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Starlinger & Co Gesellschaft m.b.H. v. Aureo Exim Private
Case No. D2004-0333
1. The Parties
The Complainant is Starlinger & Co Gesellschaft m.b.H., Vienna, Austria, represented by Kopecky & Schwarz, Austria.
The Respondent is Aureo Exim Private Limited, Calcutta, West Bengal, India,
2. The Domain Name and Registrar
The disputed domain name <adstarbags.com> is registered with Direct Information
Pvt Ltd. dba Directi.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2004. The Complaint identified as Respondent “Myweboptions” of Kolkata (Calcutta), West Bengal, India. On May 6, 2004, the Center transmitted by email to Direct Information Pvt Ltd. dba Directi.com a request for registrar verification in connection with the domain name at issue. On May 7, 2004, Directi.com transmitted by email to the Center its verification response stating that the Respondent had changed to Aureo Exim Private Limited and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 12, 2004, by e-mail and May 14, 2004, by hardcopy. The Center verified that the Complaint together with the amendment to 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 May 17, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2004.
The Center appointed Angelica Lodigiani as the sole panelist in this matter
on June 10, 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,
4. Factual Background
The Complainant is an Austrian company, owner of the trademark ADSTAR, registered in more than 60 countries, including the United States of America and as an International Registration with more than 30 designations (IR 660 038). Additional trademark applications for ADSTAR on behalf of the Complainant are pending in various countries, amongst others in India and the OAPI States. The Complainant has enclosed to its Complaint a complete schedule of the Complainant’s ADSTAR trademarks and trademark applications (Annex 3-1); the registration certificates of the trademark ADSTAR in Austria, Australia, Brasil, Canada, Chile, Great Britain, Guatemala, Indonesia, Iraq, South Korea, Malaysia, Mexico, Pakistan, Philippines, Saudi Arabia, South Africa, United States of America and WIPO (International Registration) are also enclosed (Annexes 3-2 to 3-19). In particular, Annex 3-14 refers to three ADSTAR trademark applications in India. Except for Nigeria, Tanzania and the OAPI States, the applications for the trademarks ADSTAR date back to the years 1995 and 1996, respectively.
All ADSTAR trademarks claim protection for goods in classes 7 and 22. Some of these trademarks also cover goods in class 16.
The Complainant uses the ADSTAR trademark to identify bags made of polymer
fabrics as well as for machinery for producing these special bags and sacks.
These bags, and the process for producing them is patented world-wide. The Austrian
priority patent application was filed on May 4, 1994. The Complainant has enclosed
to its Complaint a schedule of all granted or applied for patents in almost
70 countries (Annex 4-1).
5. Parties’ Contentions
According to the Complaint, the Complainant has been using its ADSTAR trademark world-wide since 1995 to identify special bags and sacks made of polymer fabrics as well as for machinery for producing these special bags and sacks. The Complainant is recognized as the world's leading supplier of the complete range of machinery for woven plastic sacks. Satisfied customers in over 130 countries testify to the reliability and high performance of Starlinger machinery and turn-key plants. Indeed, according to the Complaint, to a brochure enclosed as Annex 5, and to a review about the ADSTAR bags and sacks published in the periodical WORLD CEMENT (Annex 6), the advantage of the Complainant’s patented ADSTAR bag over all others on the market is that it virtually eliminates the problem of sack breakage during handling and transportation and that it is suited to all types of automated filling and handling procedures.
According to the Complaint, the Complainant’s customers who buy these machines and plants are given a non-exclusive license to the “BAG” patent in their country, but are not allowed to grant sub-licenses. The Complainant not only offers the hardware, but also complete assistance for its customers to bring up their plants, achieve and maintain highest production standards. The Complainant even assists its customers in introducing their bags on the market. Typically, the experienced planners of the Complainant tailor the ADSTAR sack producing plants to the specific demands of their customers. They advise the customers as to how to optimize their investments and still acquire all the equipment essential to produce full ADSTAR quality. During the past years, the trademark ADSTAR has become a synonym for high quality bags made of plastic fabrics as well as for the Complainant’s machinery to produce these bags. In order to maintain the high quality and good reputation of its products, the Complainant only relies on carefully selected distribution and support partners. The Complainant attaches great importance to maintaining the good reputation of its mark ADSTAR and defends its mark against abuse by third parties.
