WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intrac Group AB v. intrac.biz

Case No. D2013-1821

1. The Parties

The Complainant is Intrac Group AB of Stockholm, Sweden represented by Advocatfirman Fylgia KB, Sweden.

The Respondent is intrac.biz of Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <intrac.com> is registered with Inames Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2013. On October 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 1, 2013 providing the registrant and contact information disclosed by the Registrar and invited the Complainant to submit an amendment to the Complaint. The Complainant filed its first amendment to the Complaint on November 6, 2013. Thereafter, the Complainant filed its second amendment to the Complaint on November 13, 2013 in response to a notification by the Center that the Complaint was administratively deficient.

On November 11, 2013, the Center notified the Parties in both English and Korean that the language of the Registration Agreement in this case was Korean. In its second amendment to the Complaint, the Complainant requested for English to be the language of the proceeding. The Respondent failed to respond.

The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 19, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 9, 2013. The Response was filed with the Center on December 9, 2013.

The Center appointed Andrew J. Park as the sole panelist in this matter on December 20, 2013. 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 paragraph 7 of the Rules.

4. Factual Background

This case concerns the disputed domain name <intrac.com> which was registered on April 20, 2013.

The Complainant supplies tracked and wheeled machines for forestry, material handling, and earthmoving to customers throughout the Baltic States and Poland. The Complainant is an exclusive distributor for John Deere Forestry, CASE Construction, New Holland Construction, Kalmar Industries, Manitou telehandlers, and BOMAG compaction equipment.

The Complainant is the registered owner of a trademark for INTRAC in Sweden (Trademark No. 0372029), filed on July 5, 2004 and registered on May 6, 2005. The Complainant operates websites at various domain names, including <intrac.se> and <intrac.ee>. The Complainant currently markets its products and services largely through those domain names. The Complainant alleges that up until February 2013, when the disputed domain name was registered by the Respondent, marketing was mostly done under the domain name <intrac.com>.

The Complainant contends that the domain name <intrac.com> had been registered by the Complainant since January 30, 2004, but, due to a mistake in early 2013, the fee for re-registration was not timely paid. The Complainant contends that it tried to remedy the mistake as soon as it noticed that the fee was not paid but the Respondent had already registered the disputed domain name. The Complainant sent the Respondent a letter on May 8, 2013 – two weeks after the disputed domain name was registered by the Respondent – and objected to the registration. The Respondent did not respond. The Complainant sent a follow-up letter to the Respondent on August 22, 2013. The Respondent failed to respond.

There appears to be two different registrants around the time of the Complaint filing. The original registrant appears to have registered the domain name when the Complainant’s payment for the registration lapsed. The original registrant did not respond to the Complaint. Instead, when receiving a service copy of the Complaint on October 24, 2013 from the Complainant, he informed the Complainant that he had “already sold the domain at huge money to broker.”

The Respondent (second registrant) purportedly purchased the disputed domain name for USD 21,500. Prior to making the purchase, the Respondent purportedly conducted a trademark search using the “iNEED Brand” website to determine if the name “intrac” was registered to anyone. The Respondent contends that the results of that search showed that the name was not registered and provided a screenshot of the search result.

The Respondent contends that he has retained the services of Information Technology Links Col, LTD (“ITL”) to create a website for his company using the disputed domain name. The Respondent expects the website to be completed by approximately February 14, 2014.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is identical or confusingly similar to its company name and INTRAC trademark, which was filed several years before the Respondent’s registration.

The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that there is no evidence that a company incorporated under the name INTRAC exists in South Korea. The Complainant contends that at the time the Complaint was filed on October 24, 2013, the disputed domain name had not been in use and was offered for sale at an unreasonable price.

The Complainant contends that neither of the registrants has a legitimate interest in the disputed domain name since the new registrant is a broker. The Complainant also contends that the registered e-mail address, hongfoul@[redacted], has no connection to the stated registrant name intrac.biz. Therefore, the circumstances in the Complaint are applicable to the new registrant.

B. Respondent

The Respondent contends that he purchased the disputed domain name for USD 21,500. Prior to making the purchase, he completed a trademark search using the “iNEED Brand” website to determine if the name “intrac” was registered to anyone, and the results of that search showed that it was not registered. He attached a screenshot of the search result showing that “0” hits came back for this name.

The Respondent contends that he already retained the services of Information Technology Links Co., Ltd (“ITL”) to create a website for his company using the disputed domain name. He expects the website to be completed by approximately February 14, 2014. Attached to his response is a screenshot of ITL’s website.

Finally, the Respondent contends that he never offered to sell the disputed domain name.

