Complainant is CIA. Industrial H. Carlos Schneider of Joinville, Brazil, represented by Stagio Propriedade Intelectual, Brazil.
Respondent is WHOIS Privacy Service Pty Ltd. of Fortitude Valley, Australia / Domain Admin, Ashantiplc Limited of Hong Kong, China, represented by John Berryhill, Ph.d., Esq., United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with F (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 26, 2016 in English and Portuguese. On October 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 2016, 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. On November 15, 2016 the Center notified the parties that the Registrar had informed that the language of the registration agreement is English and that the proceedings would continue in English only. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on November 18, 2016.
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 Respondent of the Complaint, and the proceedings commenced on November 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2016. On December 13, 2016 Respondent requested the automatic four calendar day extension for response under paragraph 5(b) of the Rules. The Response was filed with the Center on December 17, 2016.
The Center appointed Flip Jan Claude Petillion, Alvaro Loureiro Oliveira and The Hon Neil Brown Q.C. as panelists in this matter on January 13, 2017. 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
Complainant is a Brazilian manufacturer of fasteners. Complainant shows to be the holder of various trademarks consisting of or containing the word "ciser" in various countries, including Brazil, the United States of America, Bolivia and Honk Kong, China. A figurative trademark containing the word "ciser" was registered under No. 300926316 in Hong Kong, China on August 2, 2007. A similar figurative trademark was registered under No. 6206430 in China on January 14, 2010.
The disputed domain name was created on May 6, 2003, and has been registered by Complainant until 2006. After Complainant failed to renew the registration, the disputed domain name was registered by Respondent in 2006. Respondent used the disputed domain name for monetization through pay-per-click links. From 2014 onward, the disputed domain name has been offered for sale. Respondent has set a USD 10,000.00 threshold below which it will not respond to offers. 5. Parties' Contentions A. Complainant
Complainant considers the disputed domain name to be confusingly similar to a trademark in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name. According to Complainant, Respondent has not used the disputed domain name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the disputed domain name. Finally, Complainant claims that the disputed domain name was registered and is used in bad faith. Complainant considers that Respondent registered the disputed domain name for the purpose to sell, rent, or transfer the disputed domain name to Complainant for an amount higher than proven expenditures directly related to the disputed domain name. Complainant considers that Respondent is preventing Complainant to obtain the disputed domain name corresponding to its brand and that "F" can intentionally profit from a likelihood of confusion with the CISER brand in its attempt to sell or rent the disputed domain name. B. Respondent
Respondent does not dispute that Complainant, as of the time the disputed domain name was acquired by Respondent, possessed regional rights in the CISER trademark in South America and Mexico in connection with screws and nuts. However, Respondent considers that Complainant's geographic expansion post-dates Respondent's acquisition of the disputed domain name. Respondent argues that it has been using the disputed domain name for advertising health and fitness products in connection with the generic meaning of the suffix "-ciser" as a short form of "exerciser". Respondent considers that it has not been targeting Complainant and makes reference to a number of third party uses of the sign "ciser". Finally, Respondent argues that it has not used the disputed domain name in bad faith and that Complainant fails to show bad faith registration of the disputed domain name. In this respect, Respondent refers to the fact that Complainant takes action a decade after it let the disputed domain name lapse. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. The disputed domain name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there are registered CISER trademarks in which Complainant has rights.
The Panel notes that the disputed domain name incorporates Complainant's CISER trademark in its entirety. The Panel is of the opinion that the addition of generic Top-Level Domains ("gTLDs") can be disregarded when comparing the similarities between a domain name and a trademark (See Bialetti Industrie S.p.A. v. Onno Brantjes, Stichting Taxaceae,WIPO Case No. D2016-1450; Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck,WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah,WIPO Case No. D2014-0269). Therefore, the Panel considers the disputed domain name to be identical to Complainant's CISER trademark.
Accordingly, Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant has the burden of establishing that the respondent has no rights or legitimate interests in respect of the disputed domain name.
It is well established under the Policy that it is sufficient for a complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the respondent. See, Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
The Panel notes that Respondent has not apparently been commonly known by the disputed domain name and that Respondent does not seem to have acquired trademark or service mark rights. Respondent's use and registration of the disputed domain name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
In fact, Respondent is currently not making any use of the disputed domain name, apart from offering it for sale. Previously, Respondent has been using the disputed domain name to advertise automatically generated pay-per-click ("PPC") links. According to Respondent, these PPC links were associated with the generic meaning of the suffix "-ciser" as a short form of "exerciser". The Panel accepts that the term "-ciser" is sometimes used as a suffix in words such as "x-ciser" or "shoulder-ciser". However, the Panel Majority finds no evidence that the suffix "ciser" has any generic meaning if used individually. As a result, the Panel Majority finds Respondent's explanation that the disputed domain name was registered for its appeal as a commonly used generic term unconvincing.
