WIPO Domain Name Decision D2019-0603 for demix.com
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sport and Fashion, Pte. Ltd. v. St. Lawrence Cement Inc. Case No. D2019-0603 1. The Parties
The Complainant is Sport and Fashion, Pte. Ltd. of Singapore, represented by Kirill Efremov, Russian Federation.
The Respondent is St. Lawrence Cement Inc. of Canada, represented by ROBIC, LLP, Canada. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 21, 2019, 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 proceedings commenced on March 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2019. Upon the Respondent’s request, the Center granted an automatic extension of 4 days, i.e., until April 19, 2019, in accordance with paragraph 5(b) of the Rules. The Response was filed with the Center April 19, 2019.
The Center appointed Nick J. Gardner, Theda König-Horowicz, and Christopher J. Pibus as panelists in this matter on May 28, 2019. The Panel finds that it was properly constituted. Each member of 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 is a company incorporated in Singapore in 2012. Its business is the manufacture, distribution, and retail sale of sports equipment, sports shoes, and related products. It trades in the Russian Federation, various Eastern European countries, and various Asian countries. It does so under the trademark DEMIX. It says this trademark was first registered in 2005. It does not explain how this occurred given it was seven years prior to its formation. It has provided evidence of various trademark registrations although these appear to be in the name of Sport and Fashion Management Pte. Ltd – for example International Trade Mark no 953715 was registered on October 29, 2007 (and records it derives from a Russian registration dated November 22, 2005). The Panel is unclear as to whether Sport and Fashion Management Pte. Ltd is a different legal entity to the Complainant. As the Panel reaches its decision below on other grounds the point ultimately does not matter so the Panel will assume this company is the same entity as the Complainant. The Complainant’s DEMIX trademarks are referred to in this decision as the “Complainant’s DEMIX trademark”.
The Disputed Domain Name was registered by the Respondent on January 7, 1997. It does not at present resolve to any active website. The Respondent’s business is discussed below. 5. Parties’ Contentions A. Complainant.
The Complainant says the Disputed Domain Name is identical to its DEMIX trademark.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. It says the Disputed Domain Name is not a dictionary word and there is no plausible reason why the Respondent would have registered it. It says, as the Disputed Domain Name does not resolve to any active webpage, the Respondent is not conducting any legitimate business under or in relation to it.
The Complainant says that the Disputed Domain Name was registered in bad faith as “based on the UDRP precedents registration of a domain name and its passive use may be considered as unfair use”. The Complaint goes on to make various references to an OMRON trademark which make no sense at all. The Center had on March 25, 2019 queried this reference and the Complainant stated it was “indicated only as an example of a similar dispute”. The Panel does not understand what the Complainant means by this or why this trademark is relevant. B. Respondent
The Respondent accepts that the Disputed Domain Name is identical to the Complainant’s DEMIX trademark but points out that the Disputed Domain Name was registered eight years before that trademark was registered.
The Respondent says the named respondent St. Lawrence Cement Inc., through a series of corporate transactions which it explains in detail, has now become part of a company called CRH Canada Group Inc. Nothing turns on this history so far as this Complaint is concerned so the Panel will simply refer to the Respondent, that term being used to include any successors in title to the named Respondent.
The Respondent says its business at the time the Disputed Domain Name was registered was the manufacture and sale of ready mix concrete and aggregates, and DEMIX was a trading name it used. It exhibits Canadian registered trademarks it had for that term – for example Canadian trademark no TMA556993 for the words DEMIX CONSTRUCTION together with a device, registered on January 29, 2002, and expunged on September 7, 2017. Whilst the Response goes into considerable detail about the Respondent’s history and business the Panel does not consider it necessary to set all this detail out. In essence the Respondent says that it had a legitimate interest in the Disputed Domain Name and has not registered it nor used it in bad faith. It concedes it does not use it at present but provides evidence that it has done so in the past and says it may wish to in the future and that it is entitled to retain the Disputed Domain Name in the meantime. 6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of the Disputed Domain Name that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no ri