Uline, Inc. v. A.M. Kutub Uddin
Case No. D2015-1742
1. The Parties
The Complainant is Uline, Inc. of Pleasant Prairie, Wisconsin, United States of America (“United States”) , represented internally.
The Respondent is A.M. Kutub Uddin of Chittagong, Bangladesh.
2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2015. On September 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 2015, the Registrar 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” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 8, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2015. On October 30, 2015, the Center received a brief email communication from the Respondent, dealt with further below.
The Center appointed Antony Gold as the sole panelist in this matter on November 12, 2015. 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.
On November 24 2015, the Panel made a Procedural Order inviting the Respondent to submit further evidence relating to its use of the disputed domain name and its trading style within a specified period of five days. The Respondent did not provide any response to the Order.
4. Factual Background
The Complainant is based in the United States and distributes a wide variety of products including packaging and shipping supplies, tapes and tape accessories. It has a United States trademark registration number 4,284,651 for ULINE in a number of classes, including International Class 17 for adhesive tape for industrial or commercial packaging, and United States trademark number 4, 034,337 for ULINE.COM in International Class 35.
The disputed domain name was registered on June 24, 2015. As at August 10, 2015 it pointed to a website which purported to be operated by “Uline Tape Co”. The webpage to which the disputed domain name points shows an image of what would appear to be a roll of industrial or adhesive tape. The brand of tape shown on the roll is not that of the Respondent. The narrative on the home page of the website includes a claim that the Respondent has been a leading manufacturer of adhesive tape in Bangladesh since 2010.
5. Parties’ Contentions
The Complainant draws attention to its trade mark rights as set out above. It says that the disputed domain name is confusingly similar to its ULINE trade mark on the basis that it comprises the Complainant’s trade mark in its entirety followed by the suffix “bd”. It says that the addition of this term, being a recognized geographical descriptor for Bangladesh, is insufficient to avoid confusing similarity with its trade marks.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. In support of this contention it says that the Respondent’s website does not sell, distribute or manufacture the Complainant’s branded tape products. It says also the Respondent does not appear to be known by the disputed domain name and points out that the products purportedly offered for sale by the Respondent are not branded ULINE. Lastly, the Complainant says that the Respondent is not making a legitimate or noncommercial fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. By selling products which directly compete with the Complainant’s products, it says, the Respondent is attempting to benefit economically from the goodwill the Complainant has established in its marks.
Lastly the Complainant says that the disputed domain name appears to have been registered primarily for the purpose of disrupting the Complainant’s business. It says that the Respondent’s claim on its website to be “a leading manufacturer of adhesive gum tape” indicates that the Complainant’s tapes are in direct competition with the products the Respondent purports to be selling. Moreover, it says that the Respondent knew or should have known about the existence of the Complainant’s trade marks which, it says are well-known and widely used on the Internet. The Complainant says also that it emailed the Respondent about the misappropriation of its marks but did not receive a reply. Finally it says that the Respondent has a responsibility to determine whether its domain name registration “infringes or violates some-one else’s rights” and refers to paragraph 2 of the Policy. This contains a stipulation, inter alia, that, by applying to register a domain name, a registrant is deemed to have warranted that the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.
The Respondent did not provide a formal Response to the Complainant’s contentions. However, on October 30, 2015 it sent an email to the Center, the contents of which read “our Company name Uline Tape Co. so we registered the domain “www.ulinebd.com”. As outlined above, the Respondent was invited by a Procedural Order of the Panel dated November 24, 2015 to provide further information to substantiate this claim but did not provide any form of response to the Order.
6. Discussion and Findings
Paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the panel shall draw such inferences therefrom as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(Iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Whilst it would have been helpful for the Complainant to have provided copies of its registered United States trade marks for ULINE and ULINE.COM, sufficient details have been supplied for the Panel to accept that the Complainant has registered trade mark rights in the United States in respect of ULINE, in classes which include tapes and tape accessoriesand ULINE.COM.
