Trademark

Country

Registration Number

Classes

23/11/1994

Smurfit

Austria

159208

16, 40, 41

18/11/1994

Smurfit

Benelux

561663

16, 40, 41

04/02/1996

Smurfit

China

1049689

40

04/02/1996

Smurfit

China

1063066

16

04/02/1996

Smurfit

China

1049625

41

08/02/1996

Smurfit (Chinese Characters)

China

1049646

41

08/02/1996

Smurfit (Chinese Characters)

China

1063042

16

08/02/1996

Smurfit (Chinese Characters)

China

1049687

40

01/04/1996

Smurfit

Community Trade Mark

CTM 223495

16, 40, 41

20/01/1995

Smurfit

Denmark

2014/1995

16, 40, 41

15/12/1996

Smurfit

Dominican Republic

87320

63

15/12/1996

Smurfit

Dominican Republic

87360

70

03/09/1991

Smurfit

France

1690960

16, 40, 41

25/11/1994

Smurfit

Germany

39403660

16, 40, 41

12/02/1996

Smurfit

Hong Kong

01820/96

16

12/02/1996

Smurfit

Hong Kong

01824/96

40

12/02/1996

Smurfit

Hong Kong

01823/96

41

2/02/1996

Smurfit

Indonesia

377074

16

2/02/1996

Smurfit

Indonesia

377075

41

2/02/1996

Smurfit

Indonesia

376555

40

01/07/1996

Smurfit

Ireland

201903

36, 40, 41, 42

26/07/1991

Smurfit

Ireland

144891

16, 25, 28

28/11/1994

Smurfit

Italy

690744

16, 40, 41

06/02/1996

Smurfit

Singapore

S/1353/96

41

06/02/1996

Smurfit

Singapore

S/1351/96

16

06/02/1996

Smurfit

Singapore

S/1352/96

40

15/12/1994

Smurfit

Spain

1936626

16

02/12/1994

Smurfit

UK

2004851

16, 40, 41, 42

03/02/1996

Smurfit

Vietnam

22929

16, 40, 41

All classes noted are international with the exception of the Dominican Republic where the classes follow a local schema. Hereafter these registered trade marks will collectively be referred to as "the Complainant’s trade marks."

The Complainant also holds a number of business name registrations for similar names. A 100% owned subsidiary of the Complainant, Smurfit Ireland Limited, trades as Smurfit Print (Registration Number: 183385 pursuant to section 4 of the Registration of Business Names Act 1963) and as Smurfit Packaging Systems (Registration Number 164184 pursuant to section 4 of the Registration of Business Names Act 1963).

The Respondent is ostensibly an American corporation, though the Response gives no details as to its constitution. In the registrations for the domain names, two names were used interchangeably for the Respondent in the billing and administrative contact field:

Christopher Wong
Istep Communications
5214F Diamond Heights Blvd.
Suite 436, San Francisco
CA 94131
USA

And

John Behan
Fangzhuang Xiaoqu Fangguyuan Yiqu,
#1 Building, #703 of #1 unit,
Beijing
China

All discussions took place between the Complainant and John (or Sean) Behan, and the Response was filed by Mr. Behan. It appears that Mr. Behan has effective control of the domain names or is authorised to speak on behalf of the Respondent in relation to the domain names.

The Complainant asserts:

- The Respondent's domain names are identical or confusingly similar to the Complainant's trade marks or business names.

- The Respondent has no rights or legitimate interests in the domain names, since [1] the Respondent has no rights in any trade marks which are identical or similar to the domain names; [2] the Respondent does not carry on business using a name identical or similar to the domain names; [3] the Respondent does not carry on any business or activity related to the descriptive component of domain names (1), (2), (3), (8) and (9) (viz. packaging, print, pack, or box) nor does it carry on business or activity related to the geographical or generic component of domain names (4), (5), (6), and (7) (viz. europe, asia, uk, or group); [4] the Respondent’s name or the name of its representatives is not identical or similar to the domain names; [5] the Respondent has not developed any website using the domain names; [6] the Respondent has no legitimate purpose for registering the domain names and has no legitimate non-commercial or fair use of the domain names; and [7] the Respondent has not been commonly known by the domain name.

- The Respondent registered the domain names and is using them in bad faith, as evidenced [1] by an indication by Mr. Behan to the Complainant that he would be willing to sell <smurfitprint.com> and <smurfitprint.net> to the Complainant for valuable consideration considerably in excess of the Respondent’s costs; and [2] by the fact that the Respondent has registered the domain names to prevent the Complainant from reflecting its trade mark in corresponding domain names and the Respondent is aware of the Complainant’s marks.

