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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Saint-Gobain Performance Plastics Corporation v. Forum LLC

Case No. D2006-0204

 

1. The Parties

The Complainant is Saint-Gobain Performance Plastics Corporation, Ohio, United States of America, represented by Duane Morris LLP, United States of America.

The Respondent is Forum LLC, Roseau, Dominica.

 

2. The Domain Name and Registrar

The disputed domain name <furon.com> is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2006 by e-mail, and on February 20, 2006 in hard copy. On February 16, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On February 16, 2006, Moniker Online Services, LLC 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, billing, and technical contact. In response to a notification by the Center issued on February 22, 2006, that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 23, 2006 in electronic copy, and February 28, 2006 in hard copy. The Center verified that the Complaint as amended 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 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2006.

The Center appointed Manoel J. Pereira dos Santos as the Sole Panelist in this matter on March 27, 2006. 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 trademark in which the Complaint is based is FURON. According to documentary evidence and contentions submitted by Complainant, Complainant is the owner of the U.S. Trademark Registration Nos. 1,687,581 issued May 19, 1992; 1,657,766 issued September 17, 1991, and 1,653,310 issued August 6, 1991, and owns 88 registrations for the mark FURON worldwidely. The trademark FURON has been used since at least as early as 1990 in connection with a variety of goods, such as valves, fluid, pumps, etc. Reference is made to Annexes 2 and 3 of the Amended Complaint.

According to documentary evidence and contentions submitted by Complainant, Complainant was the holder of the domain name <furon.com> until Complainant failed to renew the domain name registration in October 2005. The disputed domain name was originally registered in the name of Manager, Webserv of Dominica. Reference is made to Annex 5 of the Amended Complaint. Subsequently, the disputed domain name was transferred to Moniker Privacy Services, a so-called “privacy service” allowing the registrant’s identity to be removed from public records. Upon transmission by the Center of a request for registrar verification, the Registrar disclosed the identity of the registrant.

According to the contentions submitted by Complainant, the trademark FURON owned by Complainant is widely known and recognized throughout the world. The disputed domain name points to a website that offers search engine services and sponsored links to Complainant’s competitors and other websites, selling the same types of goods as listed in Complainant’s trademark registrations for FURON.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that Respondent’s domain name is nearly identical to Complainant’s registered trademarks, with the sole difference being the addition of the suffix “.com”. Complainant argues, relying on previous WIPO UDRP decisions, that it is firmly established, when analyzing the similarity of a trademark and a domain name, that the “.com” portion of the domain name is to be disregarded and, therefore, the disputed domain name is confusingly similar to Complainant’s FURON mark.

Complainant further contends that Respondent has no right or legitimate interest with respect to its use of the domain name because Respondent has no association or affiliation with Complainant, has not been authorized to use the disputed domain name by Complainant, is not making a fair use or non-commercial use of the disputed domain name, and does not have any other legitimate right or interest in the domain name at issue. Relying in previous WIPO UDRP decisions, Complainant argues that, where a respondent uses a domain name for purposes of offering search engine services and “sponsored links” to competitors of a complainant, such use does not create a legitimate right to a domain name.

Finally, Complainant contends that Respondent has acted in bad faith in registering and using the disputed domain name by (a) registering a domain name that is confusingly similar to Complainant’s trademark and registrations with actual and/or constructive knowledge of Complainant’s trademark rights, (b) intentionally attempting to attrack, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant, (c) attempting to disrupt the business of a competitor, and (d) engaging in a willful pattern of warehousing domain names in which Respondent registers domain names that are identical or nearly identical to the trademarks of individuals and entities.

In accordance with paragraph 4(b)(i) of the Policy, Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

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

 

6. Discussion and Findings

The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the Policy (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

This Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response. As a result, the Panel infers that the Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084. Ross-Simons, Inc. v. Domain.Contac. WIPO Case No. D2003-0994. Therefore, asserted facts that are not implausible will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. RX America, LLC v. Matthew Smith. WIPO Case No. D2005-0540.

