The Complainant is Digital Ceramic Systems Limited of Stoke-on-Trent, Staffordshire, England, represented by Knights Solicitors LLP, Newcastle-under-Lyme, Staffordshire, England.
The Respondent is Baltea SRL of Leini, Italy, represented by Studio Legale BCP&G, Turin, Italy. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2012. On June 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 13, 2012, 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. On June 15, 2012, the Complainant submitted an amendment to its Complaint.
The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Response was July 5, 2012. On July 13, 2012, the Center received the Response. On July 17, 2012, the Complainant submitted a supplemental filing as an answer to the Response.
The Center appointed Michael A.R. Bernasconi as the sole panelist in this matter on July 10, 2012. 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. Amendment to the Complaint
The Complainant filed its Complaint on June 13, 2012. Two days later, on June 15, 2012, the Complainant submitted an amendment to the Complaint with the request to change the remedy of the Complaint from the cancellation to the transfer of the Domain Name.
As there is no provision in the Policy, the Rules or the Supplemental Rules forbidding such an amendment to the Complaint at this early stage of the process, as the amendment was filed only two days after the submission of the Complaint itself and before the notification of the start of the proceedings by the Center to the Respondent, and, finally, as the admittance of the amendment to the Complaint does not change the outcome of the Panel decision, the Panel decides to consider the amendment in accordance with paragraph 10 of the Rules. 5. Late Response
On July 9, 2012, the Center received an email from the Respondent stating:
“(…) the 5 of July we sent you an e-mail with the response for Baltea Digital Ceramic s.r.l. (as you can see below). Any error message arrived at my e-mail so I suppose it was send regularly. I look forward to clarification (…)” [quote without any redactional correction].
After having been informed by the Center on the same day that the Response was not obtained yet and after having been invited to resend it, the Respondent sent another email on July 11, 2012, asking whether the Center had received the Response which the Respondent allegedly resent on July 10, 2012. On July 12, 2012, the Center informed the Respondent that it still did not receive any response. Subsequently, on July 13, 2012, the Respondent tried to send the Response to the Center not as a document, but with a link, which the Center could not open. The Center advised the Respondent about this fact on the same day. Finally, later on July 13, 2012, the Center received the Respondent’s Response (with an incomplete number of Annexes).
The Panel’s decision to admit a late response falls within its general discretion under paragraph 10(a) of the Rules to conduct administrative proceedings in such manner it considers appropriate in accordance with the Policy and the Rules (cf. also the Center’s “Notification of Complaint and Commencement of Administrative Proceeding” dated June 15, 2012, section 6: “The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so and, as provided for by Rules, Paragraph 14, may draw such inferences from your default as it considers appropriate.”). Further, according to paragraph 10(d) of the Rules, the Panel shall determine the admissibility, the relevance, the materiality and the weight of the evidence. In addition, under paragraph 10(b) and (c) of the Rules, the Panel has a duty to ensure that the parties are treated equally and that each party is given a fair opportunity to present its case as well as that the administrative proceedings take place with due expedition.
On the one hand, the fact that the Respondent needed several emails in order to send a Response which was received and could be opened by the Center gives rise to the suspicion that the Respondent tried to gain extra time until July 13, 2012, to finish its Response. Besides, the Respondent never specifically explained why it took until July 13, 2012, i.e. eight days after the deadline for the filing of the Response, to submit the Response. Moreover, the Center received the Response after having appointed the Panel. On the other hand, the Panel cannot exclude the possibility insinuated by the Respondent that there were technical reasons that caused the delay of the Response.
The Panel finds that as long as technical reasons for the late Response cannot be excluded and in accordance with paragraph 10(b) of the Rules, which states that the parties should be treated with equality and that each party should be given a fair opportunity to present its case, the Response shall be admitted. 6. Supplemental Filing by the Complainant
As indicated in the Procedural History, on July 17, 2012, the Complainant submitted a supplemental filing (“Supplemental Filing”) as a reaction on the Respondent’s Response, without having been required to do so by the Panel.