- And that accordingly the Panel should order that the domain names be transferred to the Complainant.

The Respondent asserts:

- It makes no submission in respect of the ownership of the Complainant’s trade marks, nor does it argue that the domain names are not identical or confusingly similar.

- It has rights or legitimate interests in the domain names based on [1] use of "Smurfit Asia" in China from 1987/1988, [2] registration (of an unspecified nature) of the mark "Smurfit Asia" from 1997 in China; [3] rights in the name "Smurfit" and <Smurfit.net> based on use in Asia and the United States; and [4] registration (of an unspecified nature) of the mark "Smurfit Access".

- On the question of bad faith registration and use, it argues that a representative of the Complainant offered the Respondent IRŁ3000 or valuable printing services for the domain name <smurfitprint.com>, and that the Respondent did not initiate the offer.

- And that, accordingly, the Panel should order that the domain names remain with the Respondent.

Paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy ("the UDRP") requires the Complainant to make out three elements:

A. The Complainant has rights in a trade or service mark, with which Respondent’s domain name is identical or confusingly similar (paragraph 4.a.(i)); and

B. The Respondent has no rights or legitimate interests in respect of the domain name (paragraph 4.a.(ii)); and

C. The Respondent registered and is using the domain name in bad faith (paragraph 4.a.(iii)).

Dealing then with each element in turn.

The Complainant has established that it has registered an extensive portfolio of trade marks worldwide, for the word mark "Smurfit" in various classes. Originals of the certificates for all trade marks were provided to the Panelist, and these clearly establish the registrations claimed. The countries and jurisdictions of registration include Austria, Benelux, China, the European Community, Denmark, the Dominican Republic, France, Germany, Hong Kong, Indonesia, Ireland, Italy, Singapore, Spain, the United Kingdom, and Vietnam. The ownership of the Complainant’s trade marks is not disputed, and therefore this Panel holds that the first requirement of paragraph 4.a.(i) is made out. The Complainant clearly has rights in trade marks sufficient to ground this action.

The Complainant further asserts that its claims are strengthened by two business name registrations, pursuant to the Irish Registration of Business Names Act 1963. These registrations are for "Smurfit Print" and "Smurfit Packaging Systems" and are held by a subsidiary company, as detailed in section 4 above. It is not necessary for me to decide whether business names of this nature can satisfy the requirements of paragraph 4.a.(i), as the Complainant’s trade marks are quite sufficient in this case.

The second requirement of paragraph 4.a.(i) is that the domain name in issue is identical or confusingly similar to the Complainant’s marks. On this issue, the Complainant asserts that the domain names are identical or confusingly similar to its business names and identical or confusingly similar to its marks. Since I have disposed of the business names, I only need consider whether the domain names are identical or confusingly similar to the Complainant’s trade marks.

There is little to the argument of identity between the Complainant’s trade marks and the Respondent’s domain names. The addition of the words "packaging", "pack", "print", "box", "europe", "asia", "uk" and "group" mean that none of the domain names are identical to the trade marks, all of which are for the word "Smurfit".

On the issue of whether the domain names are confusingly similar to the Complainant’s trade marks, the Complainant asserts that the additional words in the domain name (viz. "packaging", "pack", "print", "box", "europe", "asia", "uk", and "group") which are added to the mark all reflect the nature of the business of the Complainant and/or the geographical locations of the Complainant’s business. The Respondent makes no submission on this point.

I accept the Complainant’s assertions. The addition of "packaging", "pack", "print", "box" to the word "Smurfit" are not such as to render the relevant domain names anything but confusingly similar to the Complainant’s mark. The Complainant is in the business of providing packaging, boxes, and printing, and anyone discovering these domain names will clearly assume that they relate to the Complainant’s core business. The same is true of the domain name which adds the word "group" to the "Smurfit" mark. The Complainant goes by the name "Smurfit Group"; and even if this were not the case, the addition of typical corporate terms (such as "group", "inc", "ltd", "corporation", etc) is not sufficient to remove the confusion present in cases of this sort. Anyone examining the <smurfitgroup.com> domain name is likely to be confused if Smurfit, or the Smurfit Group, is not the owner. Finally, domain names which involve the addition of geographical suffixes to distinctive marks have been found in many cases to be confusingly similar (see eg Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; Wal-mart Stores, Inc. v. Yongsoo Hwang, NO-WALMART and NO-WALMART.COM, WIPO Case No. D2000-0838; AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927; Yahoo! Inc. v. Microbiz, Inc., WIPO Case No. D2000-1050; Viacom International Inc. v Sung Wook Choi and M Production, WIPO Case No. D2000-1114; Amway Corporation, Inc. v. Business Internet Connection and Rex Mehta, WIPO Case No. D2000-1118). I see no reason to depart from this line of authority. Thus the domain names that involve the Complainant’s mark with the addition of the words "europe", "asia" and "uk" are all confusingly similar to the Complainant’s mark.