The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.

A. Identical or Confusingly Similar

Complainant’s contention that the domain name <furon.com> is confusingly similar to Complainant’s mark FURON is warranted.

The trademark FURON in which Complainant has rights is distinctive and the disputed domain name incorporates such mark in its entirety. The suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540.

The addition of the “.com” portion of the domain name does not affect a finding that the disputed domain name is identical to Complainant’s registered trademark. This Panel concurs with WIPO UDRP previous decisions holding that the “.com” suffix is to be disregarded. Microsoft Corp. v. Whois Privacy Protection Service/Lee Xongwey, WIPO Case No. D2005-0642; Accor v. Howell Edwin, WIPO Case No. D2005-0980.

Therefore, the Panel finds that the domain name <furon.com> is identical and clearly confusingly similar to Complainants’ mark FURON and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that Respondent only uses such domain name to offer search engine services and “sponsored links” to Complainant’s competitors and other entities on the Internet, selling the same type of goods as listed in Complainant’s trademark registrations. Complainant further argues that such use does not create a legitimate right to a domain name.

The consensus view in the WIPO URDP Panel decisions has been that a complainant is required to make out an initial prima facie case, thereby shifting the burden of demonstrating rights or legitimate interests in the domain name to the respondent. If the respondent fails to carry this evidentiary burden, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.1).

The Panel accepts as reasonable Complainant’s contentions that Respondent has no association or affiliation with Complainant, that Respondent has not been authorized to use the disputed domain name by Complainant, and that the website to which the disputed domain name points has no connection or relation to Complainant, or any legitimate variation thereof. By defaulting, Respondent failed to rebut such contentions and such facts as asserted by Complainant will be taken as true.

The critical issue here is whether use of a domain name for purposes of offering search engine services and “sponsored links” to competitors of a complainant creates a legitimate right to a domain name. In Deutsche Telekom AG v. Dong Wong, WIPO Case No. D2005-0819, the panel held that respondent’s use of the domain name for a commercial website with links to competitors of the complainant cannot constitute a bona fide use of the domain name pursuant to paragraph 4(c)(i) of the Policy. That panel relied on Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809, where the panel held that bona fide use does not exist when the intended use is a deliberate infringement of another's rights.

The Panel concurs with such understanding and is of the opinion that the Complainant has done enough to establish a prima facie case. The Panel finds that the intended use of the disputed domain name infringes on Complainant’s legitimate rights to the extent that Respondent’s websites contain “sponsored links” that link to Complainant’s competitors. The question of bad faith use will be further discussed below, but the foregoing finding is sufficient to dispose of the matter at this point.

In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

(i) Actual or constructive knowledge of Complainant’s trademark rights

Complainant’s first contention of bad faith is based on the argument that Respondent registered and started using the disputed domain name after Complainant’s registration and extensive use of its FURON trademark. Complainant argues and it is established that the trademark FURON has been used since at least as early as 1990 in connection with a variety of goods, and that Complainant owns U.S. registrations and 88 registrations for the mark FURON worldwidely. Complainant argues and it is established that Complainant was the owner of the domain name <furon.com> until Complainant failed to renew the domain name registration in October 2005.

Complainant further argues that the intentional concealment of the registrant’s identity, the fame and international recognition of Complainant’s FURON trademark, coupled with the various registrations of such mark on a worldwide basis, and ownership of corresponding domain name prior to Respondent’s registration of the disputed domain name are evidence that Respondent registered and started using the domain name at issue with actual and/or constructive notice of Complainant’s trademark rights.

The Respondent is not the original registrant of the subject domain name, but for the purposes of the Policy his original acquisition of the subject domain name whatever the circumstance constitutes registration. See MC Enterprises v. Mark Segal (Namegiant.com), WIPO Case No. D2005-1270.

The Panel is aware that WIPO panels are reluctant to introduce the concept of constructive notice into the UDRP but that, where a complainant had a United States registered trademark and respondent was located in the United States, this concept has been used in a few cases to support a finding of registration and/or use in bad faith. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 3.4).