No provision is made in the Policy, the Rules or the Supplementary Rules for further submissions after the Response, except where sought by the Panel under paragraph 12 of the Rules (cf. Viz Communications, Inc., v. Redsun dba and David Penava,WIPO Case No. D2000-0905: “This is because, under the expedited process provided under the Policy and Rules, each party is given one opportunity to put forward all the material on which it wishes to rely and is expected to do so.”). Accordingly, the Center informed the Complainant with email dated July 16, 2012, that no explicit provision is made under the Rules for supplemental filings by either party, except in response to a deficiency notification or if requested by the Administrative Panel. Paragraphs 10 and 12 of the Rules grant the Panel sole discretion to determine the admissibility of supplemental filings.
According to criteria which were set out in previous decisions adopted under the Policy, unsolicited supplemental filings should generally be accepted by the Panel only if the following two circumstances are met (cf. Promedon S.A. v. Andres Weber,WIPO Case No. D2006-1575; cf. also Viz Communications, Inc., v. Redsun dba and David Penava, WIPO Case No. D2000-0905 and Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; Section 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition [“WIPO Overview 2.0”]):
(i) the eventual acceptance of such filings should not breach the guarantee to both parties to be treated equally, so each one has a fair opportunity for presenting its case; and
(ii) the supplemental filings should address relevant issues which were not known by the filing party at the time that it filed its documents, and that could affect the outcome of the decision.
After having reviewed the content of the Complainant’s Supplemental Filing, the Panel reaches the conclusion that it does not mention new documents or new circumstances which were not known by the Complainant at the moment of the filing of its Complaint (cf. Promedon S.A. v. Andres Weber,WIPO Case No. D2006-1575). In addition, the necessity to treat both parties equally does not allow the Panel in casu to consider the Complainant’s Supplemental Filing without giving the Respondent the opportunity to react to the Complainant’s Supplemental Filing. Finally, the consideration of the Complainant’s Supplemental Filing would not have changed the outcome of the proceedings at hand.
Hence, the Panel concludes that the Complainant’s Supplemental Filing does not fulfill the above mentioned requirements and, as a consequence, the Panel does not consider this submission. 7. Factual Background
The Complainant is a supplier of digital ceramic printers, digital transfers and printed ceramics.
The Complainant was entered in the corporate registry at the Companies House in Cardiff on June 26, 2000. On September 30, 2002, the Complainant has registered the domain name and on May 15, 2012, it applied for the trademark DIGITAL CERAMICS for the classes 21, 35 and 42 (status “Examined” on July 24, 2012, i.e. the application has been examined but not yet prepared for publication, cf. “”, last visited on July 24, 2012) at the Intellectual Property Office (“IPO”), the official government body responsible for granting Intellectual Property rights in the United Kingdom.
The Respondent, allegedly incorporated on March 2, 2005 (the respective company profile, Annex 1 to the Response, is missing), offers, among others, ceramic toners. It has registered several domain names with the Registrar, such as , , or .
The Domain Name was registered on January 31, 2005 (expiration date: January 31, 2013). 8. Parties’ Contentions A. Complainant
The Complainant asserts that the Domain Name is virtually identical to the unregistered trademark DIGITAL CERAMICS, allegedly owned by the Complainant. The Complainant sees the distinctive element of the Domain Name in the expression “digital ceramics”. The Complainant further holds that the Respondent has registered the Domain Name for the sole purpose of diverting business from the Complainant’s website by causing confusion with the Complainant’s trademark. The Complainant states that the public must think that the website to which the Domain Name points is affiliated with the Complainant.
As a remedy, the Complainant originally requested the cancellation of the Domain Name, which it changed into a request for a transfer of the Domain Name by an amendment to the Complaint dated June 15, 2012. B. Respondent
The Respondent asks for the denial of the remedies requested by the Complainant.
