Atlas Copco Certificates - DOC

							                    WIPO Arbitration and Mediation Center

                         ADMINISTRATIVE PANEL DECISION

      Atlas Copco Aktiebolag v. Nanjing Xinruikang Gongchengjixie Youxiangongsi

                                    Case No. D2008-0192




 1.   The Parties

      The Complainant is Atlas Copco Aktiebolag, Nacka, Sweden, represented by Atlas
      Copco North America LLC, United States of America.

      The Respondent is Nanjing Xinruikang Gongchengjixie Youxiangongsi, Nanjing, China.


 2.   The Domain Name and Registrar

      The disputed domain name <atlascopco.mobi> is registered with OnlineNic, Inc. d/b/a
      China-Channel.com


3.    Procedural History

      The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”)
      on February 6, 2008. On February 7, 2008, the Center transmitted by email to
      OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in
      connection with the domain name at issue. On February 13, 2008, OnlineNic, Inc. d/b/a
      China-Channel.com transmitted by email to the Center its verification response
      confirming that the Respondent is listed as the registrant and providing the contact
      details. On February 18, 2008, the Center verified that the Complain satisfied the formal
      requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”),
      the Rules for 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), a
      notification of Complaint and Commencement of Administrative Proceeding was
      transmitted by the Center to the Respondent on February 18, 2008.

      In accordance with the Rules, paragraph 5(a), the due date for the Response was
      March 9, 2008. The Respondent did not submit any response by the deadline.
      Accordingly, the Centre notified the Respondent’s default on March 10, 2008.

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     The Center appointed Douglas Clark as the sole panelist in this matter on
     March 20, 2008. 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 was incorporated in Sweden in 1873. The Complainant and its
     subsidiaries, collectively known as “Atlas Copco” and “the Atlas Copco Group” employ
     25,000 people around the world. The Atlas Copco Group’s business includes
     development and manufacture of compressed air equipment, pneumatic tools,
     construction equipment, mining equipment and assembly systems. The Complainant
     has a number of trademark registrations, including the ATLAS COPCO brand, in many
     countries around the world, including in China (where the Respondent appears to be
     located). The Complainant has registered several domain names, such as,
     <atlascopco.com>, <atlascopco.co.nz>, <atlascopco.com.au> for Atlas Copco Group’s
     website and its subsidiaries’ websites respectively, all of which contain the word
     “atlascopco”.

     The Respondent is the registrant of the disputed domain name <atlascopco.mobi>. This
     domain name does not resolve to an active website or other online presence.


5.   Parties’ Contentions

     5.1    The Complainant

     The Complainant contends the following:

     (a)   The infringing domain name <atlascopco.mobi> is identical or confusingly similar
           to the Complainant’s trademark as well as its corporate name.

     (b)   The Respondent has no rights or legitimate interest in the infringing domain name
           as it is neither affiliated or associated with the Complainant, nor authorized by the
           Complainant to use the trademark ATLAS COPCO or to register or use any
           domain name incorporating any ATLAS COPCO trademark. Furthermore, there is
           no evidence to demonstrate the Respondent’s use of, or preparation to use the
           domain name in connection with a legitimate offering of goods or services prior to
           or since notice to the dispute. The Complainant also contends that the Respondent
           neither be commonly known by the infringing domain name nor is making a
           legitimate non-commercial or fair use of the infringing domain name. Therefore,
           the Respondent has no rights or legitimate interest in respect of the infringing
           domain name.

     (c)   The infringing domain name has been registered and is being used in bad faith for
           the following reasons：

           (i)   Under Section 4(b)(ii) of the policy that the domain name has been registered
                 to prevent the trademark owner from reflecting the mark in a domain and that
                 the Respondent has registered, in addition to the disputed domain name,
                 several domain names incorporating third-party trademarks and/or corporate
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                names, which is sufficient to constitute a pattern of bad faith conduct. The
                Complainant relies on the registration by the Respondent of the domain name
                <donaldson.mobi> and the registration by “Zhong Suo” of the domain name
                <ort.mobi>. The WhoIs information containing the Respondent’s email
                address ([…]@zhongsou.com) is the same for these domain names. The
                Complainant submitted US trademark certificates covering, inter alia,
                industrial equipment for “Donaldson” and “Ort” in the name of Donaldson
                Company Inc, and Walzen Irie GmbH to support this contention.


