The Complainant is 3A Composites GmbH of Osnabrück, Germany, represented by The Law Offices of Dr. Christos A. Theodoulou LLC, Cyprus.
The Respondents are Savvy Investments, LLC Privacy ID# 14316363 of Cheyenne, Wyoming, United States of America (“Unites States”) (“First Respondent”), and Michalis Mavromichalis of Nicosia, Cyprus (“Second Respondent”), represented by Phoebus, Christos Clerides & Associates LLC, Cyprus. 2. The Domain Name and Registrar
The disputed domain name is registered with DNC Holdings, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2019. On January 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 2019, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on February 4, 2019.
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 Respondents of the Complaint, and the proceedings commenced on February 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2019. On February 19, 2019, the Second Respondent requested for the additional four calendar days to respond to the Complaint pursuant to paragraphs 5(b) and 5(e) of the Rules. Accordingly, the due date for Response was extended to March 1, 2019. The Response of the Second Respondent was filed with the Center on March 1, 2019. On March 15, 20, 27, and 29, 2019, the Second Respondent submitted supplemental filings. On March 15, 27, and 28, 2019, the Complainant submitted supplemental filings.
The Center appointed Assen Alexiev, Wilson Pinheiro Jabur and Dennis A. Foster as panelists in this matter on March 26, 2019. 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.
The Panel has decided to accept and take into account the supplemental filings of the Parties as they further clarify certain aspects of the dispute and the Parties’ positions.
The Complainant insists that Savvy Investments LLC should be the Respondent in this dispute, because it is officially listed as the registrant of the disputed domain name. Mr. Michalis Mavromichalis maintains that he is the proper Respondent, since Savvy Investments LLC is not the real owner of the disputed domain name, but is only a company used for security and privacy reasons. The Registrar states in its verification response that Savvy Investments LLC is the registrant of the disputed domain name, while the Parties are not in dispute that Mr. Michalis Mavromichalis is the person who actually uses the disputed domain name and the associated website. Following its verification response to the Center, upon request by the Second Respondent, the Registrar confirmed that it was using Savvy Investments LLC to offer its customers a WhoIs proxy service for registered domain names, but did not disclose the identity of the ultimate beneficial owner of the disputed domain name. Taking all these circumstances into account, the Panel decided to include both Savvy Investments LLC and Mr. Mavromichalis as the Respondents in this proceeding in order to take into account the conduct of each of them and to ensure that its decision on the substance of the dispute has effect in respect of each of them. 4. Factual Background
The Complainant was established more than 40 years ago. It manufactures and markets aluminum composite panels, structural composite material, plastic sheets and lightweight foam boards for architecture, visual communication and the transport and industry markets. The Complainant uses the brand ALUCOBOND for its aluminum composite panels. To this date, more than 130 million square meters of the Complainant’s ALUCOBOND panels have been used for architectural projects around the globe, including the Dublin Airport Terminal 2 and the Vienna Central Station. The Complainant’s official website is located at “”.
The Complainant holds the following trademark registrations for ALUCOBOND (the “ALUCOBOND trademark”):
- the International trademark ALUCOBOND with registration No. 350378, registered on September 10, 1968 for goods in International Classes 6, 12, 17, 19 and 20;
- the trademark ALUCOBOND with registration No. DE851750, registered in Germany on November 14, 1968 for goods in International Classes 6, 7, 9, 17, 19 and 20;
- the trademark ALUCOBOND with registration No. UK00000947281, registered in the United Kingdom on August 21, 1969 for goods in International Classes 6 and 19; and
- the trademark ALUCOBOND with registration No. F76815, registered in Greece on July 17, 1986 for goods in International Classes 6, 12, 17, 19, 20 and 21.
The disputed domain name was registered on March 30, 2015. According to the evidence submitted by the Complainant, on September 26, 2018, the disputed domain name resolved to a website featuring aluminum composite panels produced by the Complainant and one of its competitors. 5. Parties’ Contentions A. Complainant
According to the Complainant, the ALUCOBOND trademark is well-known in the field of aluminum composite panels, and the Complainant’s use and registration of this trademark predates by more than forty years the registration of the disputed domain name in 2015.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s ALUCOBOND trademark as it incorporates the trademark in its entirety, and the addition of a hyphen and of the geographical name “Cyprus” does not sufficiently distinguish the disputed domain name from the trademark of the Complainant, which is a fictitious word of its own creation. Rather, such addition is likely to suggest to consumers that the associated website belongs to the Complainant’s own business in Cyprus.
