The Complainant is Florim Ceramiche S.p.A. of Fiorano Modenese, Modena, Italy, represented by Bardehle Pagenberg, Italy.
The Respondent is Domain Hostmaster, Customer ID: 24391572426632, Whois Privacy Services Pty LTD, of Fortitude Valley, Queensland, Australia / Domain Administrator, Vertical Axis Inc. of Christ Church, Barbados, represented by ESQ Law Firm, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with F Pty Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2015. On November 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 20, 2015, the Registrar 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 November 25, 2015, providing the registrant and contact information disclosed by the Registrar, requesting clarification on the content of part of the Complaint and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 26, 2015.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 1, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2015. The Response was filed with the Center on December 23, 2015.
The Center appointed Tobias Zuberbühler, Angelica Lodigiani and The Hon Neil Brown Q.C. as panelists in this matter on January 22, 2016. 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 manufacturer of ceramic tiles and related products. It is the owner of a figurative IR trademark CEDIT with designations in several European countries dating back to November 19, 1962.
The disputed domain name was registered by the Respondent on August 1, 2004. The previous owner of the disputed domain name had registered it on May 15, 2000. The disputed domain name is currently linked to a pay-per-click (“PPC”) website advertising links to websites regarding consumer credits. 5. Parties’ Contentions A. Complainant
In summary, the Complainant contends the following:
The Complainant is the owner of various trademarks reflecting or incorporating the term “cedit”, the registrations of which date back to 1962. The disputed domain name is identical or confusingly similar to the Complainant’s trademarks.
The Respondent has no legitimate interest in respect of the disputed domain name other than to sell it to the Complainant.
The disputed domain name was registered only a few months after the last national and international registration of a CEDIT trademark. It is thus highly likely that the registration was made in bad faith after consultation of the Italian and international trademark databases. B. Respondent
The Respondent has argued the following in its Response:
While the Complainant may have presented sufficient evidence to satisfy its trademark rights, there is no evidence that the Complainant’s trademark is a well-known brand or that the Complainant was targeted by the Respondent in any manner.
The Respondent registered the disputed domain name in good faith based on the inherent value of the common dictionary word “credit”. This is not a case of a “typosquatter” profiting from the typo of a trademark; the disputed domain name is rather a typo of a highly valuable and regularly searched dictionary word. Accordingly, the Respondent has used the disputed domain name in connection with a bona fide offering of goods and services in the form of pay-per-click ads related to the word “credit”.
The Respondent is certainly not attempting to compete with the Complainant, disrupt its business, or prey on its mark in any way. Respondent is simply using a typographical variation of a common English word for a descriptive purpose. Furthermore, it is notable that the Complainant waited over eleven years to file its Complaint.
A review of the Complaint and the facts shows that this case was filed in bad faith, primarily to harass the Respondent because the Complainant was unsuccessful in purchasing the disputed domain name. Therefore, the Panel should find that the Complainant abused these administrative proceedings in an attempt of Reverse Domain Name Hijacking. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name is identical to the Complainant’s CEDIT trademarks. The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent asserts that it registered the disputed domain name based on the inherent value of the common dictionary word “credit” and the Respondent’s ability to secure a typographical variation of the word, without having the Complainant’s foreign trademark in mind. The Respondent points out in this connection that such strategy corresponds to the Respondent’s business of registering generic dictionary term domain names, including generic domain names with typographical errors. The Respondent indeed appears to have registered hundreds of generic dictionary term domain names and numerous domain names incorporating typographical variations of English dictionary words. To substantiate its claim, the Respondent has listed in its Response 20 domain names incorporating the term “credit” and 10 domain names incorporating typographical variations of dictionary words. The Respondent's presentation is supplemented by a declaration of one of its directors stating inter alia that the Respondent has indeed registered the domain names in question.
Based on the facts of this case, the Respondent’s position appears to be plausible, considering in addition that:
(i) the Complainant’s trademark does not seem to be well-known and is only designated for some European countries, but not for the Respondent’s country of domicile, being Australia in the case of the registrar’s privacy service and Barbados in the case of the named Respondent;
(ii) the Respondent has not engaged in activities that could induce to believe that it registered the disputed domain name in contrast with a legitimate interest conduct;
(iii) the trademark CEDIT does not appear on the Complainant’s website; and
(iv) the Complainant waited over eleven years to initiate these proceedings.
Against this background, it also seems to be relevant that the Complainant has failed to prove a prime facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
To conclude, the Panel finds that the Complainant has failed to fulfill the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant has also not provided any evidence suggesting that the Respondent knew of or has heard of the Complainant and its trademark. Indeed, for the reasons set out above, the Respondent’s position that it did not register the disputed domain name with the Complainant’s trademark in mind appears to be credible.
Furthermore, bad faith cannot be attributed to the Respondent solely by the fact that it conveyed to the Complainant that it would not respond to offers to buy the disputed domain name at less than USD 29,000. Such an offer was legitimate under the circumstances of this case and, in any event, the evidence is not that the Respondent offered to sell the disputed domain name to the Complainant but that the Complainant made an unsuccessful offer to buy it. D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. Reverse Domain Name Hijacking is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant's lack of relevant trademark rights, or of the respondent's rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), section 4.17).
In the case at hand, the Complainant has provided evidence of long-standing registrations in the trademark CEDIT which is identical to the disputed domain name. This fact alone is sufficient in the Panel's view to decline a finding of Reverse Domain Name Hijacking. The Respondent’s corresponding request is therefore denied. 7. Decision
For the foregoing reasons, the Complaint is denied.
Tobias Zuberbühler
Presiding Panelist
Angelica Lodigiani
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: February 11, 2016
Full & Egal Universal Law Academy