The Complainant is Dentaid S.L. of Cerdanyola del Valles, Spain, represented by Rafael Sarrión Conca, Spain.
The Respondent is Victor Zaitsev of Saint Petersburg, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with DomReg Ltd. d/b/a LIBRIS.com. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2011. On November 29, 2011, the Center transmitted by e-mail to DomReg Ltd. d/b/a LIBRIS.com a request for registrar verification in connection with the disputed domain name. On December 1, 2011, DomReg Ltd. d/b/a LIBRIS.com transmitted by e-mail its verification response to the Center 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 e-mail communication to the Complainant on December 2, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, i.e. December 2, 2011, the Center sent an e-mail communication to the Complainant providing the information concerning the language of the registration agreement and instructions to the Complainant and the Respondent. The Complainant filed an amended Complaint on December 7, 2011 and requested that English be the language of the proceedings on December 2, 2011.
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”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for the Response was December 28, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2012.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on January 23, 2012. The Panel finds that it was properly constituted. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. 4. Factual Background
Dentaid S.L. has been in the business of oral hygiene since 1980, while the Complainant’s INTERPROX trademark was first registered in Spain in 1996. The Complainant has subsidiaries in Chile, Peru, Benelux, Germany and France and distribution agreements for their range of products in other countries. The Complainant has owned the INTERPROX Community trademark since 7 January 2005 and an INTERPROX Benelux trademark since September 1, 1998.
The disputed domain name was created on July 17, 2005. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights because the only difference between the disputed domain name and the Complainant’s trademark INTERPROX lies in the addition of ".com".
The Complainant also submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name since there is no relationship whatsoever between the Respondent and the Complainant and the Complainant has not authorized the Respondent to use its trademark INTERPROX. However, the Complainant expressly states that: “[w]e don't know if the Respondent has any trademark or enterprise related to interprox, all we know so far is the fact that the Respondent wants to sell this domain …”.
Finally, in the Complainant’s view the disputed domain name was registered and is being used in bad faith since the Respondent owns it with the sole purpose of selling it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant submitted a request that English be the language of the proceedings (by e-mail of 2 December 2011).
Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceedings shall be the language of the registration agreement, i.e. Russian in this case, however subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings.
In adopting a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs (see Biotechnology and Biological Sciences Research Council v. Kim Jung Hak,
WIPO Case No. D2009-1583; Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
Although the language of the registration agreement is Russian, it is worthwhile mentioning that the website existing under the disputed domain name was created in English. The Panel also draws appropriate inferences from the Respondent's default (see Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009) and the lack of objection regarding the Complainant’s request that English be the language of the proceedings. For the foregoing reasons and for the sake of saving time and additional expenses to the parties, the Panel decides that the language of the proceedings be English.
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of the following three elements:
(a) the domain name is identical or confusingly similar to a trade-mark or service mark in which Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in the domain name; and
(c) the domain name has been registered and is being used by the Respondent in bad faith.
A complaint may only be admitted if the above criteria are met simultaneously. A. Identical or Confusingly Similar
The Complainant has proven that the disputed domain name is identical or confusingly similar to the name, trademarks and service marks of the Complainant. As a consequence, the Complaint brought by the Complainant meets the requirement of paragraph 4(a)(i) of the Policy.
The confusing similarity of the disputed domain name with the Complainant’s trademark is apparent from a simple visual comparison. The disputed domain name is a replica of the Complainant’s mark. The phrase “interprox” does not appear to have any generic meaning in any European language.
The disputed domain name contains a trademark legally owned by the Complainant. In this case it, this is sufficient to satisfy the requirement that the disputed domain name be confusingly similar to a mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent is not the Complainant’s licensee in any respect, nor is the Respondent authorized to use the Complainant’s marks.
