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WIPO Arbitration and Mediation Center
Tremco Incorporated v. IA Consulting, Inc.
Case No. D2003-0997
1. The Parties
The Complainant is Tremco Incorporated, Beachwood, Ohio, United States of America, represented by Calfee, Halter & Griswold, United States of America.
The Respondent is IA Consulting, Inc., C/O Yen Chun, Li., Taipei, Taiwan, Province of China.
2. The Domain Name and Registrar
The disputed domain name <tremco.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 16, 2003.
On December 17, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. eNom failed to submit a verification response. Therefore, the Center made a Whois printout on December 30, 2003, which showed that the disputed domain name was registered with eNom, and that the Respondent, IA Consulting, Inc., was the current registrant of the disputed domain name. The Panel would like to remind the Registrar of the importance of providing a verification response so that the Center can ascertain the contact information of the Respondent and provide appropriate notice and furthermore to ensure that the domain name registration remains locked during the UDRP proceedings.
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 December 30, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2004.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on February 9, 2004. 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 United States company located in Ohio and since 1930, has had extensive and long-standing rights in TREMCO mark, including registrations in United States, Canada, Europe and Asia. From the evidence submitted by the Complainant, as annexes to the complaint, TREMCO INCORPORATED owns eighty-four (84) trademark applications and registration, all referred to Tremco.
The Respondent is the current registrant of the disputed domain name. The website to which the domain name resolves, displayed until March 2003, a prominent statement "contact us - for sale", and currently displays a statement "contact us", which leads to two e-mail addresses. The site also operates as a portal to different sites relating to various topics.
The Respondent was involved in other cases , as follows: Emprise Financial
Corp. v. Li Yen Chun, eRes Case No. AF 0890; The British Council
v. Mr. Li Yen Chun, WIPO Case No D2001-0997;
eNamix, Inc. v. Li Yen Chun, WIPO Case
No D2001-1499; Fortum Corporation v. Li. Yen Chun, WIPO Case
No D2002-0324; Bioland e.V v. Lee Yi, WIPO
Case No D2002-1147.
5. Parties’ Contentions
Complainant alleges that Respondent and Yen Chun Li are related and are most probably the same person. The latter, on his own or acting on behalf of IA Consulting, has been the Respondent in no less than five (5) previous decisions where transfer of the contested domains names in favour of the Complainant was ordered. According to Whois records, IA Consulting and Yen Chun Li have the same address. Furthermore, according to a search of a domain name database in January 2003, there were 16 domain name registrations in the name of the Respondent (under IA Consulting Inc.) and has in the past registered over 170 domain names. It is also noted that under the Yen Chun Li persona there are over 130 current domain name registrations.
The Complainant claims that the disputed domain name is identical to the Complainant’s trademark.
The Complainant further states that the Respondent has no rights or legitimate interests in the domain name because:
a. The Complainant is the sole owner of the TREMCO trademark.
b. The Respondent has no consent, has no license, and has no authorization to use the trademarks or to register any domain name identical or confusingly similar to any of the trademarks.
c. The Respondent has not used the mark in connection with a bona fide offering of goods and services since the Respondent only uses the domain name as a portal site to direct users at Respondent’s profit to linked affiliates with no connection whatsoever to the trademarks. Furthermore, the mere use of a portal page comprised entirely of links unrelated to the domain name is not in itself a use accorded under the Policy and the Rules.
d. The Respondent has not been commonly known by the domain name or any variation of the word tremco.
e. Respondent’s use of the domain name by Respondent is clearly for commercial gain and is not being used in connection with any form of parody or other commentary or criticism of complaint.
Respondent registered and is using the domain name in bad faith as the evidence shows that:
a. the disputed domain is used primarily for the purpose of selling the registration to the owner of the trademark or to a competitor of the owner of the mark;
b. that Respondent’s registration of the domain name prevents Tremco Incorporated from reflecting its trademark TREMCO in the domain name;
c. that Respondent is using the domain name in an intentional attempt to attract, for commercial gain, Internet users to Respondent’s website or other on-line location by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website; and
d. that the Respondent has violated paragraph 2 of the Policy which states that "it is (registrant’s) responsibility to determine whether (its) domain name registration infringes or violates someone else’s rights".