According to the Complainant, the domain name <adstarbags.com> is confusingly similar to its ADSTAR trademark. Indeed, the disputed domain name consists of the Complainant’s trademark to which the descriptive word “bags” is added. The term “bags” describes the goods claimed by the Complainant’s trademark. Therefore, the domain name <adstarbags.com> is confusingly similar to the Complainant’s trademark ADSTAR. See, inter alia, WIPO panel decisions GA Modefine SA v. AES Optics (<armani-sunglasses.com>, WIPO Case No. D2000-0306), Volvo Trademark Holding AB v. Peter Lambe (<volvoexhausts.com>, WIPO Case No. D2001-1292), Nokia Corporation v. Nokia Ringtones & Logos Hotline (<worldnokia.com>, WIPO Case No. D2001-1101). The Complainant states that many WIPO panels have held that confusion is still likely when a distinguishing word is added to the principal element of a trademark, e.g. America Online, Inc. v. Anthony Tirona (WIPO Case No. D2001-0645), Professional Golfers Association of America, Inc. v. Robert Baldwin (<PGADeals.com>, WIPO Case No. D2000-0339). Since, in the present case, the added word “bags” is not even distinguishing, but merely descriptive, there is a confusing similarity between ADSTAR and ADSTARBAGS.
Furthermore, according to the Complainant, the Respondent does not have any legitimate interest or right in the name “ADSTAR”. The Respondent is neither commonly known by this word nor by the domain name. Further, the Respondent is not associated, connected with or authorized by the Complainant in any way and never has been. The Complainant has not given license or other permission to the Respondent to use its trademarks or to apply for any domain name incorporating its trademarks. The Complainant states that the Respondent does not use the domain name in connection with a bona fide offering of goods or services, nor can any preparations to such a use be found. On the contrary, the Respondent just refers to the Complainant’s products, as it appears from the following statement taken from the page “About us” (Annex 7-1) of the website “www.adstarbags.com”:
“With the introduction of Block Bottom Laminated PP bags - also known as AD*STAR bags, there has been a revolution in the packaging medium. Aureo was amongst the first to introduce these bags to the Indian industries.”
According to the Complainant, there are no business connections between the Complainant and the Respondent, nor have there ever been, nor is the Respondent an authorized partner or reseller of the Complainant. Further, the above statement gives the impression that the term “ADSTAR bags” has become a generic term for block bottom laminated PP bags. However, in the Complainant’s view, this is not true: ADSTAR is the Complainant’s trademark and nobody else but the Complainant and its licensees are entitled to use this term.
Finally, according to the Complainant, the disputed domain name was certainly registered in bad faith. The Complainant’s trademarks and trademark applications of ADSTAR date back to the years 1995 and 1996, whereas the domain name <adstarbags.com> was registered only on August 27, 2002. Accordingly, in the Complainant’s view, the Respondent was aware of the Complainant’s trademark ADSTAR when registering its domain name. This circumstance is deducted from the fact that the following sentence is displayed at the bottom of every page and sub-page of the website “www.adstarbags.com”: “AD*STAR® is a registered trademark of STARLINGER & Co – Austria”.
According to the Complainant, with this sentence on every page of his website (Annexes 7-1 to 7-6) the Respondent pretends to be allowed to use the ADSTAR trademark. Further, Internet search machines will provide hits for the search term “ADSTAR”, which guide the Internet users to the Respondent’s website. Obviously the Respondent has deliberately included the trademark ADSTAR in the disputed domain name in order to attract business and, at the same time, disrupt the business of the Complainant.
