Complainant is Proeza, S.A. de C.V. of Monterrey, Mexico, represented by Arochi & Lindner, Mexico.
Respondent is Domain Admin of Sainte Ruffine, France, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2018. On March 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 12, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2018. The Response was filed with the Center April 9, 2018.
The Center appointed Robert A. Badgley, David H. Bernstein and Adam Taylor as panelists in this matter on May 8, 2018. 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.
On May 22, 2018, the Panel issued Procedural Order No. 1, which stated:
“For a full understanding of the circumstances of the case, Complainant is requested to respond to the following questions:
1. Why did Complainant omit from the Complaint the Parties’ communications in 2012 and 2013?
2. Why did Complainant assert, at paragraph 5 of Section VI. B of the Complaint (“The Respondent has no rights or legitimate interests in respect of the domain name(s)”): “It must be stressed that the Respondent did not register a generic term or a non-distinctive word...”?
3. What is the evidentiary basis for Complainant’s assertion, at the above-mentioned paragraph 5 of Section VI. B of the Complaint, that Respondent registered as a domain name “a recognized trademark with the clear intention to take an unfair advantage and profit out of the name ‘PROEZA’”?
Any submission from Complainant in response to this Procedural Order must be filed with the Center by 4pm Geneva time on May 29, 2018.
Any submission from Respondent in response to Complainant’s submission must be filed with the Center by 4pm Geneva time on June 5, 2018.
All communications from the Parties are to be exclusively with the Center.
In accordance with paragraph 10(c) of the Rules, the date by which the Administrative Panel is required to forward its decision to the Center has been extended to June 13, 2018.”
On May 29, 2018, Complainant submitted to the Center its response to the Panel’s Procedural Order No. 1.
On June 1, 2018, Respondent submitted to the Center his reply to Complainant’s May 29, 2018 submission, and on June 5, 2018, Respondent submitted to the Center a brief “addendum” to its reply. 4. Factual Background
Complainant is a Mexican corporation founded in 1975. According to the Complaint, the company name “Proeza” is derived from “PROmotora de Emopresas ZAno.” Complainant claims to have a presence in 16 countries, and owns and operates five business units, Metalsa, Citrofruit, Astrium, Zánitas, and Areya. These business units operate in diverse industries, including the manufacture of automotive parts, the production of fruit and fruit juices, the operation of foundries, and the provision of information technology services. Complainant’s largest subsidiaries primarily serve business-to-business markets.
One document annexed to the Complaint indicates that Complainant sells goods in France and most of Europe, and operates in Germany but not in France. This document does not, however, specify what Complainant sells in Europe, or under what trademark. As noted above, Complainant operates through five business units, and it appears from the record in this case that Complainant’s business units employ their own trademarks (such as Metalsa) to identify and distinguish the goods they sell. Given the wide diversity of commercial activity by among the various business units (e.g., auto parts and fruit juice), it is hardly surprising that the separate business units would rely principally on their industry-specific marks.
Complainant holds three registered trademarks for PROEZA, all registered in Mexico between January 1990 and March 1991. For example, Mexican Trademark Registration No. 389848 PROEZA (and device), registered on January 30, 1991. It does not appear from the record that Complainant holds any trademark registrations outside Mexico.
Complainant operates a website at . This domain name was registered in 1995, but it is not clear from the record when Complainant first posted content at the website.
The Domain Name was registered on November 18, 2003. The record indicates that the Domain Name resolved to a blank site until 2008. From 2008 to 2011 it resolved to a website containing sponsored pay−per-click links relating to topics such as “Flash Player Update” and “Java Update,” unrelated to Complainant’s various fields of operation (and unrelated to the word “proeza” or its meaning in any language). Since 2012, the Domain Name has resolved to an essentially blank website, with a page showing the word “Proeza,” a copyright notice, and a contact link.
As was set forth in the Response and annexes thereto (but not in the Complaint), the Parties had several communications, beginning on November 22, 2011. On November 22, 2011, a representative (“Mario”) of the IT department of Complainant’s subsidiary Metalsa sent an email to the contact email apparently supplied at the time at Respondent’s website. This email address was […]@. Mario’s message was brief: “Hi, are you using the domain?”
