WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Imerys v. Unknown (gfg fdgdf, dfgdfg)
Case No. D2007-0045
1. The Parties
The Complainant is Imerys, Paris, France, represented by Bird & Bird Solicitors, France.
The Respondent is Unknown (gfg fdgdf, dfgdfg), Federated States of Micronesia 78500, United States of America, of United States of America.
2. The Domain Name and Registrar
The disputed domain name <imerys-solidarity.org> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2007. On January 12, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name(s) at issue. On January 22, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 26, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 1, 2007.
The Center appointed David Perkins as the sole panelist in this matter on March 14, 2007. 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
4.A The Complainant
4.A.1 The Business of the Complainant
4.A.1.1 The origins of the Complainant Group date from 1880, its core business being the extraction and processing of nickel ore. The business expanded and diversified over the years and by 1990 the Group operated under the name Imetal. In 1998 the business was structured around two sectors, Minerals Processing and Metals Processing.
4.A.1.2 However, in 1999 when Imetal acquired English China Clays, it divested its Metals Processing business and on September 22, 1999 changed its name to Imerys. The Group now comprises four businesses, namely Specialty Minerals: Pigments for Paper: Materials and Monolithic; and Refractories, Abrasives and Filtration. It occupies world leading positions in several of those markets.
4.A.1.3 As of December 31, 2005 Imerys employed almost 16,000 people at 250 industrial sites covering 43 countries. It has 102 manufacturing sites in 24 countries, including research centers in Austria, the United Kingdom, Switzerland and the United States of America (in California and in Georgia). For the year ended December 31, 2005 Imerys’ Group sales totaled Euros 3,045 million.
4.A.2 The IMERYS trademark
4.A.2.1 Exhibited to the Complaint is a schedule of the Complainant’s registered IMERYS trademarks and copies of some of the registration certificates for those trademarks. The trademarks comprise the word mark IMERYS and the same word mark with a device (illustrated below):
4.A.2.2 The earliest application for the IMERYS mark was made in France in July 1999 and for the device mark in August 1999. There are now some 77 registrations which cover the United States of America: Canada: the European Community: OAPI: an International Registration designating 42 territories: Brazil: Argentina: Chile: India: Indonesia: Israel: Japan: Malaysia: Mexico: New Zealand: Singapore: South Africa: Taiwan: Thailand and Venezuela. All but 1 of the 77 registrations were registered several years before the domain name in dispute was created on April 26, 2006. The registrations variously include Classes 1, 2, 4, 6, 7, 11, 17, 19, 36, 37, 39, 30 and 42.
4.A.3 The IMERYS domain name
4.A.3.1 The Complainant and its affiliates own 160 registered domain names which include to IMERYS trademark.
4.A.3.2 Those registrations include the TLDs <imerys.com>; <imerys.net>; <imerys.biz> and <imerys.org>.
4.A.3.3 They also include numerous country level domain names, such as <imerys.fr>; <imerys.co.uk>; <imerys.ca>. <imerys.jp> etc.
4.A.3.4 The registrations also comprise domain names composed of the IMERYS trademark followed by a generic word. For example, <imerys-structure.com>, <imerys-toiture.com>, <imerys-paper.com> and <imerys-tableware.com>.
4.B The Respondent
4.B.1 In the absence of a Response, the only information relating to the Respondent is contained in the Complaint and certain of its annexes.
4.B.2 The domain name in issue <imerys-solidarity.org> was registered on April 26, 2006 by The Paper, Allied Industrial, Chemical and Energy Workers International Union [PACE] which resolved to a website informing the Complainant’s employees of their rights. Exhibited to the Complaint is the announcement by PACE of the “www.imerys-solidarity.org” website, the purpose of which was stated to be
“… to call global attention to the abuse of workers’ rights by Imerys, a French company headquartered in Paris and operating in 38 countries.”
That website complained of alleged safety violations at Imerys’ plant at Sylacauga, Alabama and so-called unfulfilled promises made by the Complainant under a Labor Agreement at its Dry Branch plant in Georgia.
4.B.3 The domain name was then transferred to a Mr. Kanze of France and thereafter ceased to resolve to a PACE website. Instead, the domain name resolved to a website providing information about the Complainant company, such information being derived from Wikipedia.
4.B.4 Mr. Kanze then offered to sell the domain name in issue at auction on July 6, 2006. When the Complainant became aware of Mr. Kanze’s ownership and use of the <imerys-solidarity.org> domain name, its lawyers wrote on August 24, 2006, demanding transfer of that domain name to Imerys without payment. No reply to that letter was received.