Therefore, the Panel Majority finds that Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith (See, e.g., Telstra Corporation Limited v. Nuclear Marshmallow,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
In the instant case, the disputed domain name has clearly been registered and used for speculative purposes. However, there is no evidence that Respondent had Complainant's mark in mind when registering the disputed domain name. In addition, Complainant provides no explanation as to why it abandoned the registration of the disputed domain name and waited for more than a decade to file a complaint. As a matter of fact, Complainant did not reveal to the Panel that it previously held the disputed domain name. In the circumstances of the case, and absent evidence to the contrary, it seems that Complainant acquiesced in Respondent's registration of the disputed domain name.
Accordingly, this Panel finds that Complainant has not shown, on the balance of probabilities, that the disputed domain name was registered and is being used in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Flip Jan Claude Petillion
Presiding Panelist
Alvaro Loureiro Oliveira
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: January 26, 2017 Separate Opinion by the Hon Neil Brown Q.C.
Panelist Brown finds that Respondent has a right or legitimate interest in the domain name. It is true, as the majority say, that there was little if any evidence that the word "ciser", when used by itself as a separate word, has a generic meaning such an "x-ciser" or "shoulder-ciser". But that was not Respondent's case. Respondent case was that the word has acquired a generic meaning from its frequent use as a suffix, and that its generic meaning now connotes the notion of exercise and related equipment. Accordingly, Respondent argued that this gives it the right to use the word for its generic value, which it has done, and not for its value as Complainant's trademark, which it has not done. Respondent also argued for those very reasons that the word is of value to entities who may want to use the domain name in its generic sense, such as a business that focuses on goods and services of an exercise or therapeutic genre.
This was part of Respondent's wider case that the word "ciser" is in public use. Its case, supported by extensive exhibits, was that there are already:
(a) a series of trademarks held by parties other than Complainant for CISER, in the fields of construction services, electrical installation and computer services;
(b) a series of acronyms of established bodies such as the Cornell Institute for Social and Economic Research (CISER) making up the word "ciser"; and
(c) some use of Ciser as a surname.
This evidence alone shows that the word has at least some currency in the community at large, although at the same time it is important not to overestimate or exaggerate its use. But far more significant is the additional evidence tendered by Respondent that showed:
(d) use of the word as a suffix for many types of exercise equipment and other equipment in the orthopedic, and therapeutic fields. In that regard, Respondent adduced evidence from the European Trademarks and Design Network of some 28 trademarks ( some no longer current) for goods and services such as HEALTH-O-CISER, MEDI-CISER, AEROB-I-CISER, FACE-A-CISER, PALM-ER-CISER, KITTY-CISER, SHOULDER-CISER, WALK-A-CISER, SOOTHE-A-CISER, TRIM-CISER, KICK-A-CISER and ULTRA CISER. Again, it is important not to exaggerate this commercial use of the word, but it is apparent that, at least in some fields, the word has currency as a noun connoting exercise and related equipment and that it is used to invoke the notion of exercise equipment in general.
It should also be noted that no attempt was made by Complainant to rebut any of the above evidence or to argue against its significance by filing a supplementary submission or even to give any reason for not doing so.
Accordingly, the only evidence on this issue is unchallenged, supports only Respondent's case and should be followed in the absence of any reason to the contrary of which none has been alleged or shown.
Indeed, Respondent's case was also that it had itself used the domain name in its generic sense in connection with exercise equipment and not in connection with Complainant's line of business, fasteners, nuts and the like. It is therefore reasonable to conclude that the inherent value of the domain name to Respondent and the use to which it put it, was as a word in general if not wide use that invoked the notion of exercise and related equipment. That of course does not give a carte blanche to anyone in Respondent's industry to register the domain name and use it to target Complainant and its goods, disrupt its business, confuse the public or engage in any other untoward conduct. The only evidence on the use of the domain name is that Respondent has never done any of those things and has used the domain name to promote exercise equipment and the like, such as neck pillows, fitness, "workout" and ergonomics, all of which fit comfortably within the generic meaning of the word "ciser", as well as some general goods and services. Complainant's products were not targeted, or even mentioned in any form.
This panelist is also concerned that the unchallenged evidence is that Complainant itself was originally the registrant of this domain name, that it was due for renewal on May 6, 2006, that it was not renewed by Complainant on that date or on any other date and that Complainant apparently did nothing to assert it alleged rights to the domain name from that date until it filed its complaint on November 18, 2016. It also did not reveal any of this voluntarily to the Panel and indeed has certified that the Complaint is "complete", which it clearly is not. Complainant has thus, by its own conduct, allowed Respondent's claimed right and legitimate interest in the domain name to become established and entrenched for 10 years, without any challenge from Complainant itself, who on the only evidence, abandoned any active interest in it. It would therefore be unconscionable to decide in favour of a complainant who walked away from a domain name, only to return after 10 years to deny the registrant's right that the complainant had allowed to be established.
It is therefore appropriate to find on the balance of probabilities that Respondent has a right and legitimate interest in the domain name.
The Hon Neil Brown Q.C.
Date: January 26, 2017
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