Therefore, there can be no doubt that all of the domain names are confusingly similar to the Complainant’s trade marks.

I conclude therefore that the Complainant has satisfied paragraph 4.a.(i) of the UDRP.

For this element the Respondent must establish rights or a legitimate interest in the domain name in issue. The Response is somewhat confused on this point, and does not directly address the issue. However, even on the best possible interpretation, the Respondent was unable to demonstrate any circumstances that established its legitimate interests or rights in the names. Paragraph 4.c. of the UDRP provides guidelines to establishing these interests or rights, and though it is not intended to be exhaustive, in the absence of specific assertions by the Respondent, is useful to see whether any of the examples provided in that paragraph might apply here.

Paragraph 4.c.(i) of the UDRP suggests that legitimate interests or rights might be shown by preparations to use the names in a bona fide offering of services. The Respondent did annex to its Response a number of would-be websites, which presumably were intended to show that it had used the domain names. However, none of these sites offered any services, and at best were a logo and a link to download Internet Explorer or Netscape Navigator. Further, none of the domain names in issue actually pointed to the web-sites annexed to the Response. I conclude that this does not constitute a bona fide offering pursuant to paragraph 4.c.(i).

Paragraph 4.c.(ii) of the UDRP provides that legitimate interests or rights may be demonstrated by the Respondent if it has been commonly known by the domain name, even without trade or service mark rights. The Respondent asserts that it has rights or legitimate interests in the domain names based on (1) use of "Smurfit Asia" in China from 1987/1988, (2) registration (of an unspecified nature) of the mark "Smurfit Asia" from 1997 in China; (3) rights in the name "Smurfit" and <Smurfit.net> based on use in Asia and the United States; and (4) registration (of an unspecified nature) of the mark "Smurfit Access".

Unfortunately for the Respondent, it provided no evidence of trade mark or other registrations, or evidence that it has been known by this name, or any other evidence that it had a legitimate interest in any of the names in question. It was given ample time to obtain the evidence: the Respondent was granted an extension of two weeks to file its Response, and by a Procedural Order dated November 29, 2000, both Parties were given seven additional days to file evidence of the trade mark registrations which had been pleaded in the Complaint or Response. During that time the Complainant provided the necessary documentation of these registrations, as detailed in section 4. The Respondent provided no additional evidence in that time. It asserted that it was difficult to obtain any registration documents from Asian authorities. Just as this decision was to be handed down, the Respondent emailed some text which purported to be evidence of registrations (of some type) of "Smurfit Access Card" and "Smurfit Asia Services" in the Philippines. It is impossible to determine what these registrations might be for, and no information was provided as to who had registered these entries. I do not consider this email to be evidence of anything. The Respondent’s actions throughout have all the hallmarks of delaying tactics. Apart from the absence of formal registration documents which it had pleaded as part of its case, the Respondent was unable to bring on any other evidence of legitimate use of the various words and names that it asserted formed the basis of its legitimate interest. It is insufficient for the Respondent to rely on the bare assertion that it has some type of inchoate registration and/ or use. Some evidence must be presented to provide backing to the claim, and I do not consider unverifiable, last-minute emails to constitute this evidence. I conclude that the Respondent failed to make out its assertions pursuant to paragraph 4.c.(ii).

Finally, paragraph 4.c.(iii) of the UDRP provides that legitimate interests or rights may be demonstrated by the Respondent if it is making a legitimate non-commercial or fair use of the domain name. There is no pleading or evidence of the Respondent going to this point, so I conclude that paragraph 4.c.(iii) cannot apply here.

I therefore find that the Respondent has no rights or legitimate interests in respect of the domain names.

I conclude that the Complainant has satisfied paragraph 4.a.(ii) of the UDRP.

For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.