On November 23, 2011, a representative of Respondent (“Schmitt”) responded (using the […]@ email address) to Mario by email, again briefly: “We are using the domain for our email addresses. Why are you asking.”
On November 24, 2011, Mario responded by email to Schmitt: “This is because we are going to open a company in Mexico with that name. Is it possible that you can sell us this domain?”
Later that day, Schmitt responded to Mario by email: “Well, the domain is currently not for sale.” Mario replied by email: “Ok, thanks. If you change your mind in the future, let me know.”
Several months later, on February 29, 2012, Complainant’s Paris-based lawyer wrote a letter to Schmitt. In that letter, Complainant’s counsel asserted that the Domain Name creates confusion with Complainant’s domain name , to Complainant’s detriment. No reference is made to any trademark in this letter. In any event, Complainant’s lawyer told Schmitt that Complainant was prepared to institute a lawsuit to secure a transfer of the Domain Name, but was willing to settle matters amicably by reimbursing Respondent’s transfer costs in exchange for the Domain Name.
On March 9, 2012, Schmitt wrote back to Complainant’s lawyer. The response included many points not germane to the resolution of this case, but the essential points made by Schmitt are: (1) in November 2003, Respondent checked the French trademark website and confirmed that there was no PROEZA mark registered in France at the time he registered the Domain Name; (2) for the past nine years (i.e., since 2003), he has used the Domain Name “for our email addresses”; (3) “Proeza” is a dictionary word in Spanish and Portuguese, conveying “positive values that guided our choice”; and (4) PROEZA is being used by at least 41 companies around the world for numerous products and services. For these and other reasons, Schmitt emphatically declined to surrender the Domain Name.
On March 15, 2012, Complainant’s lawyer wrote to Respondent again. In this letter, Complainant’s counsel suggested that, because Respondent was not using the Domain Name for an actual website, he might consider selling it to Complainant for EUR 1,500 plus transfer costs.
On March 20, 2012, Respondent (Schmitt) wrote to Complainant’s counsel, expressing his satisfaction that Complainant had evidently come to recognize Respondent’s rights in the Domain Name, and declining the offer to sell the Domain Name.
Nearly a year later, on February 26, 2013, Mario reached out again to Respondent (again, at the […]@ email address) and wrote in an email: “Hi Proeza admin, are you open to negotiate the purchased [sic] of your domain?”
On March 1, 2013, Schmitt emailed back to Mario, chiding Complainant for sending “silly letters from a French lawyer that made us very angry…” Schmitt said the chances were “very low” that Respondent would sell the Domain Name, but asked for a figure.
On March 4, 2013, Mario offered USD 5,000 to buy the Domain Name. Schmitt declined, saying: “Sorry but we prefer keeping our domain name.”
Finally, on January 29, 2018, domain name marketplace Sedo GmbH received an anonymous offer to buy the Domain Name for USD 5,000 and conveyed it to Respondent, who “immediately” rejected the proposal and made no counteroffer. The record does not reflect who made this anonymous offer, but Complainant states that it has had no contact with Respondent since the 2013 rejection of its offer. 5. Parties’ Contentions A. Complainant
Complainant asserts that Respondent registered the Domain Name “with the clear intention to take an unfair advantage and profit out of the name ‘PROEZA.’” Complainant states in the Complaint: “It must be stressed that the Respondent did not register a generic term or a non-distinctive word, but a recognized trademark…” According to Complainant, the mark PROEZA is “well-known,” and, under the principles of the decision in Telstra Corp. v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (subsequently referred as “Telstra”), Respondent’s “passive holding” of the Domain Name constitutes bad faith. B. Respondent
Respondent denies that he was aware of Complainant’s PROEZA mark when he registered it in 2003. According to Respondent, Complainant has vastly overstated the strength of the PROEZA mark, particularly outside of Mexico. Respondent asserts that Complainant is merely a holding company whose goods and services are actually known by the five marks associated with its five business units – not by PROEZA. For instance, Respondent notes that the Metalsa Facebook page is international in nature, with content in English, whereas the Proeza Facebook page is locally focused, with content in Spanish. Further, Metalsa’s LinkedIn followers outnumber Proeza’s LinkedIn followers by more than six to one. In essence, Respondent accused Complainant of conflating the trademark recognition enjoyed by its business units (especially Metalsa under the METALSA mark) with the PROEZA mark, which, Respondent urges, is scarcely known at all outside Mexico.