           (ii) Under Section 4(b)(iv) of the policy that the domain name registered in the
                name of the Respondent, creates and will continue to create a likelihood of
                confusion with the Complainant’s trademark, corporate name and domain
                name as to the source, sponsorship, affiliation or endorsement of the
                infringing domain name, the Respondent’s website (if any) or of a product or
                service at the Respondent’s location (if any). The Complainant argues that
                bad faith exists even though a respondent has not used the domain name and
                relies on numerous UDRP decisions to support this argument. The
                Complainant further relies on the fact the Respondent had actual or
                constructive knowledge of the ATLAS COPCO trademark and corporate
                names and domain names due to the Complainant’s worldwide fame and by
                the Respondents’ inactivity with respect to the domain name and failure to
                respond to the Complainant’s cease and desist notice.

     The Complainant requests therefore that the disputed domain name be transferred in its
     favour.

     5.2 The Respondent

     The Respondent did not reply to the Complainant’s contentions.


6.   Discussion and Findings

     There being no Response, paragraphs 5(e) and 14(a) of the Rules direct the Panel, in the
     absence of exceptional circumstances, to decide the dispute on the basis of the
     Complaint. Under paragraph 4(a) of the Policy, the Complainant must prove the
     following three elements in order to make out a successful case:

     (i)   The domain name is identical or confusingly similar to the Complainant’s
           trademark or service mark;

     (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.

     A.     Identical or Confusingly Similar

     The Complainant submits trademark certificates for ATLAS COPCO and device mark
     in (old) Class 13 in China covering, inter alia, tools as well as a trademark certificate for
     ATLAS COPCO and device mark covering 12 classes in the United States of America,
     including class 7 covering industrial tools.

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For each trademark the device mark is two horizontal bars in between which the words
“Atlas Copco” are written in cursive script. The horizontal bar device does not detract
from the main impact of the marks which is the words “Atlas Copco”.

Therefore, the Panel finds the disputed domain to be identical or confusingly similar to
the Complainant’s trademark.

Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the
Policy.

B.   No Rights or Legitimate Interests in the Domain Name

No actual use or demonstrable preparations to use of the domain name in connection
with a bona fide offering of goods or service was found before any notice to this dispute.
The Respondent has not been commonly known as, nor has carried on business in any
form as <atlascopco.mobi>, and has not made a legitimate non-commercial or fair use of
the infringing domain name. The Panel has not found any evidence to suggest the
Respondent has rights or legitimate interests in this domain name.

Accordingly, the Panel finds that the Complainant has satisfied the second element
under paragraph 4(a) of the Policy.

C.   Registered and Used in Bad Faith

On the basis of the above findings and the worldwide fame of Atlas Copco demonstrated
by the Complainant, the Panel has no hesitation in finding the disputed domain name
was registered in bad faith. In this respect, the Panel notes that the Respondent appears
from its name, Nanjing Xinruikang Gongchengjixie Youxiangongsi (which translates
into English as Nanjing Xinruikang Engineering Equipment Co Ltd), to deal with
engineering equipment and is therefore in the same industry as the Complainant and, as
such, is likely to have known of the Complainant. In any event, Atlas Copco is a unique
name and it is unlikely the Respondent could have invented the name by itself.

The key issue in this case then whether the domain name is being used in bad faith. As
noted above, the Complainant relies in this regard on paragraph 4(b)(ii) and 4(b)(iv) of
the Policy.

Paragraph 4(b)(ii) and 4(b)(iv) of the Policy read:

     “4(b). Evidence of Registration and Use in Bad Faith. For the purposes of
     Paragraph 4(a)(iii), the following circumstances, in particular but without
     limitation, if found by the Panel to be present, shall be evidence of the
     registration and use of a domain name in bad faith:

     (ii)   you have registered the domain name in order to prevent the owner of
            the trademark or service mark from reflecting the mark in a
            corresponding domain name, provided that you have engaged in a
            pattern of such conduct; or

     (iv)   by using the domain name, you have intentionally attempted to attract,
            for commercial gain, Internet users to your 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 your

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            web site or location or of a product or service on your web site or
            location.”

