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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Thomson Research Associates Inc., Kroy International Inc. v. Microban Products Company

Case No. D2007-0554

 

1. The Parties

The Complainant is Thomson Research Associates Inc., Kroy International Inc., of Toronto, Ontario, Canada represented by Bereskin & Parr, of Canada.

The Respondent is Microban Products Company of Huntersville, North Carolina, United States of America.

2. The Domain Name and Registrar

The disputed domain names <ultrafresh.com> and <ultrafresh.net> are registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2007, in relation to the domain name <ultrafresh.com>. On April 13, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with that domain name. On April 13, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On April 24, 2007 the Complainant submitted a revised Complaint, to extend the Complaint to also include the domain name <ultrafresh.net>. After the submission on that revised Complaint, on April 24, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with that additional domain name. On April 24, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is also listed as the registrant for additional domain name, 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”), 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 April 30, 2007. After the commencement of the proceedings, the Complainant requested a suspension of the proceedings on the grounds that the parties were “in negotiations and [were] near reaching a settlement”. In accordance with that request, the proceedings were suspended until May 22, 2007. The proceedings were reinstituted after that date and, in accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 15, 2007.

The Center appointed James A. Barker as the sole panelist in this matter on July 2, 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

The following facts were not contested.

The Complainant, together with two related companies, carries on the business of manufacturing and distributing antimicrobial treatments for textiles and other materials under the trade name Thomson Research Associates and the trademark ULTRA-FRESH. The Complainant is the beneficial owner of registered rights in that mark in the United States of America, where the Respondent has its address, and in other countries, through a related company, Kroy International Inc. The Complainant also owns registered rights directly in that mark in a number of countries, including Canada and the EU.

The Complainant maintains a website at “www.ultra-fresh.com”. The Complainant registered that domain name in 1997. The Complainant similarly registered a number of domain names which include its mark ULTRA-FRESH, with various country code extensions.

The Respondent registered the disputed domain names on October 10, 2006 (as indicated by the record’s ‘creation date’ in the WhoIs record).

The Respondent maintains a website at “www.microban.com”. The website describes the Respondent as a leader in “antimicrobial product protection for consumer, industrial and medical products around the world”. The Respondent lists its offices in the United States of America, the United Kingdom, Germany, Canada and Thailand. The term “ultrafresh” does not appear on the Respondent’s websites.

The Complainant provided evidence of a list from Textile World Magazine, listing the Complainant and the Respondent among various competing suppliers of microbial products for textiles.

On January 22, 2007, the Complainant sent a letter to the Respondent demanding the voluntary transfer to the Complainant of the disputed domain names. The Respondent responded to this letter on February 1, 2007, stating that it was “investigating the matter”. The Complainant sent a further letter demanding a response by February 16, 2007, to which no reply was received by that date.

At the date of this decision the disputed domain names did not revert to an active webpage. Rather the disputed domain names revert to a website maintained by the Registrar.

 

5. Parties’ Contentions

A. Complainant

The following is summarized from the Complaint.

The disputed domain names are nearly identical to the Complainant’s registered marks in appearance. They contain the distinctive element of the Complainant’s mark and differ only by the exclusion of the hyphen between the words “ultra” and “fresh”. The omission of the hyphen does not impact in any significant way on the impression created by the disputed domain names in their suggested meaning and appearance.

The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent’s interest in the disputed domain names is to reap the benefits of the goodwill attached to the Complainant’s trademarks to divert Internet users away from the Complainant’s website.

On the balance of probabilities, the Respondent had actual knowledge of the Complainant at the time it registered the disputed domain names. The Respondent could not demonstrate any evidence of a right or legitimate interest within any of the grounds set out in paragraph 4(c)(i) – (iii) of the Policy.

The Respondent has used and registered the disputed domain names in bad faith. The Respondent registered the disputed domain names to cause confusion around the Complainant’s mark and to disrupt the Complainant’s business. Prior to the correspondence between the Complainant and Respondent (referred to above, under “Factual Background”) the disputed domain names reverted to the Respondent’s own website. This use of the disputed domain names, to attract Internet traffic to the Respondent’s website, is evidence of bad faith use and registration. Use of this kind has consistently and frequently been found to be neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.

Furthermore, the Complainant placed the Respondent on notice of the Complainant’s registered trademark rights by letter dated January 22, 2007. While the Respondent did not provide a substantive response, shortly after the letter was sent, the <ultrafresh.com> domain name no long resolved to the Respondent’s website, but rather resolved to the website of the Registrar. (The Complainant submits that these changes are tantamount to an admission of the Respondent’s wrongdoing.)

The Complainant has presumably commercially benefited from using the disputed domain names. Finally, the fact that the Respondent registered both disputed domain names is evidence of a pattern of cybersquatting. It supports a conclusion that the Respondent registered the disputed domain names primarily to disrupt the Complainant’s competing business.