In addition, Respondent points to numerous third parties worldwide who use “Proeza” in connection with their business.
Respondent avers that he registered the Domain Name because “proeza” derives from an old French term meaning “prowess,” and today it has admirable connotations as an ordinary dictionary word in Spanish (“prowess”) and Portuguese (“feat”).
Respondent also observes that Complainant omitted from the Complaint any mention of the Parties’ previous communications, which omission, Respondent asserts, demonstrates that Complainant is using this proceeding to wrest the Domain Name from Respondent despite knowing it had no valid basis to do so.
Respondent asks that the Complaint be denied, and he seeks a finding that Complainant has engaged in Reverse Domain Name Hijacking (“RDNH”). 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that Complainant has trademark rights in the mark PROEZA through registration in Mexico. The Panel also concludes that the Domain Name is identical to the mark.
Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish his rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although Respondent claims to have registered the Domain Name because “proeza” derives from an old French term and is today a dictionary word in Spanish and Portuguese, there is nothing in the record to substantiate those assertions. The claim that Respondent, who resides in France, was motivated in part by the fact that the Spanish and Portuguese term “proeza” derives from an old French term (Wiktionary states that it is from the old French term “proeche, proesce (compare modern French prouesse)”, lacks credibility. Respondent has not, for example, alleged or submitted any evidence that he studies etymology and old French terms, nor has he submitted any evidence that he speaks Spanish or Portuguese. Respondent’s occasionally hyperbolic statements throughout this proceeding also tend to cast some doubt on his overall credibility.
Moreover, although Respondent has owned the Domain Name since 2003, he does not appear to have used it in any way to reflect the dictionary meaning of the term (prowess or feat). Respondent’s past pay-per-click page did not post any advertisements or content related to that dictionary meaning, and since 2012, the website has had no substantive content at all. See Section 2.10.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (“Panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.”).
Although it is a close question on this record, the Panel finds that Respondent lacks rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has not registered or used the Domain Name in bad faith.
There is no evidence in the record that Respondent was aware of Complainant’s PROEZA mark in 2003 when he registered the Domain Name. Respondent denies having heard of Complainant or its mark when he registered the Domain Name, and the Panel finds this denial plausible. Finally, with respect to the pay−per−click advertising on Respondent’s website from 2008 to 2011, these ads were unrelated to Complainant’s business activities. In short, absent a finding that Respondent more likely than not had Complainant’s mark in mind when registering the Domain Name, there can be no bad faith registration.
There is also no evidence in this record that Respondent has used the Domain Name in bad faith. Respondent did not initiate the discussions about selling the Domain Name, and there is no evidence that he was lying in wait for the trademark owner to come calling with a monetary offer. Indeed, Respondent rejected each offer he received from Complainant, stating he would prefer to keep the Domain Name. There is no evidence that Respondent has a pattern of preclusive domain name registrations, or that he was determined to disrupt Complainant’s business as a competitor. Respondent’s website for a time contained hyperlinks that apparently produced per-click revenue, but the links did not pertain to Complainant’s business, and pay-per-click advertising is not per se illegitimate or nefarious. In sum, none of the express (though non-exclusive) bases for bad faith registration and use in Policy paragraph 4(b) is present here.
Finally, Complainant’s reliance on the Telstra decision’s “passive holding” doctrine is misplaced. The Telstra case involved an indisputably famous trademark. In the present case, Complainant has done next to nothing to demonstrate that its PROEZA mark is well-known, much less famous.
Complainant has failed to establish Policy paragraph 4(a)(iii). D. Reverse Domain Name Hijacking
Respondent has requested that the Panel make a finding of RDNH against Complainant. According to Respondent, Complainant knew many years ago that Respondent had no knowledge of Complainant or its PROEZA mark at the time he registered the Domain Name, that Respondent had not put the Domain Name to any use that would infringe Complainant’s mark, that Respondent had registered the Domain Name for personal email purposes, that Respondent had registered the Domain Name because it constituted a dictionary word with positive connotations, and that Respondent had no interest in selling the Domain Name.