On the evidence submitted by the Complainant the Panel is not satisfied that the
Complainant has made out its case in relation to paragraph 4(b)(ii). Paragraph 4(b)(ii)
requires that a pattern of conduct be made out. The Panel does not consider that
evidence filed by the Complainant showing the registration of <donaldson.mobi> or
<ort.mobi> to make out such a pattern. In particular, there is insufficient evidence to
show that <ort.mobi> has been registered by the Respondent.

With regard to paragraph 4(b)(iv), the Complainant has a stronger case. Although,
paragraph 4(b)(iv) makes reference to “using” the domain name, numerous decisions of
domain name panels and domestic courts have made it clear that there is no need for
domain name to resolve to an active website for there to be use. The Complainant relies
on two cases, in particular:

(a)   Europcar International v. The Cutayne’s Domain (Bruce, Colleen, Matt & Evan),
      NAF Case No. FA105772 which held “[p]olicy 4(b) is also met by registering a
      domain name that will if the Respondent ever puts it in use, ultimately result in
      consumer confusion”.

(b)   Produits Berger v. Standard Project Limited, WIPO Case No. D2002-0518 citing
      Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 which held

      “subparagraphs of Paragraph 4(b) are not intended to be the exclusive
      criterion of bad faith use. The Panel believes that bad faith use can also exist
      in situations, such as the instant one, where (i) the Domain Name contains in
      its entirety, and is for all essential purposes only, Complainant’s trademark,
      (ii) such trademark is a coined word, has been in use for a substantial time
      prior to the registration of the Domain Name and is a well known mark, and
      (iii) Respondent has alleged no good faith basis for use by it of the Domain
      Name”.

To this Panel, these decisions (and those of a similar nature) are correct. The Panel
further notes that previous panels have formed that the passive holding of a domain
name may in appropriate circumstances amount to evidence of registration and use in
bad faith. (See eg. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case
No. D2000-0003). In the present case, the Panel has little hesitation in making such a
finding given the identity between the Complainant’s famous mark and the disputed
domain name, the lack of any response, and the Panel’s difficulty conceiving of any use
of the disputed domain name that would not likely result in an erosion of the goodwill in
the Complainant’s trademark.

The Panel further notes the English Court of Appeal in British Telecommunications Plc
and another v. One in a Million Ltd and others [1998] 4 All ER 476 at 497 (per Aldous
LJ) where the domain name <marksandspencer.com> was registered but not “used” held:

“The placing on a register of a distinctive name such as marksandspencer makes a
representation to persons who consult the register that the registrant is connected or
associated with the name registered and thus the owner of the goodwill in the name.
Such persons would not know of One In A Million Limited and would believe that they
were connected or associated with the owner of the goodwill in the domain name they
had registered. Further, registration of the domain name including the words Marks &
Spencer is an erosion of the exclusive goodwill in the name which damages or is likely
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     to damage Marks & Spencer Plc.”

     The Panel believes this conclusion would be of similar application to the present
     circumstances. In this case, we have an almost identical situation. The domain name
     <atlascopco.mobi> has been registered. There is no realistic or reasonable use the
     domain name can be put to other than to indicate a relationship with the Complainant. If
     anything further is needed, the fact the Respondent from its name appears to be in the
     same industry as the Complainant shows there is unlikely to be anything other than bad
     faith use of the domain name.

     The Panel therefore concludes that the registration and holding of the domain name
     <atlascopco.mobi> in the circumstances of this case amounts to use of the domain name
     by making a false representation as to a connection with the Complainant thereby
     eroding the Complainant’s goodwill in its trademark ATLAS COPCO.

     Accordingly, the Panel concludes that the Complainant has satisfied the third element
     under paragraph 4(a) of the Policy.


7.   Decision

     In light of the findings in paragraph 6 above, the Panel orders that the domain name
     <atlascopco.mobi> be transferred to the Complainant in accordance with paragraph 4(i)
     of the Policy and paragraph 15 of the Rules.




                        ____________________________________
                                    Douglas Clark
                                     Sole Panelist

                                   Dated: April 9, 2008




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