In this case Complainant is located in the United States but Respondent is not. However, there are other factors that lead to the conclusion that Respondent had actual or constructive knowledge of the Complainant’s trademark. As one panel held in a case involving the very same Respondent, “Complainant’s worldwide reputation, and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the disputed Domain Name. The fact that the Domain Name is linked to websites that expressly refer to casino, gaming and poker services further indicates that Respondent knew the scope of Complainant’s services and products which are commercialized under its CAESARS family of marks”. Caesar World, Inc. v. Forum LLC, WIPO Case No. D2005-0517.

Those circumstances are of equal application here. Complainant owns U.S. registrations and 88 registrations for the mark FURON worldwidely and Respondent’s website contains “sponsored links” that link to Complainant’s competitors. In addition, Complainant’s had registered before the disputed domain name and Respondent’s history indicates that he should have known of Complainant’s mark and domain name.

(ii) Attempt to attrack Internet users to respondent’s website

Complainant’s second contention of bad faith is based on the argument that Respondent’s registration and use of the disputed domain name are an attempt to capitalize, for profit, on errors made by Internet users attempting to locate Complainant. Complainant argues that, when Internet users seeking Complainant’s goods arrive at Respondent’s website, they are likely to access and utilize the goods offered by competitors, instead of those offered by Complainant, because of the “sponsored links” that link to several other entities providing the same types of goods as listed in Complainant’s trademark registrations for FURON.

The Panel concurs with the understanding of several other WIPO panels that the use of a domain name to point to a website that offers search engine services and sponsored links to complainant’s competitors and other websites is evidence of bad faith, particularly if, as in the instant case, complainant had registered and used before the disputed domain name. Mudd, LLC v. Unasi, Inc., WIPO Case No. D2005-0591; Volvo Trademark Holding AB v. Unais, Inc., WIPO Case No. D2005-0556.

A compelling factor in this case is the circumstance that Respondent was formerly involved in similar cases where Respondent had registered and used a domain name that was linked to websites that expressly referred to complainant’s competitors, and that fact was held as bad faith. See Caesar World, Inc. v. Forum LLC, supra. The same finding applies in the instant case.

(iii) Attempt to disrupt Complainant’s business

Complainant’s third contention of bad faith is based on the argument that Respondent’s registration and use of the disputed domain name are an attempt to disrupt Complainant’s business in violation of paragraph 4(b)(iii) of the Policy.

Complainant does not elaborate on this argument but in fact there is no need to expand this point. A finding that Respondent is attempting to attrack Internet users to Respondent’s website by capitalizing on Complainant’s fame and reputation clearly indicates that such practice will adversely affect Complainant’s business.

(iv) Pattern of domain name warehousing

Complainant’s fourth contention of bad faith is based on the argument that Respondent has lost various UDRP disputes before WIPO and NAF, in which bad faith has been found in each instance. Complainant contends that Respondent is in the business of warehousing domain names and that such practice is bad faith under the Policy.

The Panel finds that the Respondent has a history of acquiring, registering and using domain names in bad faith. See Citizens Financial Group, Inc. v. Forum LLC, WIPO Case No. D2005-1075 (listing 9 cases involving Forum LLC with the same pattern of behaviour); Government Employees Insurance Company (GEICO) v. Forum LLC, WIPO Case No. D2005-1131; PepsiCo, Inc. v. Forum LLC, WIPO Case No. D2005-0737 (confirming Respondent’s continuing pattern of bad faith registration and use of numerous domain names based on third party trademarks).

The Panel concludes that the information provided by the Complainant, including the Respondent’s history, indicates bad faith in the acquisition and use of the subject domain name, and notes that Respondent has done nothing to supplant that indication.

Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.

 

7. Decision

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 <furon.com> be transferred to the Complainant.

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Manoel J. Pereira dos Santos
Sole Panelist

Dated: April 10, 2006