Any of the following particular circumstances (though not limited to these), if found by the Panel to be proved, on the basis of its evaluation of all evidence presented, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent being commonly known by the domain name, despite not having acquired any trademark or service mark rights; or
(iii) the Respondent making a legitimate noncommercial or fair use of the domain name, without intent to use it for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent is not the Complainant’s licensee in any respect, nor is the Respondent authorized to use the Complainant’s marks. In order to meet the test set out in paragraph 4(a)(ii) of the Policy, the Complainant shall prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is well established that it is relatively difficult for any complainant to prove that a respondent has no rights or legitimate interests in a domain name, since for the most part that information is within the control and knowledge of a respondent only. This being said, the Complainant is not free from the burden of proof, since it is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. If such prima facie case is not rebutted by the Respondent, the Complainant will be deemed to have satisfied the second element of the Policy.
Based on the record before it and considering that the Respondent did not rebut the Complainant’s prima facie case, the Panel finds that the Respondent has no rights or legitimate interests over the disputed domain name. C. Registered and Used in Bad Faith
Under paragraph 4(b)(i) of the Policy registration and use in bad faith of a domain name can be found if circumstances indicate that a respondent registered and acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring its registration to a 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 documented out-of-pocket costs directly related to the domain name.
As the Panel understands it, the Complainant is saying that the mere fact that the Respondent is willing to resell the disputed domain name is tantamount to the use in bad faith. In the Panel’s view, this assumption cannot be accepted (see SOUTHBank v. Media Street,WIPO Case No. D2001-0294).
First and to begin with, there is no evidence on the record that the Complainant actually attempted to buy the disputed domain name and that the Respondent demanded valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. In fact there is no evidence in this case of any correspondence between the Complainant and the Respondent prior to the commencement of these proceedings.
Second, paragraph 4(b)(i) of the Policy requires that a domain name is registered and used in bad faith. Notably, the registration of the disputed domain name was made seven years ago. From the WhoIs record attached to the Complaint, it is apparent that the disputed domain name was registered on July 17, 2005 by the Respondent. There is no indication that the Complainant, at any point up to the filing of the Complaint, advised the Respondent that it objected to its registration or use of the disputed domain name (see Physik Instrumente GmbH. & Co. v. Stefan Kerner and Jeremy Kerner and Magic Moments Design Limited,WIPO Case No. D2000-1001). The Complainant did not bring any convincing evidence justifying the assumption that the Respondent was acting in bad faith when it registered the disputed domain name and one cannot exclude that the disputed domain name was used for several years for a bona fide offering of goods and services. This is further supported by the Complainant itself, who expressly stated that “we don't know if the Respondent has any trademark or enterprise related to interprox, all we know so far is the fact that the Respondent wants to sell this domain …”.
Even though the international registration for the mark INTERPROX appears to cover the Russian Federation, in the opinion of the Panel, the mark INTERPROX is not well-known within the meaning of Article 6bis of the Paris Convention in the Russian Federation. Moreover, in its Complaint, the Complainant did not provide satisfactory evidence that it has any market presence in the Russian Federation..
The Complainant has not demonstrated any proof, from which it could be inferred, that the aim of the Respondent, at the time of the registration of the disputed domain name, was to resell, rent, or otherwise transfer the domain name registration at a price exceeding out-of-pocket costs directly related to the domain name. Moreover, there is no evidence that could justify an assumption that the Respondent was aware of the existence of the Complainant’s mark. A Google search in Russian made by the Panel did not make any connection between “Interprox” and the company of the Complainant; to the contrary, the only link was made to “Interpol”. Perhaps the Google search engine in Spain does make such a connection, but the default Google search engine for the Respondent is likely to be in Russian. The expression “Interprox”, if divided into two parts, may relate to a number of services and companies since “inter” is a generic word and “prox” is commonly used in the IT and engineering fields. This further supports that the Complainant failed to demonstrate that the Respondent acted in bad faith at the time of registration of the disputed domain name.
The Panel finds that the Complainant has not presented evidence sufficient to establish the registration and use in bad faith of the disputed domain name by the Respondent. Therefore, the Panel finds that the Complainant has failed to satisfy the requirement of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Piotr Nowaczyk
Sole Panelist
Dated: February 7, 2012
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