Section 4.16 of the WIPO Overview 3.0 provides a number of non-exclusive factors which, in appropriate circumstances, support a finding of RDNH. Such factors as may be relevant to the instant proceeding include: “the provision of false evidence, or otherwise attempting to mislead the panel”; and “the provision of intentionally incomplete material evidence – often clarified by the respondent.” A finding of RDNH rests within the sound discretion of the panel, and the mere failure of a complaint is not in itself grounds for a finding of RDNH.
The Panel’s review of the record here, including a misleading statement in the Complaint related to the dictionary meaning of “proeza”, and the Complaint’s total omission of the Parties’ previous communications, led the Panel to issue Procedural Order No. 1, quoted in full above. The Panel will set forth below, in summary fashion, the Parties’ respective responses to Procedural Order No. 1 before examining the question of RDNH.
First, with respect to Complainant’s omission of the Parties’ discussions in 2012 and 2013, Complainant asserts that its outside counsel (who drafted the Complaint in this proceeding) “did not know of them.” According to Complainant, its in-house counsel was not aware of the 2011 communications between Mario (the IT employee) and Schmitt. With respect to the 2012 communications between Complainant’s French lawyer and Schmitt, Complainant asserts that its in-house lawyer “was aware” of these communications “but did not understand the relevance” of them and hence did not mention them to the outside lawyer who drafted the Complaint in this case.
In response, Respondent chides Complainant’s in-house counsel for failing to understand the import of the 2012 communications, and asserts that the outside lawyer had a duty to ask in-house counsel whether the Parties had engaged in prior communications.
Second, with respect to the allegation in the Complaint that “it must be stressed that the Respondent did not register a generic term or a non-distinctive word,” Complainant’s essential point is that “proeza” may be a word in Spanish or Portuguese, but Respondent has not shown that “proeza” is a generic name of an actual product or service, let alone one offered by Respondent, and therefore its dictionary meaning is irrelevant to this case.
In response, Respondent makes a number of assertions unnecessary to the Panel’s disposition of this case.
Third, with respect to the Panel’s request for proof to support the allegation in the Complaint that Respondent registered the Domain Name “with the clear intention to take an unfair advantage and profit out of the name ‘Proeza,’” Complainant argues that the proof lies in the “undisputed fact that the mark PROEZA was registered and publicly used by Complainant long before [Respondent] registered the mark [sic] in 2003.” According to Complainant, this fact, coupled with Respondent’s failure to explain his registration of the Domain Name, his failure to offer a product or service for which “proeza” is a generic term, and his passive holding of the Domain Name for many years, supports the allegation that Respondent clearly intended to target Complainant’s PROEZA mark.
In response, Respondent asserts that PROEZA is not a “recognized” mark outside of Mexico, and was not so back in 2003 when Respondent registered the Domain Name. Respondent also notes that he has repeatedly and consistently declined offers to sell the Domain Name, and hence he cannot be profiting off of the PROEZA mark.
The Panel unanimously concludes, on the record presented here, that the filing and pursuit of this Complaint constitutes RDNH, for the following reasons.
First, the Panel finds that it was misleading for Complainant to omit all discussion of the Parties’ previous communications regarding the Domain Name. After an IT employee of Complainant’s affiliate tried in 2011 to gauge Respondent’s interest in selling the Domain Name and having been told by Respondent that he had no interest in selling the Domain Name, Complainant hired a French lawyer in 2012 to assert Complainant’s rights and threaten Respondent with a lawsuit if he refused to transfer the Domain Name. In response, Respondent stated that he was unaware of Complainant, had registered the Domain Name ten years earlier because of its dictionary meaning, was using it for email address purposes, and added that dozens of persons or entities around the world were using the term “proeza” in connection with their businesses or activities. As such, in 2013, Complainant had a full picture of Respondent’s history with the Domain Name and his motivations in connection therewith.
