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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

International Precious Metals Institute v. IPMI DIRECT

Case No. D2008-1009

 

1. The Parties

The Complainant is International Precious Metals Institute, Pensacola, Florida, United States of America, represented by Thompson Coburn LLP, United States of America.

The Respondent is IPMI DIRECT, Mumbai, Maharashtra, India.

 

2. The Domain Name and Registrar

The disputed domain name <ipmidirect.com> is registered with GoDaddy.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2008. On July 4, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On July 5, 2008, GoDaddy.com, Inc. 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”), 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 July 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2008.

The Center appointed Richard Tan as the sole panelist in this matter on August 7, 2008. 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 non-profit organization known as the International Precious Metals Institute, with the acronym “IPMI”, established in 1976. It is an international association of producers, refiners, fabricators, scientists, users, financial institutions, merchants and members of the general precious metals community formed to provide a forum for the exchange of information and technology. It also sponsors a library, several publications and seminars and conferences related to precious metals. It has used the IPMI mark since its inception in 1976 in connection with its services. It has not registered any trademarks bearing the mark IPMI, but has used the mark extensively and continuously since 1976 and has also maintained a website “www.ipmi.org” and owns this domain name.

The Respondent’s domain name was registered on January 31, 2007. It resolves to a website which, amongst other things, makes reference to the Complainant and its services. The website also advertises and contains information on “Rice Puller”, “Lebbo Coin” and “Iridium Power”, and claims that the owner of the website is a partner holding a “magical and powerful” copper iridium Lebbo coin that it wishes to sell or “make productive use of”.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

(a) The disputed domain name <impidirect.com> is confusingly similar to the Complainant’s IPMI trade mark. Even though the Complainant has not registered a trade mark in respect of this mark, it has had long and extensive use of the unregistered mark and acquired common law rights in that mark as to fulfill the requirements of the Policy. It has used the mark IPMI since 1976 when the association was formed. It maintains three local chapters in the United States and has nearly 70 member companies throughout the world and 800 individual members. It also maintains an active presence on the Internet through its website “www.impi.org”, which promotes its services in connection with the IPMI mark. The disputed domain name is confusingly similar to the Complainant’s mark and the addition of the descriptive term “direct” does nothing more than exploit the trade mark significance of that mark and only increases the risk of confusion.

(b) The Complainant contends that it has no commercial relationship or association with the Respondent or any company linked to the Respondent. The Respondent has not demonstrated any rights or legitimate interests in the disputed domain name. As such, there exists no legitimate reason for the Respondent to use the Complainant’s business name, trade mark and domain name as its domain name. The references in the website of the Respondent to the Complainant were copied verbatim from the Complainant’s own website. The only reason for this was to pass the Respondent and its business activities as and for the Complainant and its activities by misleading consumers and attracting them to its website, for its own commercial benefit. The Respondent lacks any rights or legitimate interests in the disputed domain name.

(c) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent has registered the disputed domain name to intentionally attract Internet users to its website for commercial gain by creating a likelihood of confusion. The Respondent’s website also features a scrolling banner claiming that “IPMI is the only organization in the world that can legally trade on COPPER-IRIDIUM worldwide” and the entire “About International Precious Metal Institution” is copied from the Complainant’s website. The website contains “outlandish” information and advertisements about 200 gram Copper Iridium Lebbo Coin” for sale and is trying to use the fame and goodwill of the mark to attract users to the Respondent’s website for commercial gain. Such use constitutes bad faith use and registration of the Complainant’s mark. The disputed domain name was also registered for the purpose of disrupting the business of the Complainant by providing questionable information about “Rice Puller”, “Lebbo Coins” and the power of “Iridium” in connection with information and images that may confuse users into believing that the Complainant owned the website or was in some way connected with it, with the result that the Complainant’s reputation would also be tarnished. The Complainant also adduced evidence that the Respondent’s website contained references to another party, Brink’s, as the owner of the website, which information was false. The information posted was taken down when Brink’s complained, but the information was subsequently re-posted.

B. Respondent

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

 

6. Discussion and Findings

The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:

(i) that the Respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

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

(iii) that the Respondent’s domain name has been registered and is being used in bad faith.

The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint.” Paragraph 14(b) further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences” from the Respondent’s failure to comply with the Rules “as it considers appropriate.”

As the Respondent has not submitted a Response, and there having been no exceptional circumstances brought to the attention of the Panel, in accordance with paragraph 5(e) of the Rules, this Panel is entitled to decide the dispute based on the Complaint and to accept as true the factual averments of the Complaint for the purposes of these proceedings: Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

The Respondent’s default, however, does not lead to an automatic ruling in favour of the Complainant. The burden remains on the Complainant to establish, on a balance of probabilities, the requirements of the Policy: World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827.

A. Identical or Confusingly Similar

The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights.

