The Complainant is Swiss Eco Patent S.A. of Roveredo, Switzerland, represented by Carlo Sala, Italy.
The Respondent is Contact Privacy Inc. of Toronto, Ontario, Canada / Verdicchio Simone of Porto Mantovano, Mantua, Italy. 2. The Domain Names and Registrars
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR. The disputed domain name is registered with Tucows Inc. (the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2014. On October 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 1, 2014, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 2, 2014, PDR Ltd. d/b/a PublicDomainR transmitted by email to the Center is verification response confirming that the Respondent is listed as the registrant and providing contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on October 8, 2014.
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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2014. The Response was filed with the Center on October 28, 2014.
The Center appointed George R. F. Souter as the sole panelist in this matter on November 4, 2014. 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. Factual Background
The Complainant has supplied the Panel with details of a number of trademark registrations incorporating the word IMCO, including International Registration No. 806256A in respect of the trademark IMCO and European Community Trademark Registration No. 009933995 in respect of the trademark IMCO COOKING SYSTEM and device.
The disputed domain names were both registered on May 21, 2014. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights, in that they consist of the words “IMCO”, “cooking” and “system” together only with the generic Top-Level Domain (“gTLD”) indicators “.com” and “.net” respectively.
The Complainant alleges that the Respondent lacks rights and legitimate interests in the disputed domain names, and points out that neither the Respondent nor the companies he represents has or have ever been authorized to use IMCO marks other than the ones specifically licensed to said companies, and said marks do not include the IMCO COOKING SYSTEM mark. Further, the Complainant argues that, whereas under article 4(c)(i) and 4(c)(iii) of the Policy a use is legitimate if, prior to commencement of the dispute, a respondent used the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; in the present case no bona fide offering of goods or services has yet taken place.
The Complainant alleges that the disputed domain names were registered in bad faith, particularly as the Respondent was clearly aware of the existence of the Complainant’s trademark rights, because a company he represented had concluded a licence agreement with the Complainant. Further, the Complainant alleges the circumstances surrounding the registration of the domain names at issue show that the registration took place to prevent the owner of the trademark from reflecting its mark in a corresponding domain name, and that the disputed domain names were registered primarily for the purpose of disrupting the business of a competitor (i.e., the Complainant’s licensee of the IMCO Cooking System mark) and therefore also the Complainant’s business. B. Respondent
The Respondent argues that the term “cooking system” is generic and universal in nature.
The Respondent argues that, at the time he registered the disputed domain names, he was entitled to do so as he was licensed to use the IMCO trademark, and reiterates the generic and universal nature of the term “cooking system”. In connection with the licence to use the IMCO trademark, the Respondent refers to having an exclusive licence to use the mark from “the other legitimate owner of the IMCO trademarks”, but did not supply either a copy of the exclusive licence to which he refers to the Panel, nor did he identify “the other legitimate owner” of the IMCO trademark. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain names be transferred to the Complainant:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
It is well established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g. “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view and considers the gTLD indicators “.com” and “.net” to be irrelevant in the present case. What remains in the disputed domain names is the verbal elements “IMCO”, “cooking” and “system” of the Complainant’s European Community Trademark, IMCO COOKING SYSTEM, Registration No. 009933995. It is well established in prior decisions under the UDRP that the mere addition to a trademark in which a complainant has rights of descriptive or non-distinctive elements is insufficient to avoid a finding of confusing similarity. The Respondent has raised the argument that the term “cooking system” is of a generic and universal nature, and widespread in use in common language. If the Panel accepts this argument, the verbal elements “cooking system” would, in the Panel’s opinion, be descriptive or non-distinctive, and, in the Panel’s opinion, their presence in the disputed domain names would not be sufficient to avoid a finding that the disputed domain names are confusingly similar to the trademark IMCO, in which trademark the Complainant has rights emanating at least from its International Registration No. 806246A. Alternatively, the verbal elements of the Complainant’s European Community Trademark, IMCO COOKING SYSTEM, Registration No. 009933995 contribute, in the Panel’s opinion, to the overall impression of the trademark, and its adoption in toto in the disputed domain names clearly render the disputed domain names confusingly similar to the Complainant’s trademarks. Accordingly, the Panel finds that both disputed domain names are confusingly similar to trademarks in which the Complainant has rights, and that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent refers to having an exclusive licence to use the mark from “the other legitimate owner of the IMCO trademarks”, but did not provide any evidence in support of this proposition. The Complainant has provided details of a non-exclusive license concluded with companies with which the Respondent had some sort of involvement. However, such license does not appear to include any permission to register the IMCO trademark as a domain name, let alone the IMCO COOKING SYSTEM trademark.
This license related solely to Italy. Further, the Respondent Simone Verdicchio is resident in Italy. It is beyond the Panel’s scope in these administrative proceedings to conduct searches as to ownership of the trademark IMCO, but he has examined the electronic record of International Registration No. 806256A drawn to his attention by the Complainant in so far as Italy is concerned. Although the International Registration has been the subject of a partial assignment, the electronic record shows the Italian portion of the International Registration in question as being exclusively owned by the Complainant, and still to be in force.
The Panel further notes that normally, a reseller of a complainant’s goods or services can be making a bona fide offering of goods or services and thus have a legitimate interest in the domain name it its use meets certain requirements (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.3). In this case however, the Respondent is not actually offering the goods at issue on the website(s) at the disputed domain names.
It is the predominant view of panels in previous UDRP decisions, with which the present Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the Complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy. From the material presented to the Panel, and the Panel’s own examination of the electronic record of International Registration No. 806256A, the Panel concludes that the Respondent has failed to establish rights or legitimate interests in the disputed domain names. The Panel, accordingly finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that the disputed domain names were registered in bad faith. The Panel regards the circumstances of the present case, in which the disputed domain names were deliberately “derived” from the Complainant’s trademarks, the subject of
European Community Trademark Registration No. 009933995 and International Registration No. 806256A, with the apparent intention to trade on the Complainant’s reputation, without rights or legitimate interests, as making it appropriate for the Panel to find that the disputed domain names were registered in bad faith and the Panel so finds.
So far as the Complainant is aware, the disputed domain names have not been used. Legitimate concern as to an inactive website was addressed by the panel in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, which found in favour of the complainant. The Panel agrees with the reasoning in that case. In the circumstances of the present case, where the Respondent has not provided evidence of any actual or contemplated good faith use by it of the disputed domain names, the Panel accepts that the Complainant has a clear legitimate concern that seeing the disputed domain names in the hands of the Respondent is a threat hanging over the Complainant’s head.
Accordingly, the Panel finds it appropriate to consider the current passive holding of the disputed domain names as use of the disputed domain names in bad faith, and finds that the Complainant has satisfied the dual requirement of paragraph 4(a)(iii) of the Policy.
In the Panel’s opinion, the factual position presented to him by both parties would typically not be suited for proceedings of this nature. The Panel draws to the attention of the Respondent that it is open to him to contest this decision in a national court, with more extensive facilities, e.g., the hearing of evidence and oral arguments. 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 names and be transferred to the Complainant.
George R. F. Souter
Sole Panelist
Date: November 18, 2014
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