goods and services which compete with those Complainant provides.
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.
Complainant asserts that it has rights in the SIGMA PLASTICS GROUP mark. Although Complainant has not registered its mark with a federal trademark authority, registration of a mark is unnecessary to establish rights in the mark as long as the complainant can demonstrate that its mark has acquired secondary meaning. See 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); see Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”). The Panel will therefore review the evidence Complainant has offered in support of its assertion of common law rights.
Complainant claims that its longstanding use of the SIGMA PLASTICS GROUP mark, coupled with related trademarks and reviews of the company identifying its successes, is enough for the Panel to find common law rights. Complainant alleges that its sixteen-division company, Sigma Plastics Group, was founded in 1978 and is now the largest privately owned plastic bag and film manufacturing group in the United States, employing over 5,000 individuals nationwide. Complainant alleges that its SIGMA PLASTICS GROUP is used as a house mark for all of the goods and services provided by every branch of the company. Though Complainant has not registered its SIGMA PLASTICS GROUP, it claims to have trademark registrations with the United States Patent and Trademark Office (“USPTO”) for related products, such as SIGMA STRETCH (Reg. No. 2,311,942), which is owned by one of Complainant’s subsidiary companies. Complainant’s company, which uses the SIGMA PLASTICS GROUP mark, has been reviewed by a number of sources, and Complainant has provided corresponding supporting evidence. For example, Complainant has been ranked as the 280th largest private company in the United States by Forbes magazine and has been profiled by entities such as Bloomberg Businessweek, Hoovers, and Yahoo! Finance. Given Complainant’s demonstrated continuous use of the SIGMA PLASTICS GROUP mark, as well as its recognition by notable companies, the Panel finds that the SIGMA PLASTICS GROUP mark has acquired secondary meaning sufficient to establish common law rights pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning). The Panel finds that these rights are sufficient for the purposes of Policy ¶ 4(a)(i), even though Respondent is not located in the same country as Complainant. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant continues on to contend that Respondent’s <sigmaplasticsgroup.com> domain name is identical to its SIGMA PLASTICS GROUP mark. The only changes that Respondent made to Complainant’s mark in the disputed domain name are those that are mandatory for domain name construction: the removal of spaces between words and the addition of a generic top-level domain (“gTLD”). Panels have found that neither of these changes negates a finding that the disputed domain name is identical to a mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark). Therefore, the Panel finds that Respondent’s deletion of spaces and the addition of the gTLD “.com” are irrelevant, and Respondent’s <sigmaplasticsgroup.com> domain name is identical to Complainant’s SIGMA PLASTICS GROUP mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Where a complainant has made a prima facie case in support of its allegations, the respondent is given the burden of disproving these claims. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). If, however, Respondent does not submit a Response to the Complaint, the Panel may infer that Respondent lacks rights and legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant). Complainant asserts that Respondent has neither rights nor legitimate interests in the disputed domain name. The Panel finds that this assertion has been supported by Complainant with evidence amounting to a prima facie case. The Panel is left without the benefit of a response from Respondent and thus may infer that Respondent does not have rights or legitimate interests in the <sigmaplasticsgroup.com> domain name. However, the Panel will review the record for information which suggests that Respondent does have such rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent is not and has never been commonly known by the disputed domain name. Panels have held that evidence such as WHOIS records and a complainant’s contentions help panels determine if a respondent is commonly known by a disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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). The WHOIS record for the <sigmaplasticsgroup.com> domain name lists “Private Registrations Aktien Gesellschaft 3” as the domain name registrant. Complainant argues that Respondent has no connection with the SIGMA PLASTICS GROUP mark or company and that Respondent is simply a serial cybersquatter. The Panel finds that the WHOIS record for the <sigmaplasticsgroup.com> domain name and Complainant’s arguments do not suggest that Respondent is commonly known by the disputed domain name. Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the <sigmaplasticsgroup.com> domain name under Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent has not used the disputed domain name for either a bona fide offering of goods or services or a legitimate noncommercial or fair use. Panels have previously held that the use of a disputed domain name to display links to websites that compete with the complainant’s business are used for neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to 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). Complainant has provided the Panel with screenshots of Respondent’s website resolving from the <sigmaplasticsgroup.com> domain name. The images demonstrate that Respondent has been displaying links to Complainant’s competitors in the plastics industry under headings such as “Polyethylene Bags” and “Extruded Plastic.” The Panel finds that Respondent’s display of links to Complainant’s competitors on the disputed domain name is nether a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant suggests that Respondent’s bad faith registration and use of the <sigmaplasticsgroup.com> domain name is clear based upon Respondent’s pattern of bad faith regarding other disputed domain names. Complainant argues that it is aware of forty-one prior UDRP proceedings where the respondent, “Private Registrations Aktien Gesellschaft,” was found to have acted in bad faith and lacked rights or legitimate interests in the disputed domain names. See, e.g., Cargotee Solutions LLC v. Private Registrations Aktien Gesellschaft, Case No. D2011-0812 (WIPO June 17, 2011); see also Archstone Communities LLC v. Private Registrations Aktien Gesellschaft, FA 1390530 (Nat. Arb. Forum, June 30, 2011); see also Scholarship America, Inc. v. Private Registrations Aktien Gesellschaft, FA 1387326 (Nat. Arb. Forum, June 16, 2011). In this proceeding, however, Respondent is identified as “Private Registrations Aktien Gesellschaft 3.” Despite the slight difference in Respondent’s name in this case, Complainant contends that Respondent is the same entity as the registrant in those past cases. Complainant alleges that in each of these prior cases, as in this current proceeding, the respondent used the email “domadmin@privateregistrations.ws,” listed an address in St. Vincent and the Grenadines, and used the disputed domain names in connection with click-through advertising websites. Given the similarity of Respondent’s name with the respondent’s name in these prior cases, as well as the other similarities, the Panel finds that Respondent is the same entity as the prior respondent “Private Registrations Aktien Gesellschaft” and has demonstrated a bad faith pattern of domain name registration regarding the <sigmaplasticsgroup.com> domain name pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
Complainant next argues that Respondent has registered and is using the disputed domain name in order to disrupt the business of Complainant in connection with the SIGMA PLASTICS GROUP mark. Panels have earlier held that registering and using a disputed domain name to present links to the competitors of a complainant is disruptive to the complainant. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors). Respondent displays links to Complainant’s competitors in the plastics industry on its website resolving from the <sigmaplasticsgroup.com> domain name. Given the identical nature of the <sigmaplasticsgroup.com> domain name to Complainant’s SIGMA PLASTICS GROUP mark, some of the Internet users seeking Complainant are certain to instead arrive at Respondent’s <sigmaplasticsgroup.com> domain name. Given that the site is not one which is genuinely affiliated with Complainant, the goodwill of Complainant’s company will be tarnished. Additionally, a percentage of the Internet users that were intending to purchase goods or services from Complainant may instead purchase the services from one of Complainant’s competitors that Respondent links to on the resolving website. The Panel finds that this is highly disruptive to Complainant’s expected business flow pursuant to Policy ¶ 4(b)(iii).
Finally, Complainant argues that Respondent has registered and is using the disputed domain name in order to take advantage of Internet users’ confusion as to the association of Complainant with the <sigmaplasticsgroup.com> domain name and profit from this confusion. The displayed links to Complainant’s competitors, the Panel infers, are a source of profit for Respondent when Internet users click through the links. As has already been established, Internet users seeking Complainant may instead find themselves at the <sigmaplasticsgroup.com> domain name and be confused as to whether the resolving website is in some way affiliated with Complainant. Given that the links displayed are all under headings such as “Plastic Manufacturers” which reflect the goods and services that Complainant provides, the confusion will increase. Operating under the assumption that the <sigmaplasticsgroup.com> domain name’s resolving website is sponsored by or affiliated with Complainant, Internet users will click through the links displayed, thus generating compensation for Respondent’s advertisement of them. The Panel therefore finds that Respondent’s aim in registering and using the disputed domain name was to profit by taking advantage of Internet users’ confusion as to the source, sponsorship, or affiliation of the disputed domain name under Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion."); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sigmaplasticsgroup.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 15, 2011
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