Paragraph 4(a)(i) of the Policy refers merely to a “trademark or service mark” in which the Complainant has rights, and does not expressly limit the application of the Policy to a registered trade mark or service mark. Further, the WIPO Final Report on the Internet Domain Name Process (The Management of Internet Names and Address: Intellectual Property Issues, April 1999), from which the Policy is derived, does not distinguish between registered and unregistered trade marks and service marks in the context of abusive registration of domain names. It has come to be well established that unregistered common law rights in a trade mark or service mark will suffice for the purpose of the Policy in an appropriate case. It is enough that a complainant shows that the mark or name has become a distinctive identifier associated with that complainant or its goods and services. Such evidence would include, amongst other things, the length of use of the mark, the nature and extent of any such use in advertising, and consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit a complainant’s rights in a common law trademark. Unregistered rights can also arise even when a complainant is based in a civil law jurisdiction. See Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083; Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786, and Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322 among others.

The Complainant in this case has used the mark IPMI since 1976 when the organization was first formed. It has adduced evidence of a directory of members in 1976-77. It says that it maintains three local chapters in the United States and has nearly 70 member companies throughout the world and 800 individual members. It also maintains an active presence on the Internet through its website “www.impi.org”, which promotes its services in connection with the IPMI mark.

Having regard to the evidence adduced by the Complainant in relation to its mark IPMI and its long use since 1976 and the use of the mark in connection with its services over the Internet through its website, this Panel is prepared to find that the Complainant has established a reputation and goodwill in the mark that has sufficiently identified the mark with the Complainant, and has accordingly established rights in its unregistered, common law mark. It is also a strong indication of the widespread reputation enjoyed by the Complainant in the mark that the Respondent has in its website also referred to the Complainant and its mark.

The disputed domain name is not identical to the Complainant’s trade mark IPMI in that it contains the additional generic and non-distinctive word “direct”. The addition of a generic or descriptive term does not however in the Panel’s view distinguish the domain name from the mark IPMI which is unique and distinctive. It is well-established under the Policy that a domain name composed of a trade mark coupled with a generic or descriptive term can still be regarded as confusingly similar to the trade mark.

This Panel finds that the disputed domain name is confusingly similar to the IPMI mark in which the Complainant has rights.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a disputed domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trade mark or service mark rights; or

(iii) you [the Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Respondent has not filed a Response to the Complaint. It has not demonstrated that it has any rights or legitimate interests in the disputed domain name.

In the absence of any Response, this Panel accepts the Complainant’s contentions that it has no commercial relationship or association with the Respondent or any company linked to the Respondent, and that there was and is no apparent legitimate reason for the Respondent to use the Complainant’s trade mark as its domain name. The references on the website of the Respondent to the Complainant were not authorized by the Complainant and this Panel accepts that the likely reason for this was, as the Complainant contends, to pass the Respondent and its activities off as those of the Complainant and its activities, and to unfairly mislead consumers and divert traffic to the Respondent’s website, for the latter’s benefit. The Panel has little hesitation based on the available record in finding that the Respondent lacks any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, further demonstrate that the disputed domain name has been registered and used in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”, namely:

(i) circumstances indicating that you [the Respondent] 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 trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you [the Respondent] 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 [the Respondent] 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 web site or location or of a product or service on your web site or location.

The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith.

The Panel notes that the Respondent’s website features information about the Complainant using passages such as “IPMI is the only organization in the world that can legally trade on COPPER-IRIDIUM worldwide”. Parts of the Complainant’s website have also apparently been copied wholesale, such as the entire section on “About International Precious Metal Institution”. The website also contains extravagant claims to advertise goods for sale such as its “Copper Iridium Lebbo Coin” and “Rice Puller”. The Panel accepts that the Respondent has in all likelihood been attempting to use the fame and goodwill of the Complainant’s mark to attract users to the Respondent’s website for commercial gain. Such use constitutes bad faith use and registration of the Complainant’s mark.

The Panel also accepts the Complainant’s contention that the disputed domain name may well also have been registered for the purpose of disrupting the business of the Complainant, by inter alia providing questionable information about “Lebbo coin” and the power of “Iridium”. The content of the website may indeed be capable of confusing users into thinking that the Complainant had some affiliation with the Respondent or was in some way connected with it, with the result that the Complainant’s reputation could also be tarnished or damaged.

The Respondent has not submitted any evidence to rebut the Complainant’s claims. In the absence of such evidence, the Panel accepts the Complainant’s contentions that Respondent has registered the disputed domain name to intentionally attract Internet users to its website for commercial gain by creating a likelihood of confusion and has disrupted the Complainant’s activities and business. In the Panelist view, the domain name was in all likelihood registered with knowledge of the Complainant’s trade mark, a conclusion re-inforced by the various references on the website to the Complainant.

In view of the above, the Panel accordingly finds on balance that the Respondent has registered and is using the disputed domain name in bad faith.

 

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 <ipmidirect.com> be transferred to the Complainant.

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Richard Tan
Sole Panelist

Dated: August 21, 2008