The Complainant submits that the Respondents have no rights or legitimate interests in respect of the disputed domain name, as they have not acquired any related trademark rights, are not known by the disputed domain name, and have not used the disputed domain name in connection with a bona fide offering of goods or services. The First Respondent is an Internet consulting company, which provides domain name contact information for those parties desiring to maintain their privacy on the Internet. The website at the disputed domain name is being used by a competitor of the Complainant, who is active in the business with aluminum composite panels. Thus, the First Respondent is not making a legitimate fair use of the disputed domain name, but is using it for commercial gain to mislead consumers towards a direct competitor of the Complainant and, in so doing, tarnishes the trademark of the Complainant.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. It was registered in bad faith by the First Respondent primarily for the purpose of renting to or otherwise trading on the basis of a contractual relationship with a direct competitor of the Complainant. At the time of registration of the disputed domain name, the First Respondent had knowledge of the Complainant’s ALUCOBOND trademark either personally or through its client. The fact that the disputed domain name is being used without the Complainant’s authorization by a direct competitor of the Complainant in the same field of business shows that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant or for giving to a competitor of the Complainant a business advantage by exploiting the good reputation of the Complainant’s ALUCOBOND trademark on the market.
The Complainant submits that since 2015 the disputed domain name has been used by the Second Respondent – a competitor to the Complainant. The Complainant contacted the Second Respondent many times in the period between March 2015 and February 2016 with requests to remove all references to the ALUCOBOND trademark and to change the disputed domain name. Then, after allowing the Second Respondent some time to comply with the Complainant’s request, the Complainant sent a cease and desist letter to it on April 4, 2018, to which no substantive reply was received.
The Complainant adds that by using the disputed domain name, the Respondents have intentionally attempted to attract for commercial gain Internet users to the associated website by creating a likelihood of confusion with the Complainant’s ALUCOBOND trademark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website or of the products or services posted on it. As a result, the Respondents may generate unjustified revenues and are therefore illegitimately capitalizing on the reputation of the ALUCOBOND trademark. The website to which the disputed domain name resolves markets aluminium composite panels from other manufacturers that are direct competitors to the Complainant and describes aluminium composite panels as being widely known as “Alucobond”, thus implying that “Alucobond” is a synonym for aluminium composite panels, which dilutes the ALUCOBOND trademark and promotes its degeneration to a generic term, which according to the Complainant it is not.
In its supplemental submissions, the Complainant states that the validity of the ALUCOBOND trademark, its alleged transformation to a generic term and the alleged exhaustion of the Complainant’s trademark rights are issues that are beyond the scope of the Policy and could only be decided by the respective competent authorities. The Complainant points out that the Second Respondent admits in its Response that it had been previously working with the Complainant, which proves that the Second Respondent knew very well the reputation of the ALUCOBOND trademark on the market. According to the Complainant, the Second Respondent is a classic example of a previous local distributor who wishes to unlawfully continue to take advantage from the rights holder’s reputation after the end of their collaboration.
The Complainant further submits that it has never approved or consented to the use of the disputed domain name by the Second Respondent and points out that the Second Respondent has never responded to the cease and desist letter of the Complainant. B. Respondents
The First Respondent has not submitted a Response in this proceeding. The Second Respondent has submitted a Response which is summarized below.
The Second Respondent maintains that it has rights and legitimate interests in the disputed domain name. It argues that the ALUCOBOND trademark would not be registerable as a trademark at present because it consists of a sign that has become customary in the current language and trade to describe particular goods and is thus not capable of distinguishing the goods or services of one undertaking from those of another. The Second Respondent submits that the word “Alucobond” is a word that means “aluminium composite panels” without reference to the origin of the product. According to the Second Respondent, the Complainant never described and used the name “Alucobond” in connection with its own name and never specified that this was a product solely made by the Complainant which holds the exclusive rights to the name. Through the conduct of the Complainant, the registered trademark allegedly became a common name in its industry and the Complainant lost all rights it might have had in the ALUCOBOND trademark. According to the Second Respondent, since the word “Alucobond” has become a generic word commonly used in the industry to describe a product, it may therefore be legitimately registered as a domain name on a “first come, first served” basis. The Second Respondent asserts that it has used this term in a manner consistent with its common public use to describe its product and business without intent to take advantage of the Complainant's rights, so it has a legitimate interest in the disputed domain name.
The Second Respondent points out that it has corresponded for many years with the Complainant using the disputed domain name and the Complainant knew of the Second Respondent’s existence, and even though at various random occasions it informed the Second Respondent that it did not agree to the use of the disputed domain name, it nevertheless accepted orders from the Second Respondent to deliver goods to it. Furthermore, the Complainant gave instruction to the Second Respondent as to how the website could be adjusted, and the Second Respondent did accordingly. According to the Second Respondent, this behavior of the Complainant and its continuous collaboration with the Respondent suggests that it has approved the usage of the word “Alucobond” by the Respondent, and the Complainant is now estopped from complaining against the Second Respondent’s conduct.