The Respondent alleges that “DC”, respectively “Digital Ceramics”, does not only appear in the Respondent’s trade name in the form of an acronym, but it is also part of the logo of the Respondent. The Respondent further states that while the parties conduct the same business activities and similar trade names, “Digital Ceramic” does not refer to a particular legal entity. In addition, the Respondent holds that the customers visit and shop on its websites, which is why a cancellation or a transfer of the Domain Name to the Complainant would seriously prejudice the Respondent. Moreover, the Respondent notes that since the Complainant’s incorporation, i.e. since the year 2000, the Complainant has never shown any interest in the registration of the Domain Name. Finally, the Respondent does not see any bad faith in its registration of the Domain Name. The Respondent rather calls the behavior of the Complainant a conduct in bad faith, because the Complainant allegedly filed the Complaint as a reaction to the failing of a cooperation between the parties. 9. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; that
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and that
(iii) the Domain Name has been registered and is being used in bad faith. A. Rights in a trademark or a service mark
The Complainant first has to establish that there is a trademark or a service mark in which it has rights.
The Complainant’s trade name is “Digital Ceramic Systems Limited”. Further, on September 30, 2002, the Complainant registered the domain name . On May 15, 2012, the Complainant applied for the trademark DIGITAL CERAMICS, which is not registered yet as of July 24, 2012.
Firstly, it has to be determined whether the fact that the Domain Name was registered more than seven years before the application for the said trademark hinders the conclusion of identity or confusing similarity under the UDRP. In this context, section 1.4 of the WIPO Overview 2.0 states:
“Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights.”
Thus, the Complainant’s application for the registration of the trademark DIGITAL CERAMICS in 2012 does not exclude a finding of identity or confusing similarity in terms of paragraph 4(a) of the Policy.
Secondly, it has to be specified what needs to be shown for the Complainant to successfully assert common law or unregistered trademark rights. In cases where the Complaint is based on unregistered trademark rights,
“[t]he complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence for such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark.” (section 1.7 of the WIPO Overview 2.0).
In the present case, the Panel notes that the Complainant does not deliver any evidence supporting “secondary meaning” as described above. In its Complaint, the Complainant only states that
“the Complainant has manufactured and sold [inter alia] digital printing systems and toners under the ‘Digital Ceramics’ mark around the world, including but not limited to North America, the Far East, Europe, New Zealand and Australia, having built up an extensive customer base.” (section VI/A, 2nd point of the Complaint); and that
“[t]he Complainant has spent significant sums on advertising its branded products in trading magazines and at National Exhibitions such as ‘Grand Designs Live’ and has dedicated time, resource and investment to building the brand since the Complainant’s inception.” (section VI/A, 4th point of the Complaint).
The Complainant does not offer any evidence in the nature of advertising, revenues, sales, consumer surveys, media recognition, or the like, which could support the acquisition of “secondary meaning” sufficient to constitute a common law mark (cf. Robotex Inc. v. eD,WIPO Case No. D2007-1074). Therefore, the Panel concludes that the Complainant does not provide enough proof that DIGITAL CERAMICS has become a distinctive identifier associated with the Complainant. In this connection, section 1.7 of the WIPO Overview 2.0 also holds:
“[A] conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.”
For cases as the present one, in which the trademark DIGITAL CERAMICS consists of descriptive words, the burden of proof is even higher:
“[I]n cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness.” (section 1.7 of the WIPO Overview 2.0).
Therefore, given the above and on the basis of all evidence submitted by the parties, in the Panel’s view, the Complainant has failed on the record before the Panel in these proceedings to meet the first requirement of paragraph 4(a) of the Policy, as it did not prove any rights in a trademark or a service mark. B. Identity or Confusing Similarity
As the Complainant failed to prove that it has rights in a trademark or a service mark in the sense of paragraph 4(a)(i) of the Policy, the Panel is not required to consider the fulfillment of the other requirements held in paragraph 4(a) of the Policy, i.e. whether the Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights, whether the Respondent has no rights or legitimate interests in respect of the Domain Name and whether the Domain Name has been registered and is being used in bad faith.
Nevertheless, it may be noted that the Panel has substantial doubts as if all other requirements foreseen in paragraph 4(a) of the Policy would have been fulfilled. 10. Decision
For the foregoing reasons, the Complaint is denied.
Michael A.R. Bernasconi
Sole Panelist
Dated: July 24, 2012
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