The Complainant has sufficiently proved before the Panel, that owns International Trademark Registrations over the term ALGECO, Reg. No. 386452 since January 27, 1972 (granted date) in force until January 27, 2032, and ALGECO, Reg. No. 1099894 since October 21, 2011 (granted date) in force until October 21, 2031.
The disputed domain name <algecoaffinity.com> registered on March 28, 2022, it is composed by two terms as “ALGECO” and “AFFINITY”. The term “ALGECO” undeniably refers to Complainant’s Trademarks, and the term “AFFINITY”, can be considered as a generic word, however for the purposes of the Second UDRP Element and Third UDRP Element analysis of the present Case scenario, this Panel, will take into consideration, that the trademark ALGECO AFFINITY was filed by the Complainant’s subsidiary ALGECO UK LIMITED on March 28, 2022.
The Domain Name Jurisprudence has established that:
“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” (see point 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”)).
The Complainant’s trademark ALGECO was exactly reproduced, and the additional term “Affinity” which can be considered as a generic word, both at the end, implying a connection to Complainant’s business activity, increasing the confusion in the Internet User (see Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. 2001-0110; ALGECO v. Aktif Medya, Ismail Hakki Yildiz, WIPO Case No. 2010-1170 and ALGECO vs. Amina ouarda Hachemi, CAC Case No. 104038).
It is well established by the Domain Name Jurisprudence that for the purposes of the analysis of the First UDRP Element, in this case, the gTLD “.com”, “is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test” (see point 1.11.1 of the WIPO Jurisprudential Overview 3.0”).
Therefore, the disputed domain name <algecoaffinity.com> is confusingly similar to Complainant’s ALGECO Trademarks.
Regarding the Second UDRP Element, to this Panel it is clear that:
(1) the Respondent is not associated or affiliated or hasn’t been authorized or licensed by the Complainant to register the disputed domain name.
(2) there is no evidence why the Respondent selected such a well-known trademark as ALGECO and added the term ¨Affinity¨, which even when it can be considered as a generic word, it is more likely that refers to Complainant’s UK Application ALGECO AFFINITY filed on the exact same date of the disputed domain name registration on March 28, 2022.
(3) there is no evidence that the Respondent corresponds or has become commonly known by the term “ALGECOAFFINITY.COM”.
(4) the Respondent registered the disputed domain name on March 28, 2022, meaning at least 50 years AFTER the Complainant’s acquired its trademark rights over ALGECO on January 27, 1972.
(5) the Respondent is not making a bona fide offering of goods or services nor for a legitimate non-commercial or fair use of the disputed domain name, due to it is linked to an active website of a Domain Name Business Services entity named Dan.com (https://dan.com/ where the disputed domain name is offered for sale for 995 USD or 332 USD providing an additional evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name (see N.V. Nutricia v. Rob Monster, Claim No. FA 2106001952511).
Therefore, this Panel finds that the Complainant has successfully made a prima facie case, which was not rebutted in any manner by the Respondent and concludes that the Respondent have no rights or legitimate interests in respect of the disputed domain name.
In relation to the Third Element of the UDRP, the Bad Faith, this Panel analyses the following:
The Complainant has more than 60 years in the market and acquired its trademark rights on January 27, 1972, meaning at least 50 years BEFORE the Respondent registered the disputed domain name on March 28, 2022. In addition, a Complainant’s subsidiary ALGECO UK LIMITED filed the Trademark ALGECO AFFINITY Application No. UK00003770850 on March 28, 2022, being the same exact words of the disputed domain name and date of its registration, constituting to this Panel consistent evidence of Respondent’s knowledge about the Complainant business and its trademark value.
Furthermore, in relation to the assessment of respondent’s knowledge, point 3.2.2. of the WIPO Jurisprudential Overview 3.0. titled “Knew or should have known” states:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
Therefore, this Panel concludes that the disputed domain name was registered with Complainant´s Trademark´s value on mind, meaning that it was registered in bad faith.
Point 3.1 of the WIPO Jurisprudence Overview indicates:
“(…) UDRP paragraph 4(b) provides that any one of the following non-exclusive scenarios constitute evidence of a respondent’s bad faith:
“(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name.
(…) Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy the complainant’s burden.”
In the present Case, the Respondent linked the disputed domain name to a parked website named Dan.com, used to offer the disputed domain name for sale. The entity Dan.com, has as a core business different Domain Name Transactions, as Offers, Buying, Selling, (fast and easy) Transfers, among others. The disputed domain name is offered for sale for 995 USD or 332 USD or by inviting users to submit offers to the Respondent. Such amounts exceed the costs of registration and maintenance of the disputed domain name, and of course, such offers open the gate to a potential Complainant’s competitor as a Buyer (see Airbnb, Inc. v. khaled salem, Claim No. FA 1804001784212 and Citigroup Inc. v. Kevin Goodman, Claim No. FA 1506001623939). These facts are sufficient to this Panel, to conclude that the Respondent has incurred into paragraph 4(b)(i) of the Policy, and that the disputed domain name is used in bad faith as well.
Therefore, this Panel concludes that, the disputed domain name has been registered and used in faith.
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