Furthermore, according to the Complainant, by registering and using the domain name <adstarbags.com> the Respondent has created the incorrect impression of association with the Complainant, thereby creating confusion with the trademark ADSTAR. This proves that the Respondent intentionally exploits the goodwill and worldwide reputation of the Complainant and its trademark to create traffic to his website operating under the domain name <adstarbags.com>. In his website the Respondent makes every effort to create confusion with the trademark ADSTAR and with the Complainant and its goods. The Respondent does not even shrink back from exploiting the Complainant’s advertising material and information brochures. For instance, all the photographs and diagrams as well as most of the textual explanations of the Complainant’s brochure about ADSTAR bags (Annex 5) are copied in the pages “Production” (Annex 7-2), “Design to fit” (Annex 7-3), “Environment” (Annex 7-4) and “Handling” (Annex 7-5) of the website “www.adstarbags.com”. Moreover, when comparing the figure about financial benefits achieved by ADSTAR sacks in Syria, South Africa and Nigeria with the review about the ADSTAR bags and sacks published in the periodical WORLD CEMENT, November 2001 (Annex 6), one can see that this figure has been pasted in the page “Financial benefit” of the Respondent’s website (Annex 7-6). Thus, additionally to the trademark infringement and bad faith registration of the domain name, the Respondent also violates Complainant’s copyrights and commits unfair competition, which, however, is not an issue to be examined in this venue.
The Complainant makes reference to the decision in GA Modefine SA v. AES Optics (<armani-sunglasses.com>, WIPO Case No. D2000-0306) for the principle that bad faith may be presumed in the registration and use of the domain name consisting wholly or partly of the famous trademark of a third party. The trademark ADSTAR is well known in the packaging industry. This fact has even been admitted by the Respondent on its website, see the above cited statement: “With the introduction of Block Bottom Laminated PP bags - also known as AD*STAR bags, there has been a revolution in the packaging medium” (Annex 7-1).
Finally, according to the Complainant, the registration of the disputed domain name prevents the Complainant from reflecting its trademark ADSTAR in a corresponding domain name.
For all the aforesaid reasons, the Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions. The Panel,
in compliance with Paragraph 14 of the Rules, shall therefore proceed to a decision
on the Complaint and shall draw such inferences therefrom as it considers appropriate.
6. Discussion and Findings
According to Paragraph 4(a) of the Policy, in an administrative proceeding, the Complainant must prove that each of following three elements are present: (1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel believes that the disputed domain name is confusingly similar to the Complainant’s ADSTAR trademarks. The domain name subject of this procedure merely consists of the reproduction of the Complainant’s trademark followed by the term “bags”. The latter term makes express reference to the goods identified by the Complainant’s trademarks in classes 16 and 22 (“sacks”, of which “bags” is a synonym).
The mere addition of a generic term to a third party’s trademark is insufficient to avoid a likelihood of confusion between the domain name and the Complainant’s trademarks. Furthermore, whenever the generic word added to the Complainant’s mark is precisely the term making reference to the goods for which this mark is used, confusing similarity, rather than being removed or reduced, is inevitable (See WIPO Case No. D2001-0456 of June 6, 2001, Harrods Limited v. Peter Pierre; see also WIPO Case No. D2001-0110 of April 2, 2001, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.).
Accordingly, the Panel finds that the first condition is met.
B. Rights or Legitimate Interests
According to Paragraph 4(a) of the Policy, the Complainant must prove that the Respondent lacks rights or legitimate interests in the disputed domain name. Since proving a negative circumstance is always difficult and burdensome, and often almost impossible, previous Panel's decisions have established that prima facie evidence of the lack of rights or legitimate interests is sufficient to shift the onus of proof from the Complainant to the Respondent.
Under Paragraph 4(c) of the Policy, the Respondent may demonstrate that he has rights to and legitimate interests in the domain name by proving that:
(i) before any notice of the dispute to the Respondent, the Respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademark.
