Mitsubishi Plastics, Inc. v. Privacy / Privacy
Claim Number: FA1612001705628
Complainant is Mitsubishi Plastics, Inc. (“Complainant”), represented by Douglas M Isenberg of The Giga Law Firm, Douglas M Isenberg, Attorney at Law, LLC, Georgia, USA. Respondent is Privacy / Privacy (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alpolic.us>, registered with Realtime Register B.V.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 2, 2016; the Forum received payment on December 2, 2016.
On December 5, 2016, Realtime Register B.V. confirmed by e-mail to the Forum that the <alpolic.us> domain name is registered with Realtime Register B.V. and that Respondent is the current registrant of the name. Realtime Register B.V. has verified that Respondent is bound by the Realtime Register B.V. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 5, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2016 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@alpolic.us. Also on December 5, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 Forum transmitted to the parties a Notification of Respondent Default.
On January 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for usTLD 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 usTLD Policy, usTLD Rules, the 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
Complainant has rights in the ALPOLIC mark pursuant to trademark registrations held with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,380,058, registered Jan. 28, 1986) and around the world. Respondent’s <alpolic.us> is identical to the ALPOLIC mark because it takes the entire mark and merely adds the “.us” country-code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in <alpolic.us>. Respondent is not commonly known by <alpolic.us> under Policy ¶ 4(c)(iii), and has not been granted license or authorization by Complainant to use the ALPOLIC mark. Respondent is not the owner or beneficiary of any trade or service mark that is identical to <alpolic.us> under Policy ¶ 4(c)(i). Respondent has not engaged in any bona fide offering of goods or services or any legitimate noncommercial or fair use through the domain name under Policy ¶¶ 4(c)(ii) and (iv). Instead, Respondent uses the domain name to resolve to a website that falsely appears to be a website arranged by Complainant.
Respondent registered or used <alpolic.us> in bad faith. Respondent has also registered <alpoliciran.com> and <alpolic-iran.com>, which are the subject of a pending proceeding under the UDRP, WIPO Case No. 2016-2387 (filed Nov. 25, 2016). This imputes a bad faith pattern of domain name registrations per Policy ¶ 4(b)(ii). Next, Respondent’s use of the disputed domain name to pass itself off as Complainant – using Complainant’s mark and logo – disrupts the business of Complainant and is likely arranged for the purpose of confusing Internet users from which Respondent profits. See generally Policy ¶¶ 4(b)(iii)–(iv). Further, Respondent had at least constructive notice of Complainant and its rights in the ALPOLIC mark when registering or using the disputed domain name, demonstrating bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Mitsubishi Plastics, Inc., is a Japanese corporation that was established in 1943 and is engaged in the manufacture and sale of plastic products. One of the consolidated subsidiary companies within Complainant’s corporate structure is Alpolic Corp., which is one of the world’s leading manufacturers of composite materials made of aluminum and plastic. Complainant has rights in the ALPOLIC mark registration with the USPTO (Reg. No. 1,380,058, registered Jan. 28, 1986) and around the world. Respondent’s <alpolic.us> is identical to the ALPOLIC mark.
Respondent, Privacy / Privacy, registered the <alpolic.us> domain name on September 18, 2011.
Respondent has no rights or legitimate interests in <alpolic.us>. Respondent uses the domain name to resolve to a website that has a home page nearly identical to Complainant’s and a logo similar to Complainant’s logo, and offers for
sale competing aluminum composite panels.
Respondent registered and uses the <alpolic.us> domain name in bad faith.
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."
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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(f), 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 (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.”).
Complainant has rights in the ALPOLIC mark under Policy ¶ 4(a)(i) through registrations with the USPTO and around the world. See Intel Corp. v. Macare, FA 660685 (Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Respondent’s <alpolic.us> is identical to the ALPOLIC mark under Policy ¶ 4(a)(i) because it takes the entire mark and merely adds the “.us” ccTLD.
Respondent has no rights or legitimate interests in <alpolic.us>. Complainant has not authorized Respondent to use the ALPOLIC mark. Respondent is not commonly known by <alpolic.us> under Policy ¶ 4(c)(iii). The WHOIS information lists “Privacy / Privacy” as registrant of the domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Respondent does not own any trade or service mark that is identical to <alpolic.us> under Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Respondent has not engaged in a bona fide offering of goods or services or a legitimate noncommercial or fair use through the <alpolic.us> domain name under Policy ¶¶ 4(c)(ii) and (iv). Instead, Respondent uses the domain name to resolve to a website that has a home page nearly identical to Complainant’s and a logo similar to Complainant’s logo, and offers for sale competing aluminum composite panels. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Complainant contends that Respondent has registered <alpoliciran.com> and <alpolic-iran.com>, which are the subject of a pending proceeding under the UDRP, WIPO Case No. 2016-2387 (filed Nov. 25, 2016). Registration by a single respondent of several infringing domain names can be used to show a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii)); cf. Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)). However, since these other domain names are subject to another ongoing UDRP proceeding, this Panel declines to determine whether the registration and use of these other domain names constitutes a pattern of bad registration and use.
Yet, Complainant has other otherwise shown that Respondent registered and uses the <alpolic.us> domain name in bad faith.
Respondent uses the <alpolic.us> domain name to direct consumers to a website offering goods and services that compete with Complainant and Respondent uses a home page that is almost identical to Complainant’s home page. Respondent’s use of the domain name to pass itself off as Complainant disrupts Complainant’s business and is likely arranged for the purpose of confusing Internet users from which Respondent profits. Respondent’s passing off constitutes bad faith under both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Respondent had actual notice of Complainant and its rights in the ALPOLIC mark when registering and using the <alpolic.us> domain name, thereby showing bad faith under Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alpolic.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 14, 2017
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