With this information and with a minimal review of the prevailing standards under the Policy as reflected in panel decisions, it should have been obvious to Complainant at that time that a claim under the Policy would be a dubious pursuit. Nonetheless, and apparently without any additional information or evidence five years later, Complainant initiated this proceeding in 2018 with allegations that Respondent had a “clear intention to take an unfair advantage” of a “recognized trademark.” Fortunately for Respondent, he kept the communications from Complainant and its counsel from five years earlier, and could document the exchanges in his Response. If Respondent had not done so, the Panel in this case might have been left with the false impression that the Parties were total strangers at the time of the Complaint’s filing. Accordingly, the Panel finds it misleading that Complainant omitted this information from the Complaint and aggravated the omission by alleging that Respondent had a “clear intent” to target Complainant’s PROEZA mark.
The fact that outside counsel may not have been told about these letters does not excuse Complainant’s failure to disclose them, especially since Respondent’s response to those letters made the point that “proeza” is a dictionary term (see further below) and that Respondent rebutted the assertion of bad faith registration and use. A party should not be able to avoid the consequences of its conduct by shielding its counsel of knowledge about that conduct. This omission lies at the doorstep of in-house counsel, who should have appreciated the significance of these letters or should have asked outside counsel about them; the Panel does not agree with Respondent that outside counsel is responsible to the extent it failed to inquire about the letters (about which it had no knowledge).
Second, the Panel finds Complainant’s misleading statement – made with emphasis in the Complaint – that “it must be stressed that the Respondent did not register a generic term or a non-distinctive word,” inexcusable. Although Complainant may be correct, as a technical matter, that the term is not generic (since a term can only be generic when used in connection with specific goods or services, and there is no claim here that Respondent was using the term “proeza” generically), it was inaccurate to say that “proeza” is not a non-distinctive term. Given that “proeza” is a dictionary word, it is unambiguously non-distinctive as a stand-alone word, even if it also serves as a trademark.
Complainant’s explanation in response to Procedural Order No. 1 does not change the Panel’s view that this assertion constituted bad faith by the Complainant. In the response, Complainant argues that the fact that “proeza” is a dictionary word in two languages is irrelevant because Respondent himself is not using the Domain Name in connection with its dictionary meaning. Although, as noted above, that might be true with respect to the issue of genericness, it does not explain the inaccurate statement that “proeza” is not a non-distinctive term.
In any event, if that was the Complainant’s view, it should have explained this clearly in the Complaint. The Panel finds it troubling that a Mexican Complainant could omit the fact that “proeza” is a dictionary word in the Spanish language – Mexico’s official language. Arguably, if Respondent had not filed a response, the dictionary meaning of “proeza” would not have been brought to the Panel’s attention, the Domain Name more likely would have been transferred, and an injustice would have been done. In the UDRP process, there is no discovery and rarely a hearing: panels rely on the candor of the parties in order to reach a just and fair decision. In this case, Complainant was not candid with the Panel. In sum, the Panel finds that Complainant’s misleading statement about the word “proeza” supports a finding of RDNH.
The Panel observes that this finding of RDNH is a close call, chiefly because it is not clear on this record (even as amplified by Procedural Order No. 1) that certain of Complainant’s various misstatements and material omissions were intentional, or simply the result of a confluence of gross misunderstanding and poor internal communications. However, having carefully weighed up the evidence and for the reasons given above, the Panel believes that, at the minimum, Complainant’s inclusion of these assertions in its Complaint was grossly negligent, and on the record of this case, sufficient to warrant a finding of RDNH.
This RDNH finding is also a close call because of the indecorous and sometimes abusive tone of Respondent in this proceeding. The Panel expressly states that its finding of RDNH is not an affirmation of Respondent’s conduct; to the contrary, the Panel is equally troubled by Respondent’s submissions in this case. However, because the question of RDNH focuses on Complainant’s conduct, and not on how the Respondent himself has behaved, the Panel concludes that a finding of RDNH is warranted. 7. Decision
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Presiding Panelist
David H. Bernstein
Panelist
Adam Taylor
Panelist
Date: June 12, 2018
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