1. The disputed domain name is confusingly similar to a trademark in which the Complainant has rights
As regards the First element, it is undisputed and accepted practice, that 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 its application to registered trademark or service mark. Therefore, according to the policy, the Complainant could rely both on registered and unregistered trademarks.
The Complainant does not own registered trademarks covering the sign <ACHEMBLOCK>. Therefore the Panel must assess whether the evidence submitted by the Complainant is sufficient to successfully assert unregistered or common law trademark rights on the sign <ACHEMBLOCK>.
The evidence submitted is summarized as follows:
i) documents attesting to the creation of the company "Advanced Chemblocks Inc" dating back to 1999;
ii) corporate and tax documents regarding the Complainant;
iii) screenshot of the <achemblock.com> dating back to 2011;
iv) more than 40 invoices and orders covering the years 2015, 2016, 2017 and 2018;
v) advertising material attesting to the presence of the Complainant at an exhibition in 2017.
The Panel will not assess whether such evidence is sufficient to establish unregistered trademark rights according to US law. The Panel will only examine such documents in the light of the rules set forth by the Policy. Under this regard, case law shows that the following elements are taken into consideration in proving unregistered trademark rights: (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
Given this background the Panel states the following. The corporate documents combined with historic screenshot show that the Company was effectively established in 2009 and that the <ACHEMBLOCK> trademark was in use since 2011. Invoices show that goods distinguished by the ACHEMBLOCK trademark were sold in the market. The sales cover mainly United States but also some European countries. Moreover the goods are intended for a specialized public and not for the public at large; therefore the assessment of the evidence must take into consideration also the limited public the relevant goods are intended for.
All above considered and taken into consideration the lack of response by the Respondent, the Panel takes the view that the evidence submitted by the Complainant is sufficient to establish unregistered trademark rights on the sign <achemblock>.
The Panel also observes that the disputed domain name is substantially identical to the Complainant's trademark. The addition of the "-" does not exclude the risk of confusion.
The Panel accordingly concludes that paragraph 4(a)(i) of the Policy is satisfied.
2. The Respondent lacks rights or legitimate interests in the disputed domain name
The Respondent has not submitted a response to the Complaint. Therefore, it has filed no information nor evidence regarding possible rights or legitimate interests it might hold. On its part, the Complainant has submitted information and arguments which, according to the Panel, are sufficient to conclude that the Respondent has no rights or legitimate interest in the disputed domain name.
The Panel agrees with the Complainant that the current use of the disputed domain name could mislead internet users creating a likelihood of confusion between the services offered by the different undertakings. As a matter of fact, the trademark and domain name are substantially identical and they are used for identical/similar goods and services. The Respondent’s registration and use of the domain name could suggest an affiliation with the Complainant which is not the case. To the Panel's view, such use cannot be qualified as a non-commercial or fair use for the purposes of the Policy neither a bona fide offering of goods and services.
As previously stated, the Respondent did not inform the Panel about any possible rights or legitimate interests that could justify the registration and use of the disputed domain name. As a consequence, the Panel has no reason to not believe to the Complainant's allegations.
For these reasons, the Panel takes the view that the Respondent lacks rights or legitimate interests in the disputed domain name for the purposes of the Second Element of the Policy.
3. The disputed domain name has been registered and is being used in bad faith
As regards third and last element of the Policy, the Panel finds reasonable the Complainant’s arguments about the bad faith registration and use of the disputed domain name. The disputed domain name is practically identical to the Complainant’s trademark. Previous panels found that the identity between the domain name and the trademark could be interpreted as an index of bad faith. Moreover, the disputed domain name redirects to a website which is active in the same field of the Complainant. These circumstances, in the absence of any reasonable explanation by the Respondent, are sufficient for the Panel to conclude that the purpose of the registration and use of <achem-block.com> was to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s Trademark.
The concrete and effective likelihood of confusion is also confirmed by the evidence submitted by the Complainant. Under this regard, previous panels found that actual confusion could be useful in proving registration and use in bad faith.
Indeed, the Complainant does not own registered trademarks. Moreover, the Complainant did not prove that its trademark was used in China where the Respondent is allegedly based. Notwithstanding the above, the fact that the disputed domain name is identical to the Complainant’s trademark combined with the very specific nature of the Parties’ businesses, makes it improbable that the Respondent was not aware of the Complainant’s use of the ACHEMBLOCK trademark at the time of registration.
A quick search on google could have immediately disclosed the Complainant’s company and the use of the ACHEMBLOCK trademark. Moreover, checking the website www.achem-block.com, it appears that the Respondent is also active in the US market. Of course, this fact increases the possibilities that the Respondent knew about the Complainant’s ACHEMBLOCK trademark.
All these circumstances, in the absence of any explanation which the Respondent had the chance to provide by participating to this proceeding, are sufficient to conclude that the disputed domain name was registered and used in bad faith.
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