4.B.5 However, the Complainant subsequently discovered that the domain name had been transferred in September 3, 2006 to an anonymous proprietor located in the Federated States of Micronesia. Accordingly, a further cease and desist letter was sent to the new owner’s addressed on September 28, 2006. No reply to that letter was received either.
5. Parties’ Contentions
5.A.1 The domain name is identical or confusingly similar to the Complainant’s IMERYS trademark
5.A.1.1 The Complainant has rights in the IMERYS trademark. That trademark is the distinctive element of the domain name in issue, which also comprises the generic suffix “solidarity”. Accordingly, the domain name is confusingly similar to the IMERYS trademark.
5.A.1.2 The Complainant cites a number of decision under the Policy where confusing similarity was found in similar circumstances. Those decisions are:
Domain Name in Issue
WIPO Case No.
Sanofi-Aventis .v. Direct Marketing aka DRM
<accompliablog-com> and others
Sanofi-Aventis .v. Elizabeth Riegel & Andrew Riegel
Telstra Corporation Ltd .v. Peter Lombardo et al
<pepsiadventure.com and others
Pepsico Inc .v. Pepsi SRL and EMS Computer Industry
<pepsi400.com: and <pepsisouthern500.com>
PEPSI 400 PEPSI Southern 500
Pepsico Inc .v. Diabetes Home Care and DHC Services
<sonyacademy.com> and others
Sony KK .v. Kil Inja
<timeforaol.com> and others
America Online Inc .v. Chris Hoffman
5.A.2 Rights or Legitimate Interests in respect of the Domain Name
5.A.2.1 The Complainant points to the fact that the earliest of its applications for the IMERYS trademark predates registration of the domain name in issue by almost 7 years.
5.A.2.2 The Complainant says that it has not licensed or otherwise authorised the Respondent to use the IMERYS trademark.
5.A.2.3 There has been no bona fide use of the domain name in issue by the offering of goods or services by the Respondent since he acquired the domain name in September 2006. At present the domain name is parked free, courtesy of the Registrar, Go-Daddy.com, at a website which contains numerous sponsored links to third party websites, including Mining Management “www.fractum.com” . In this respect, the Complainant refers to the so-called “minimum requirements” for bona fide use of a Complainant’s trademark, which are set out inOki Data Americas, Inc. v. ASD Inc. (WIPO Case No. D2001-0903). The Complainant submits that none of those requirements are met by the Respondent in this case.
5.A.2.4 The Respondent acquired the domain name from Mr. Kanze (the previous proprietor) after Mr. Kanze had been put on notice by the Complainant of its trademark rights [paragraph 4.B.4 above] and then ignored the subsequent letter from the Complainant’s lawyers addressed to him [paragraph 4.B.5 above].
5.A.2.5 Furthermore, the website to which the domain name resolves contains no disclaimer, which is another indicia of the lack of bona fides and of a lack of rights or legitimate interests in the domain name: see, in that respect Sanofi-Aventis v. Clickstream Marketing LLC, (WIPO Case No. D2005-0769), which involved the domain name <ambient-sleep.com> and the Complainant’s AMBIENT trademark for its insomnia product.
5.A.3 Registered and Used in Bad Faith
5.A.3.1 Here, the Complainant bases its case on paragraph 4(b)(iv) of the Policy. First, the Respondent has no license or other authorization from the Complainant to use the IMERYS trademark as part of a domain name. On the basis of the forgoing, it is plain (the Complainant says) that the Respondent has no rights or legitimate interests in respect of the domain name and such lack of rights or legitimate interests points to bad faith registration and use.
5.A.3.2 Second, when acquiring the domain name in September 2006, the Respondent must have known – as indeed the original registrant in April 2006 did know – of the existence of the Complainant and the extent of its geographic operations under the IMERYS name and trademark. This is another element of the Respondent’s bad faith registration and subsequent bad faith use as a sponsored link to numerous third party websites (paragraph 5.A.2.3. above).
5.A.3.3 Third, non-use of the domain name except as “parked” with the Registrar, Go-Daddy.com, is another indication of bad faith registration and use.