In accordance with established practice, when comparing the disputed domain name to the Complainant’s trade mark for the purposes of assessing identicality or similarity, the generic Top-Level Domain suffix in the disputed domain name (“.com”) is disregarded.
The only distinction between the disputed domain name and the Complainant’s ULINE mark is the addition of the letters “bd”. This is a geographical indicator for Bangladesh, which is the country in which the Respondent is located. The letters “bd” do not serve to distinguish the disputed domain name from the Complainant’s mark. Arguably, they serve to accentuate the likelihood of confusion by suggesting that the website to which the disputed domain name points might be connected with operations owned, operated or authorized by the Complainant in Bangladesh.
The Panel accordingly finds that the disputed domain name is confusingly similar to trade marks in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name and has set out a reasoned, albeit brief, argument as to why this is the case. Decisions of previous panels have found that once a complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests with respect to a disputed domain name, the burden shifts to the Respondent to prove otherwise. See, for example, the decision in Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Whilst the Respondent did not serve a formal Response to the Complaint, it asserted in an email to the Center dated October 30, 2015 that “our Company name Uline Tape Co. so we registered the domain “www.ulinebd.com”. This comment was not informative of any specific interest the Respondent might have in the disputed domain name.
Paragraph 10(b) of the Rules provides that a panel shall ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case. The Complainant had provided a screen print of the Respondent’s website but little information about its functionality. The Panel accordingly considered it material to seek to derive further information from the website to which the disputed domain name pointed in order to determine if there might be any substance in the Respondent’s assertion. As explained in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), “a panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name.”
The Panel accordingly visited the live website to which the disputed domain name pointed. An examination of it suggested that there was a slim possibility that the Respondent was using it in connection with a bona fide offering of goods and services. The Panel accordingly issued a Procedural Order inviting the Respondent to provide evidence that, before any notice to it of the proceedings, the website to which the disputed domain name pointed had been used in connection with a bona fide offering of goods and services as well as evidence that the Respondent had traded as either “Uline” or “Uline Tape Co.”
As the Respondent has not responded to the Order, it has evidently been either unwilling or, more likely, unable to provide such evidence. The Panel is accordingly satisfied that the Respondent does not in fact trade as “Uline” or “Uline Tape Co.” and has no rights or legitimate interests in the disputed domain name.
The Complainant’s submissions as to why the disputed domain name has been registered and used in bad faith are very brief. However, they serve their purpose. As the Complainant has said, the disputed domain name appears to have been registered for the purpose of disrupting the Complainant’s business. Whilst the Respondent made a bald assertion that its company name was “Uline Tape Co.” it has provided no evidence at all to substantiate this claim. “Uline” is not a word which is inherently descriptive of adhesive tapes and, whilst it is unclear whether the Complainant trades outside the United States, it is highly improbable that the Respondent stumbled across this name and applied it to a business purportedly selling the same type of goods by chance. As the Respondent has not availed itself of the opportunities to serve a proper Response to the Complaint or to provide evidence in response to the Procedural Order, the Panel accepts the Complainant’s assertions of bad faith.
Paragraph 4(b)(iii) of the Policy provides that evidence of bad faith registration and use shall be found if a respondent has registered a disputed domain name primarily for the purpose of disrupting the business of a competitor. Paragraph 4(b)(iv) of the Policy provides that bad faith will be found if a respondent, by using a disputed domain name has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 its web site or location or of a product or service on its web site or location. Whilst it is not possible to tell, on the basis of the information available to the Panel, whether the website to which the disputed domain name points is a shop front for a genuine (albeit differently-named) business or a complete sham, in either eventuality, the Respondent’s conduct falls within the type of bad faith registration and use which is set out at paragraph 4(b) of the Policy. The Panel accordingly finds that the disputed domain name was registered and has been used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be cancelled.
Date: December 3, 2015