The Complainant asserts that bad faith registration and use is established (1) by an indication by Mr. Behan to the Complainant that he would be willing to sell <smurfitprint.com> and <smurfitprint.net> to the Complainant for valuable consideration considerably in excess of the Respondent’s costs; and (2) by the fact that the Respondent has registered the domain names to prevent the Complainant from reflecting its trade mark in corresponding domain names and the Respondent is aware of the Complainant’s marks.

The first assertion relies on paragraph 4.b.(i) of the UDRP, which sets out one of the circumstances evidencing bad faith registration and use: evidence that the Respondent acquired the domain name primarily for the purpose of selling, renting, or transferring the domain name to the trade mark owning Complainant. On this assertion, it is pleaded that a meeting took place in January or February 2000 between a representative of the Complainant and Mr. Behan of the Respondent, where Mr. Behan offered to transfer <smurfitprint.com> and <smurfitprint.net> to the Complainant for a number of different forms of consideration. The initial offer, the Complainant asserts, was to transfer the names for "hundreds of thousands of pounds," then lower valuations were suggested, including printing services to be provided gratis by the Complainant to the Respondent, valued at IRŁ14,750. Against this, the Respondent argues that a representative of the Complainant offered the Respondent IRŁ3,000 or valuable printing services for the domain name, and that the Respondent did not initiate the offer. The Complainant, in turn, suggests that the figure of IRŁ3,000 was suggested by the Complainant’s representative as the maximum that they might pay, but that no agreement was reached.

There is an unfortunate dearth of evidence on both sides. Neither side tenders contemporaneous notes or other evidence. The Complainant does annex an email from Mr. Behan subsequent to the meeting (dated 29 February 2000) that indicates he was prepared to transfer a domain name for the IRŁ3,000 mentioned at the meeting. The fact that no transfer took place is not explained. Further, there is a troubling inconsistency in the Complainant’s assertions. It claims that the domain name <smurfitprint.net> was one of the subject matters of the meeting in January 2000. But by its own admission and according to the Whois database of Core Internet Council of Registrars, the domain name <smurfitprint.net> was not registered until April 29, 2000. This inconsistency does significant damage to the assertions of the Complainant on this point.

On the whole then, it is difficult to determine who made the first offer, and what it was in relation to. It is hard to conclude definitively that the offer is evidence of bad faith on the part of the Respondent. I shall, therefore, not decide on this claim, and instead shall pass on to the Complainant’s second claim, which does not have these evidentiary problems.

The Complainant’s second claim relies on paragraph 4.b.(ii). This paragraph provides that evidence of bad faith use and registration can be established by evidence that the Respondent registered the domain names in order to prevent the owner of the trade or service mark from reflecting its mark in a domain name, but only where the Respondent has engaged in a pattern of such conduct. The multiple registrations by the Respondent are clear evidence of a pattern of abusive registrations, directed at the Complainant and aimed at preventing it from reflecting its marks in domain names. The evidence of the meeting between the Complainant’s and Respondent’s representatives is also useful here, since six of the domain names in issue here were registered after that meeting. Presumably, after concluding that the Complainant might be prepared to buy out domain names with "smurfit" in them for significant sums, the Respondent went on a registration spree. This is borne out by the Complaint, which asserts that, after the Complainant discovered that the Respondent was registering domain names with "smurfit" in them, the Complainant quickly registered a number of domain names with the mark in them. According to the Complainant, Mr. Behan telephoned the Complainant and commented, "I see that you have been busy … registering Smurfit names." The Complainant suggests that the Respondent was monitoring those who registered names with "smurfit" in them. This is consistent with the Respondent’s actions and I, therefore, accept the Complainant’s evidence on this point. Based on the pattern of abusive registrations, I accept the Complainant’s claim.

Thus, even though the evidence on the Complainant’s first assertion is equivocal, the conclusion based on its second assertion is clear. I find that the Respondent registered and is using the domain names in bad faith, pursuant to paragraph 4.b.(ii).

I conclude that the Complainant has satisfied paragraph 4.a.(iii) of the UDRP.

The Complainant has satisfied all of the elements of paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy.

Pursuant to paragraph 4.i. of the Uniform Domain Name Dispute Resolution Policy and Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is granted.

I hereby order that the domain names <smurfitprint.com>, <smurfitpack.com>, <smurfitbox.net>, <smurfiteurope.com>, <smurfitasia.com>, <smurfituk.com>, <smurfitgroup.com>, <smurfitpackaging.com>, and <smurfitprint.net> be transferred forthwith to the Complainant.

Dan Hunter
Sole Panelist

Dated: December 15, 2000