5.A..3.4 Finally, by registering anonymously and by failing to reply to the Complainant’s cease and desist letter [paragraph 4.B.5 above] the Respondent has also evidenced its bad faith. In the circumstances, the Complainant says that this must be seen as an opportunistic registration which has been acquired and is being used in bad faith. The Complainant cites Ladbroke Group plc v. Sonoma InternationalLDC,(WIPO Case No. D2002-0131). That case concerned the domain names <ladbrokespoker.com>, <ladbrokepoker.com>, <ladbrokepoker.org>, and <ladbrokepoker.net>. Although the respondent was planning to use those domain names for online poker games and had made those plans public, the panel held the respondent must have been aware when registering the names of the complainant’s prior well - known LADBROKE and LADBROKES trademarks and its reputation in the gaming industry. This, coupled with the Respondent’s failure to file a Response to the Complaint, and the provision of incorrect contact details to the Registrar, indicated bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
i that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
i that the Respondent has no rights or legitimate interests in respect of the domain name; and
i that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 Identical or Confusingly Similar
6.4.1 The Complainant is the proprietor of the registered trademark IMERYS.
6.4.2 The dominant feature of the domain name in issue is the IMERYS trademark. The mere addition of a generic suffix, here the word “solidarity” does not avoid a finding of confusing similarity with that trademark. That is particularly so in this case, where the Complainant itself has registered domain names comprising the IMERYS trademark followed by generic words, such as “structure”, “paper”, “tableware” etc [paragraph 4.A.3.4 above].
6.4.3 Numerous cases decided under the Policy have found confusing similarity in cases where the domain name comprises a trademark followed by a generic word: [paragraph 5.A.1.2 above].
6.4.4 Accordingly, the Panel finds that the Complaint meets the requirements of paragraph 4(a)(i) of the Policy.
6.5 Rights or Legitimate Interests
6.5.1 Here, there is nothing to suggest that – had a Response been filed – the Respondent could have shown any of the circumstances set out in paragraph 4(c) of the Policy.
6.5.2 Using the domain name “parked” with the Registrar, Go-Daddy.com, does not amount to a bona fide offering of goods or services, either under the Oki Data requirements [paragraphs 5.A.2.3 above] or otherwise. Nor is it a legitimate non-commercial or fair use of the domain name Finally, there is no evidence that the Respondent has been commonly known by the domain name.
6.5.3 In the circumstances, the Complaint also meets the requirements of paragraph 4(a)(ii) of the Policy.
6.6 Registered and Used in Bad Faith
6.6.1 Where, as in this case, the Respondent has failed to show rights or legitimate interests in the domain name in issue, registration and use in bad faith can commonly be inferred. Here, both at the date of registration and at the date of acquisition by the Respondent the Complainant’s IMERYS trading name and trademark were widely - known. However, neither the original registrant nor the Respondent have been licensed or otherwise authorised by the Complainant to use the IMERYS trademark. In such circumstances, registration and subsequent use of the domain name cannot have been in good faith.
6.6.2 Where, as here, the domain name has been “parked” and links to third party websites, the registrant will receive pay per click revenue when such third party websites are accessed through that domain name. Such is evidence of use of a domain name within paragraph 4(b)(iv) of the Policy.
6.6.3 As to the use of an “identity shield” by the Respondent transferee using an anonymous identity, namely “gfg fdgdf”, in the context of the history of this domain name set out in paragraph 4.B.2 to 4.B.5 above, such use constitutes evidence of bad faith for the purposes of paragraph 4(a)(iii) of the Policy. See, for example, Fifth Bancorp v. Secure Whois Information Service (WIPO Case No. D2006-0696). That case involved the domain name <fifththirdreward.com> and the complainant’s trademarks FIFTH THIRD: FIFTH THIRD BANK and other FIFTH THIRD prefixed registered trade marks. The respondent in that case used a “proxy registration” in the form of a fictitious name, from which its true identity could not be identified. The domain name linked to sites of the complainant’s competitors, for example Chase, American Express and Citibank. A cease and desist email from the complainant went unanswered but the website closed and the domain name was then sold to another registrant also using an “identity shield”. No response was made to the complaint. This the Panel characterised as “cyberflying” and, coupled with the lack of response and the use of the identity shield, led to an inevitable finding of registration and use in bad faith. Although the use of an identity shield is not necessarily, a sign of illegitimate purpose – it can, for instance, be for quite legitimate privacy purposes – on the facts of this case it was consistent with bad faith registration and use.
Accordingly, the Panel finds that the Complainant meets the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <imerys-solidarity.org> be transferred to the Complainant.
Date: March 28, 2007
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