WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valmet Technologies, Inc. v. Super Privacy Service LTD c/o Dynadot

Case No. D2020-0186

1. The Parties

The Complainant is Valmet Technologies, Inc., Finland, represented by Roschier Brands, Attorneys Ltd., Finland.

The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America.

2. The Domain Name and Registrar

The disputed domain name <valmet-xian.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2020. On January 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 27, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2020.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on February 25, 2020. 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

The Complainant is a company active in developing and supplying technologies, automation systems and services for the pulp, paper and energy industries, and is headquartered in Finland.

The Complainant owns a portfolio of trademarks protecting VALMET (word and device marks), including, amongst others, the following trademark registrations: European Union Trade Mark registration No. 002088904, registered on June 19, 2002, and International trademark registration No. 1223549, registered on May 28, 2013 and designating inter alia China. The disputed domain name was registered on August 22, 2019, and the Complainant provides evidence that it is linked to an active redirection webpage, leading to either a website offering Hongfan-branded polishing machines or a lottery and gambling website.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name is confusingly similar to its trademark for VALMET, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.

The Complainant provides evidence that the disputed domain name is linked to an active redirection page leading to either a website offering Hongfan-branded polishing machines or a lottery and gambling website. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name, and constitutes registration and use in bad faith of its trademarks for VALMET.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy requires the Complainant to prove three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has shown that it has valid rights in the sign VALMET based on its intensive use and registration of the same as a trademark in several jurisdictions, incidentally commencing several years prior to the registration of the disputed domain name.

Moreover, as to confusing similarity, the disputed domain name consists of the Complainant’s registered trademark for VALMET, combined with the name of the Chinese city “Xian”, preceded by a hyphen. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, states: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” The Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademark, which remains easily recognizable. The addition of the geographical term “Xian” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s registered trademark, and that the Complainant has satisfied the requirements of the first element under the Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel holds that the Complainant makes out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply.

Moreover, upon review of the facts, the Panel notes that the disputed domain name directs to an active redirection webpage, leading to either a website offering Hongfan-branded polishing machines or a lottery and gambling website. This shows the Respondent’s intention to divert consumers for commercial gain to such websites, by taking unfair advantage of the goodwill and reputation of the Complainant’s trademarks for VALMET.

Furthermore, the Panel notes that the nature of the disputed domain name, being confusingly similar to the Complainant’s trademarks and containing the Complainant’s trademark combined with a geographical term, carries a risk of implied affiliation with the Complainant (see also WIPO Overview 3.0, section 2.5.1). The Panel also considers that the Respondent is not commonly known by the disputed domain name.

On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The registration of the disputed domain name, which is confusingly similar to the Complainant’s trademarks, was clearly intended to mislead and divert consumers to the disputed domain name. Given the distinctiveness and fame of the Complainant’s trademark, the Panel holds that the registration of the disputed domain name, targeting the Complainant’s known trademark, was obtained in bad faith. Moreover, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned registered trademarks in VALMET and used these extensively. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain name.

As to use of the disputed domain name in bad faith by the Respondent, the website linked to the disputed domain name is currently used as a redirection webpage, leading to either a website offering Hongfan-branded polishing machines (which compete with the products offered by the Complainant) or a lottery and gambling website. The Panel holds that this means that the Respondent intentionally attempts to attract Internet users, for commercial gain, to the disputed domain name, by creating consumer confusion between the disputed domain name and the Complainant’s trademarks. The Panel holds that this is clear evidence that the Respondent is using the disputed domain name in bad faith.

Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under the Policy.

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 <valmet-xian.com> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: February 27, 2020