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy it is necessary that the Complainant must prove, as required by Paragraph 4(a) of the Policy, that:
(i) the contested 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to "decide the dispute based upon the complaint". Under Paragraph 14(a) of the Rules in the event of such a "Default" the Panel is still required "to proceed with a decision on the complaint", whilst under Paragraph 14(b) it "shall draw such inferences therefrom as it considers appropriate". This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate.
Thus where a party fails to present evidence in its control, the Panel may
draw adverse inferences regarding those facts. (Mary-Lynn Mondich and American
Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques,
WIPO Case No D2000-0004; State of Wisconsin
v. Pro-Life Domains, Inc., WIPO Case No D2003-0432).
Here, since Respondent has defaulted, it is appropriate to accept the facts
asserted by Complainant and to draw adverse inferences of fact against Respondent.
A. Identical or Confusingly Similar
Complainant has made continuous use of its registered and incontestable mark, TREMCO, since 1930 thus, has spent much time, money and effort promoting the mark and has established significant good will.
The disputed domain name <tremco.com> incorporates Complainant’s entire mark so the disputed domain name is therefore identical to Complainant’s registered and incontestable mark.
The Panel therefore concludes that the Complainant has satisfied the requirements of Paragraph 4(a) (i) of the Policy.
B. Rights or Legitimate Interests
The Respondent did not file a response to the Complaint, and thus did not make
any assertions of interest in the domain name as provided for in paragraph 4(c)
of the Policy. As stated by the Panel in Cornell Trading Inc v. Web-Interactive.com
Inc., WIPO Case No D2000-0887, the
burden of proof shifts where the Complainant presents a prima facie showing,
which is the case here.
No evidence that is before this Panel suggests that the Respondent has any rights or legitimate interests in the domain name: The Respondent is not known by the disputed domain name, neither did the Complainant grant any license or authority to use the Complainant’s trademark, nor did the Respondent make a legitimate noncommercial or fair use of the domain name.
Indeed, there is no evidence of the Respondent’s use or demonstrable preparations
to use the domain name in connection with a bona fide offering of goods and
services as Respondent’s only use as a portal site which is accessible not only
through the <tremco.com> domain, but also through various active United
States trademarks registrations such as <tanjay.com>, <simax.com>
and <pagode.com>. In each case the website is essentially identical to
the <tremco.com> website, differing only in the domain name listed at
the top of the page and the addition of the words "For Sale" under
the domain name. In the Tremco case the "for sale" appeared until
March 2, 2003, "clearly showed that Respondent had no intentions
to use his portal page in a bona fide manner to establish consumer goodwill
or trademark rights in the domain" as described in eNamix, Inc. v. Li
Yen Chun, WIPO Case No D2001-1499.
The Panel thus finds that the Respondent does not have any rights or legitimate interests in the domain name in question.
C. Registered and Used in Bad Faith
It is clear from the evidence adduced before this Panel that the Respondent had no business reason for the registration of the domain name <tremco.com> except to sell it to the Complainant or to a competitor. Such an inference may be drawn from the fact that, at least until March 2003, the disputed domain name displayed a prominent statement "for sale, contact us" which led to two e-mail addresses.
The Policy also requires the Complainant to demonstrate that the disputed domain name is being used in bad faith. Upon the evidence submitted, this Panel believes that the Respondent uses the domain name primarily with the intention of selling it for a valuable consideration in excess of the Respondent’s cost or, alternatively to attract viewers to its portal page and to redirect user to its affiliated sites for Respondent's commercial gain: using the trademark (Tremco and many others) as a domain name (<tremco.com>) attracts more users to the Respondent's portal website so, the greater the likelihood that a user will click on a portal link and complete a transmission to a linked affiliate.
For these reasons, the Panel finds that the Respondent’s intentions were either to sell the domain name or to create a likelihood of confusion with the Complainant’s trademark as to the source, affiliation or endorsement in order to attract customers for commercial gain (art. 4 (b) (i) and (iv) of the Policy).
In sum, the Panel finds that the domain name has been registered and used in bad faith.
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, <tremco.com> be transferred to the Complainant.
Dated: February 23, 2004