The Complainant is Refax Chile Sociedad Anonima of Santiago de Chile, Chile, represented by BHM & Cía. Abogados, Chile.
The Respondent is Oneandone, 1&1 Internet Inc., of Pennsylvania, United States of America / Ramesh Alluri of Texas, United States of America, represented by itself. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2011. On March 23, 2011, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On March 25, 2011, 1&1 Internet AG 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on March 28, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center sent an email communication to the Complainant on March 28, 2011 related with the language of proceeding. The Complainant requested an extension, which it was granted by the Center. The Complainant filed an amended Complaint on April 5, 2011. The Center verified that 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2011. The Response was filed with the Center on April 28, 2011.
The Center appointed Luca Barbero as the sole panelist in this matter on May 13, 2011. 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.
The Complainant sent by email to the Center a supplemental filing on May 23, 2011. The Respondent addressed by email to the Center its reply to the supplemental filing of the Complaint on May 24, 2011. On May 27, 2011, the Complainant sent a new communication via email to the Center, enclosing a Power of Attorney issued by the Complainant to the Complainant’s representative in the present proceeding. 4. Factual Background
The Complainant Refax Chile SA is a Chilean company which produces vehicles spare parts and is the owner of the Chilean trademark registration Nos. 676454 for REFAX CHILE (figurative mark), filed on April 22, 2003 and granted on October 22, 2003, in class 12 C and 676455 for REFAX CHILE (word mark), filed on April 22, 2003 and granted on October 22, 2003 in class 12 C, and of the Chilean trademark application No. 926146 for REFAX, filed on October 22, 2010, in class 1 X and 12 X.
The Complainant is also the owner of the domain name .
The Respondent registered the disputed domain name on May 26, 2002. 5. Parties’ Contentions A. Complainant
The Complainant points out that Refax Chile SA is a well known company in the Chilean market and was among the ten most searched companies in Chile in 2010 according to the “Negocios Emergentes” (Emerging Businesses) chart provided by Google. The Complainant emphasizes that its sales over the Internet represented 30% of the Complainant’s total sales in 2010 and that the use of the disputed domain name has become crucial and compulsory for the Complainant in order to identify the company’s commercial activities in a global scale across the Internet, especially in view of the development of the Complainant’s international trade platform.
The Complainant contends that disputed domain name is identical to the Complainant’s trademark application for REFAX and to the most distinctive element of the Complainant’s marks REFAX CHILE. The Complainant also relies on its domain name registration and on the protection granted to trade names by Article 8 of the Paris Convention.
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant highlights that the Respondent does not own any registered trademarks for REFAX and that the Respondent’s name has no graphical or phonetically relation with the disputed domain name. The Complainant also highlights that the Respondent has not used the disputed domain name since its registration in 2002 in connection with offers of goods or services but has merely redirected the disputed domain name to a web page of the concerned Registrar 1&1 Internet informing that the domain name has been registered by a non-disclosed third party.
The Complainant has submitted copy of an email sent by the concerned Registrar to the Complainant by which it informed that the identity of the holder of the disputed domain name could not be disclosed since it had been registered under a privacy policy.
With reference to the circumstances evidencing bad faith, the Complainant contends that the Respondent’s bad faith can be inferred from the Respondent’s use of a privacy service to hide its identity, from the non use of the disputed domain name since 2002 and the Respondent’s lack of rights or legitimate interest in the disputed domain name.
In its supplemental filing, the Complainant states that it tried to contact the Respondent by addressing several communications to the email address published in the WhoIs database “proxy712247@” in order to ascertain the Respondent’s availability to transfer the disputed domain name. The Respondent, though, never replied. The Complainant also points out that, after the filing of the Complaint, the Respondent contacted its representative requesting an amount of USD 3,250 for the disputed domain name. B. Respondent
The Respondent rebuts the Complainant’s contentions, stating that it registered the disputed domain name for the purpose of offering fax/facsimile services in the United States and in India and that, prior to the acquisition of the domain name, the Respondent verified that no trademarks for REFAX had been registered or filed in both States.
The Respondent highlights that there cannot be any risk of confusion between the disputed domain name and the Complainant’s marks and domain name since the Complainant’s business is totally unrelated to the proposed line of business of the Respondent.
The Respondent informs the Panel that it acquired the disputed domain name at a public online auction on and states that the delay of the launch of the Complainant’s business was due to the fact that the Respondent could not start its business as an “S Corporation” in absence of the eligibility requirements established by the laws of the United States.
The Respondent rejects the Complainant’s assertion that the use of a privacy service would be evidence of the Respondent’s bad faith, stating that using private registration services is perfectly legal. The Respondent also states that it never solicited to sell the disputed domain name to the Complainant or to any third parties. The Respondent also underlines, in its supplemental filing, that it did not reply to one of the email addressed by the Complainant’s representative (attached to the Complaint) since it was not interested in selling the domain name.
After the Complaint was filed, the Respondent proposed several options to the Complainant in order to resolve the dispute amicably, such as having a joint ownership of the disputed domain name or the transfer of the same to the Complainant by reimbursing the Respondent the amount paid to by the Respondent for the acquisition of the disputed domain name. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence of two valid trademark registrations granted by the Chilean Trademark and Patent Office, i.e. the trademark registration Nos. 676454 for REFAX CHILE (figurative mark), filed on April 22, 2003 and granted on October 22, 2003, in class 12 C and 676455 for REFAX CHILE (word mark), filed on April 22, 2003 and granted on October 22, 2003 in class 12 C.
The Panel finds that the disputed domain name is confusingly similar to the marks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy since the word “chile” is a mere geographical indication of origin which cannot be itself considered as a distinctive element. B. Rights or Legitimate Interests
For the reasons detailed in the following paragraphs, it is not necessary for the Panel to address the issue. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, 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 the disputed domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
The Panel finds that the Complainant has failed to provide evidence of the Respondent’s bad faith in the registration and use of the disputed domain name.
As stated by the Complainant itself, the disputed domain name was registered by the Respondent in 2002, which actually predates the registration of the Complainant’s marks (dated May 2003). Moreover, the Complainant has not submitted convincing elements supporting the finding that its trademarks were well known outside Chile before the filing of the Complainant’s trademarks or other circumstances showing that the Respondent was or ought to be aware of the Complainant’s mark at the time it acquired the disputed domain name.
Furthermore, the Complainant has not submitted evidence showing the Respondent targeted the Complainant’s marks in an attempt to divert Internet users to its site for commercial gain and no evidence of bad faith can be found on the site corresponding to the disputed domain name, since is redirected to a mere parking page provided by the concerned Registrar.
The Panel finds that the Complainant has not proven that the Respondent primarily acquired the disputed domain name in 2002 for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant as required by paragraph 4(b)(i) of the Policy.
As to the use of a privacy shield, the Panel notes that, as found in many Panel decisions (see, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062), privacy services are not, per se, evidence of registration of a domain name in bad faith. In particular, in the case at hand, the Panel finds that the Respondent’s use of a privacy service does not amount to bad faith since the Respondent has not been seeking to evade enforcement of legitimate third-party rights or to obstruct the present proceedings. After receiving notification of the Complaint, the Respondent, indeed, contacted the Complainant’s representative proposing various solutions to the present issue and timely filed its Response within the deadline provided by the Center.
In view of the above, the Panel finds the Complainant has not succeeded in these proceedings in carrying its burden of showing the disputed domain name was registered and used by the Respondent in bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Luca Barbero
Sole Panelist
Dated: May 27, 2011
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