Ph. Nederman & Co, AB v Name Redacted

WIPO Case No. D2024-2873

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Ph. Nederman & Co, AB v. Name Redacted

Case No. D2024-2873

1. The Parties

The Complainant is Ph. Nederman & Co, AB, Sweden, represented by Abion AB, Sweden.

The Respondent is Name Redacted.[1]

[1] The Respondent appears to have used the name of a third party when registering the Disputed Domain Name. In light of the potential

2. The Domain Name and Registrar

The Disputed Domain Name <nedreman.com> is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2024. connection with the Disputed Domain Name. On July 15, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent (Registration Private, DomainsByProxy.com) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 17, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 22, 2024.

The Center verified that the Complaint together with the amended 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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the the due date for Response was August 11, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2024. The Center received email communications from a third party on August 12 and 16, 2024.

The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on August 26, compliance with the Rules, paragraph 7.

2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of

4. Factual Background

The Complainant is a leading global provider of industrial air filtration and environmental technology
solutions. Ph. Nederman & Co, AB offering products and systems for air filtration, recycling, and
material handling, catering to industries such as metal fabrication, woodworking, food processing, and
pharmaceuticals, with offices and production facilities across Europe, North America, and Asia.

The company’s products are sold in over 50 countries.

The Complainant is the owner, amongst others, of the following trademark registrations for NEDERMAN:

- European Union trademark No. 010645216, for NEDERMAN in classes 3, 6, 7, 9, 11, 17, 20, 37 and
40, registered on July 24, 2012;

- United States trademark No. 79120586, for NEDERMAN in classes 7 and 11, registered on
April 8, 2014;

- United Kingdom trademark No. 00910645216, for NEDERMAN in classes 3, 6, 7, 9, 11, 17, 20, 37 and
40, registered on July 24, 2012; and

- Australia trademark No. 1527293, for NEDERMAN in classes 7 and 11, registered on July 19, 2012.

The Complainant has also registered the domain name <nederman.com> on August 19, 1996, which includes the trademark NEDERMAN.

The Disputed Domain Name <nedreman.com> was registered by the Respondent on October 5, 2023. The

Disputed Domain Name resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name.

Notably, the Complainant contends that:

1.        the Disputed Domain Name is almost identical and confusingly similar to the trademark and service mark in which the Complainant has rights.

2.        the only difference between the Disputed Domain Name and the Complainant’s trademark is the replacement of the letters “er” in NEDERMAN for “re” as written in the Disputed Domain Name <nedreman.com>.

3.        the trademark NEDERMAN is clearly recognizable within the Disputed Domain Name.

4.        it has not licensed or authorized the Respondent to use its trademarks.

5.        there is no evidence that the Respondent is commonly known by the Disputed Domain Name or owns any registered trademarks including the term “nedreman.com”.

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6.        the Disputed Domain Name resolves to an inactive page.

7.        the Disputed Domain Name is passively held.

8.        it is very likely that the Respondent registered the Disputed Domain Name using the trademark NEDERMAN intentionally in order to take advantage of the reputation of the trademark and the Complainant’s goodwill, free-riding on the Complainant’s reputation.

9.        the Respondent has registered the Disputed Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. Email communications were received from an apparent third party mainly stating that “use of the email address […] in the registration of the aforementioned domain name was unauthorized and conducted without the knowledge or consent of [third party], or its employees, including [Named Redacted], the named Respondent in this matter.”

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing
(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison
between the Complainant’s trademark and the Disputed Domain Name. WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The Panel finds the NEDERMAN mark is recognizable within the Disputed Domain Name. Accordingly, the
Disputed Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview
3.0, section 1.7.

In fact, the changing of the letters “e” and “r” is the only difference between the Disputed Domain Name “nedreman” and the Complainant’s trademark NEDERMAN, which this Panel considers is an intentional misspelling of the Complainant’s trademark and confusingly similar to it. WIPO Overview 3.0, section 1.9.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized
that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task
of “proving a negative”, requiring information that is often primarily within the knowledge or control of the
respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or
legitimate interests, the burden of production on this element shifts to the respondent to come forward with
relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0,
section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence

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demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise. Furthermore, the Panel notes that in accordance with the email communication from a third party, its contact details have been used for the registration of the Disputed Domain Name, which

further supports the Panel’s conclusion that the Respondent lacks rights or legitimate interests in the

Disputed Domain Name.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that by changing the letters “e” and “r” which is the only difference intentionally in order to take advantage of the reputation of the trademark and the Complainant’s goodwill.
between the Disputed Domain Name “nedreman” and the Complainant’s trademark NEDERMAN, the
Respondent has created a clear situation of typosquatting and for the Panel that is an evidence that the

Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, and the composition of the Disputed Domain Name, and finds that in the circumstances of this case the passive holding of the Disputed

Domain Name does not prevent a finding of bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

7. Decision

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 <nedreman.com> be transferred to the Complainant.

/Gonçalo M. C. Da Cunha Ferreira/
Gonçalo M. C. Da Cunha Ferreira
Sole Panelist
Date: September 9, 2024

identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this
decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent.
The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated
Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-
12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.