6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the registration agreement unless otherwise agreed by the parties, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Here, the Registrar confirmed to the Center that the language of the Registration Agreement is Korean. The Complainant requested that English be the language of the proceeding.

The Center issued a Language of Proceeding notification to both parties in both English and Korean with instruction to both the Complainant and the Respondent. The Center has throughout the proceedings issued its case-related communications, including the Center’s complaint notification documents, in both Korean and English. The Panel is satisfied that the Center’s approach has been fair and appropriate, reserving the discretion to the Panel to determine the appropriate language of proceedings.

The Panel notes that the spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfortability with each language. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679. In the present case, although the registration agreement for the disputed domain name is in the Korean language, the Panel notes that the content at the site of the disputed domain name is in English, and it is reasonable to assume that the Respondent understands English based on his ability to respond to the Complaint. Furthermore, the Complainant is not able to communicate efficiently in Korean. Therefore, in consideration of the above circumstances, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case.

6.2 Analysis of the Complaint

Paragraph 4(a) of the Policy sets forth three requirements which must be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that: (i) the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the Respondent’s domain name has been registered and is being used in bad faith. These elements are discussed in turn below.

The Panel must decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules.

A. Identical or Confusingly Similar

In the present case, the Panel finds that the Complainant has established that the name INTRAC has become a distinctive identifier associated with the Complainant. The Complainant owns a registered trademark for INTRAC and is the registrant of domain names <intrac.se> and <intrac.ee>. The Complainant currently markets its products and services largely through those domain names. Moreover, up until February 2013, when the disputed domain name was registered by the Respondent, the Complainant’s marketing was mostly done under the domain name <intrac.com>. Additionally, there is no evidence to suggest that there is a company or business other than the Complainant that uses the name in the same area of industry as the Complainant.

The disputed domain name wholly incorporates the Complainant’s registered mark. In prior UDRP decisions, it has been widely held that a domain name which wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy. See e.g. BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson, WIPO Case No. D2008-1338.

For these reasons, pursuant to paragraph 4(a)(i) of the Policy, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s INTRAC mark

B. Rights or Legitimate Interests

There is no evidence in this case to support a finding that the Respondent has rights or legitimate interests in the disputed domain name.

The general consensus of UDRP panel opinion on the issue of whether a respondent has rights or legitimate interests is set out in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). On this approach, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy.

In this case, the Complainant has established a strong prima facie case against the Respondent. The Respondent has failed to come forward with any evidence demonstrating rights or legitimate interests in the disputed domain name, and, further, there is no evidence in the case file that would demonstrate that the Respondent had such rights or legitimate interests.

For example, there is no evidence that the Respondent is known under the disputed domain name or “intrac”. The disputed domain name has no known meaning in English or Korean, which is the purported language of the Respondent. The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use the INTRAC word mark. Moreover, the Respondent has not offered any evidence to rebut the Complainant’s contention that at the time the Complaint was filed on October 24, 2013, the disputed domain name had not been in use and was offered for sale at an unreasonable price.

Accordingly, pursuant to paragraph 4(a)(ii) of the Policy, the Panel finds under the circumstances that the Complainant has established that the Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following conduct is sufficient to support a finding of bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

Bad faith can be inferred if the Respondent was aware or should have been aware of the Complainant’s mark and claims of rights thereto (particularly in view of the Complainant’s use of its mark on the Internet). Here, given the timing of the registration, the Panel finds it highly doubtful that the Respondent would have registered the domain name without having knowledge of the Complainant.

The registration of a domain name that is similar to a distinctive trademark by the Respondent, when the Respondent has no relationship to that mark, is also sufficient evidence of bad faith (see Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403; Centurion Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319).

Moreover, the Panel finds that the Respondent registered the disputed domain name primarily for the purpose of selling or otherwise transferring the disputed domain name for valuable consideration as described in paragraph 4(b)(i) of the Policy, and thus in bad faith. This is based on (i) evidence from the prior owner that the Respondent is a “broker” and (ii) that the Respondent failed to provide any evidence to show otherwise (e.g., it failed to prove that it hired ITL, and it failed to show any connection between its business and the name “intrac”). This behavior evidences bad faith.

A further circumstance indicative of bad faith indicative of bad faith is that the disputed domain name currently resolves to a website at “www.intrac.biz”, apparently an unrelated company in Nevada, United States of America. The Panel finds that this use is clearly an attempt to forestall an unfavorable result in this proceeding.

For the above reasons, pursuant to paragraph 4(a)(iii) of the Policy, the Panel finds that the Complainant has shown that the disputed domain name “has been registered and is being used in bad faith” by the Respondent.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <intrac.com> be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: January 7, 2014