B. Respondent

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

 

6. Discussion and Findings

For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain names are 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 disputed domain names; and

(iii) the disputed domain names were registered in bad faith and are being used in bad faith.

The Complainant must prove each of these three elements, which are discussed in turn below.

A. Identical or Confusingly Similar

There are two matters for the Complainant to establish this element of the Policy.

First, does the Complainant “have rights” in a trademark or service mark. It is clear beyond doubt that the Complaint does. The Complainant provided substantial evidence of its registered rights in the trademark ULTRA-FRESH in a number of jurisdictions. In other jurisdictions it claims to own those rights through an associated company. Regardless, the Complainant does not need to establish that it owns such rights in a number of countries, or that it owns those rights in the country in which the Respondent resides. It is enough that the Complainant demonstrates such rights in one country. The Complainant’s evidence of such rights in a number of countries is therefore more than sufficient to demonstrate this first matter.

Secondly, the Complainant must establish that the disputed domain names are identical or confusingly similar to its registered rights. The Panel finds that the disputed domain names are self-evidently identical to the Complainant’s marks. It is well-established that the “.com” and “.net” extensions are to be disregarded for this purpose. Disregarding those extensions, the only difference between the disputed domain names and the Complainant’s marks is the omission of a hyphen, which is a trivial, non-substantive difference.

The Complainant has therefore established this first element of the Policy.

B. Rights or Legitimate Interests

The Respondent has not demonstrated any rights or legitimate interests in the disputed domain names. Neither is any such right or legitimate interest suggested by any of the surrounding facts of the case, including the information presented on the Respondent’s website.

The word “ultrafresh” does not appear anywhere on the Respondent’s website. That term is clearly not an element of the Respondent’s business name. While the mark ULTRA-FRESH might be regarded as to an extent descriptive, there is no evidence that it is so descriptive that a right or legitimate interest could be inferred to the Respondent. The evidence of the Respondent’s own website suggests that the term is not inherently descriptive of the Respondent’s business, since that term appears nowhere on the Respondent’s website. There is otherwise no evidence of a link between the term “ultrafresh” and the Respondent.

In combination with this, the Complainant provided substantial evidence of having registered rights in its mark in a number of countries, in the same business as that of the Respondent (the business of providing antimicrobial treatments for textiles). The Complainant also operates a website at a substantially identical domain name (<ultra-fresh.com>). This background suggests more strongly that the Respondent lacks separate rights or legitimate interests in the disputed domain names.

In addition, the Complainant has clearly established a prima facie case against the Respondent. Having established that case, the burden then shifts to the Respondent to demonstrate its rights or legitimate interests. The Respondent’s default means that it has not met this burden.

The Panel therefore finds that the Complainant has established this second element.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iii) of the Policy provides that there is evidence of bad faith where the Respondent has “registered the domain name primarily for the purpose of disrupting the business of a competitor”. Paragraph 4(b)(iii) does not require a particular kind or level of intended disruption. It is enough if some kind of disruption is primarily intended.

The Respondent and Complainant are apparently competitors in a defined and particular field – that of antimicrobial treatments. In these circumstances, it is highly unlikely that the Respondent was not aware of the Complainant when it registered the disputed domain names. The Complainant gave evidence of having registered rights in, and of marketing itself under, its ULTRA-FRESH mark well before the registration of the disputed domain names.

As noted above, the disputed domain names are virtually identical to the Complainant’s mark, which appears relatively distinctive in its particular field. Being identical, there is an obvious likelihood of confusion. That likelihood of confusion would, by itself, be disruptive to the Complainant’s business. With its likely knowledge of the Complainant, the Panel finds that the Respondent primarily had some disruptive purpose, within the meaning of paragraph 4(b)(iii) of the Policy.

As such, in the circumstances of this case, the Panel finds that the likely creation of confusion by the Respondent’s registration of the disputed domain names was not in good faith. There is no other evidence that the Respondent actually used the disputed domain names for a bona fide purpose. In the circumstances of this case, it would be difficult to conceive of a circumstance in which the Respondent might demonstrate that it registered and used the disputed domain names for such a bona fide purpose.

Paragraph 4(b)(iii) of the Policy does not require evidence of actual disruption, although such evidence would more strongly demonstrate that the Respondent had a disruptive purpose. But in this case, evidence of actual disruption can be drawn from the fact that the Respondent registered virtually identical domain names to the Complainant’s mark which (as evidenced by the Complainant), for a period, were linked to its own website, even though neither the Respondent nor its website have any apparent relationship with the term “ultrafresh”. Such conduct is more than just sharp practice between two competitors in the same field. Rather, it appears to be the kind of conduct to which paragraph 4(b)(iii) of the Policy is designed to prevent.

For these reasons, the Panel finds that the Complainant has demonstrated this third element.

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 names, <ultrafresh.com> and <ultrafresh.net>, be transferred to the Complainant.

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James A. Barker
Sole Panelist

Dated: July 17, 2007