According to the Complaint, the Respondent is using the domain name as its website to promote the sale of the Complainant’s ADSTAR products. More specifically, the Respondent represents himself as the first who introduced the AD*STAR bags to the Indian Industries (see Annex 7-1). However, according to the Complaint, there are no business connections between the Complainant and the Respondent, nor have these business connections ever existed. The Respondent is not an authorized partner or reseller of the Complainant, nor one of the Complainant’s authorized distributors
In the absence of any contrary allegation from Respondent, the Panel believes that the Complainant’s statement that there is no business relationship between the Complainant and the Respondent is true. Accordingly, the Respondent should not be considered an authorized dealer of the ADSTAR products in India. Hence, it should be concluded that the Complainant never authorized the Respondent to adopt the Complainant’s trademark as part of its domain name. This is even more so if one considers that even if the Respondent were an authorized supplier of the ADSTAR goods, this circumstance is not in itself sufficient to provide the Respondent with a right to use the Complainant’s trademark as part of its domain name (See WIPO Case No. DWS2001-0004 of February 25, 2002, Nokia Corporation v. David Wills; WIPO Case No. D2000-0113 of April 13, 2000, Stanley Works and Stanley Logistics Inc. v. Camp Creek Co.; WIPO Case No. D2000-0079 of April 20, 2000, Motorola Inc. v. Newgate Internet Inc.).
Therefore, despite the fact that the Respondent is using the domain name, it cannot be said that the domain name is used in connection with a bona fide offering of goods and services, when the offering of the Respondent’s services occur through a domain name which illegitimately reproduces the Complainant’s mark. Furthermore, for the same reasons mentioned above and for those highlighted in the following paragraph, the Respondent is not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.
Accordingly, the Panel believes that also the second condition is met.
C. Registered and Used in Bad Faith
According to Article 4(a)(iii) of the Policy, the Complainant must prove that the Respondent registered and used the domain name in bad faith.
Article 4(b) of the Policy lists a series 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. Among these are circumstances indicating that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
In the Panel’s view, the circumstances described in the Complaint, and which have not been objected to by the Respondent, demonstrate that the Respondent registered and used the domain name <adstarbags.com> in bad faith.
The Respondent was well aware of the Complainant’s trademark when it registered the domain name. First, most of the Complainant’s trademark applications, including the ADSTAR Indian trademark applications - which concern the Respondent’s country of origin - where filed back in 1996, while the disputed domain name was only registered in 2002. Second, according to the Complainant’s promotional material (Annex 5), the Complainant has a production plant for the ADSTAR sacks in India. Third, at the bottom of every page corresponding to the address “www.adstabags.com”, a sentence is displayed stating: “AD*STAR® is a registered trademark of STARLINGER & Co - Austria.” Fourth, as mentioned in the Complaint, many photographs and texts contained in the pages of the Respondent’s website corresponding to the disputed domain name are copied from the Complainant’s promotional material (Annex 5).
Accordingly, when the Respondent registered the domain name <adstarbags.com> it was aware of the Complainant’s rights over the ADSTAR trademark. Nevertheless, it proceeded with the registration of a domain name which, not only reproduces integrally the Complainant’s trademark, but also makes direct reference to the Complainant’s activities and products (“bags”). It is therefore clear that the Respondent’s intention at the time of the registration of the disputed domain name was that of taking advantage of the Complainant’s trademark to attract Internet users to its website for commercial gain.
Hence, the registration of <adstarbags.com> was made in bad faith.
As far as the use in bad faith is concerned, as mentioned above in the Panel’s view it is clear that the Respondent registered the domain name in order to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. As said above, the Respondent pasted part of the Complainant’s promotional material referring to the ADSTAR sacks in its website, and makes reference to the Complainant’s trademark in such website with sentences like “AD*STAR® is a registered trademark of STARLINGER & Co – Austria” and “With the introduction of Block Bottom Laminated PP bags - also known as AD*STAR bags, there has been a revolution in the packaging medium” (Annex 7-1).
All these circumstances are likely to lead the Internet user to believe that there is some sort of connection between the Complainant and the Respondent. The Respondent is using the website corresponding to the domain name <adstarbags.com> for commercial gain: through this website it promotes its activity of supplying and servicing its customers in the packaging field. It is therefore clear that the Respondent is seeking to take unfair advantage of the Complainant’s trademark in order to attract, for commercial gain, Internet users to its website. Accordingly, the Panel believes that the Respondent is using the domain name <adstarbags.com> in bad faith.
The Panel is therefore satisfied that also the third condition is met.
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 <adstarbags.com> be transferred to the Complainant.
Date: June 28, 2004