According to the Second Respondent, after the Complainant placed its products on the market, it consented to the marketing of the same products by the Second Respondent, and the latter as a parallel importer of these products has thus obtained the consent of the Complainant to use the ALUCOBOND trademark in Cyprus.
The Second Respondent further alleges that it has used the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute, that it is commonly known by the disputed domain name and has never tried to hide its identity. The Respondent submits that it does not use the disputed domain name to trade fake imitations and replicas of the Complainant’s product. The Respondent adds that it used to provide similar goods from other companies but removed them from its website after collaborating with the Complainant. The Second Respondents also argues that he is not a competitor of the Complainant since any orders made for the products are actually transferred to the Complainant. 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondents have registered and are using the disputed domain name in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence for a number of registrations of the ALUCOBOND trademark in Germany, United Kingdom, Greece and multiple other jurisdictions. The Respondent disputes the registrability as a trademark and the distinctiveness of the term “Alucobond”, alleging that it has become a descriptive word for aluminium composite panels, and claims that the Complainant’s trademark rights have been exhausted. The Panel takes note of these allegations of the Respondent, but notes that is beyond the scope of its mandate under the Policy to take decisions on the validity of trademark registrations and the exhaustion of trademark rights. As long as the trademark registrations referred to by the Complainant are valid and in full force and effect, the Panel accepts that the Complainant has established its trademark rights in the ALUCOBOND trademark registrations for the purposes of the Policy.
The Panel notes that as discussed in section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the applicable TLD in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name for the purposes of assessing whether it is identical or confusingly similar to the ALUCOBOND trademark of the Complainant.
The relevant part of the disputed domain name is therefore “alucobond-cyprus”. It consists of the elements “alucobond” and “cyprus”, connected by a hyphen. The “alucobond” element is identical to the ALUCOBOND trademark, while the “cyprus” element is identical to the geographic name of the country where the Second Respondent is located and where it offers products through the website at the disputed domain name. In view of this, the Panel finds that the disputed domain name is confusingly similar to the ALUCOBOND trademark in which the Complainant has rights. See Section 1.8, WIPO Overview 3.0. B. Rights or Legitimate Interests
The Complainant submits that the Respondents have no rights or legitimate interests in respect of the disputed domain name and they do not use it in connection with a bona fide offering of goods or services. It points out that the Second Respondent uses the website at the disputed domain name for commercial gain by misleading consumers and offering them products of the Complainant’s competitors alongside the products of the Complainant.
The First Respondent has not submitted a Response and has not disputed the contentions of the Complainant and of the Second Respondent.
The Second Respondent’s defense is based on several contentions under UDRP paragraph 4(c)(i) – that it is entitled to register on a “first-come, first-served” basis the disputed domain name because “alucobond” is a descriptive term, that it may legitimately use the disputed domain name as long as it does not target the Complainant and does not offer products that compete with the Complainant’s products, and that the Complainant has implicitly given its consent to the registration and use of the disputed domain name by the Second Respondent by continuing to deliver goods to it whilst having knowledge of the disputed domain name.
As discussed in section 2.8.1 of the WIPO Overview 3.0, UDRP Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Commonly referred to as the “Oki Data test”, Panels have regarded the compliance with the following cumulative requirements as necessary for a respondent’s use of a domain name to be regarded as being carried out in good faith:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.
In the present case, the Second Respondent’s conduct does not satisfy two of the above requirements. Although the Second Respondent actually offers the Complainant’s products, the website at the disputed domain name featured not only these products but also products of competitors (according to the evidence provided by the Complainant at the time of the submission of the Complaint) and does not disclose any details about the identity of the entity that actually carries out its business through the website and its relationship (or lack of relationship) with the Complainant.
In addition, the Panel is not convinced that the Complainant has implicitly approved the use of the disputed domain name by the Second Respondent. The evidence submitted by the Respondent does not satisfy the Panel that the Parties have had any substantial commercial relationship for a significant period of time without the Complainant objecting to the use of the disputed domain name by the Second Respondent. Rather, this evidence shows that there was only one delivery of goods to the Second Respondent in 2015 – 2016, and that during the same period the Complainant unequivocally objected to the registration and use of the disputed domain name by the Second Respondent and demanded its termination. Further, the Second Respondent itself states that it is carrying out parallel imports of the Complainant’s products in Cyprus. This indicates that these goods are not obtained by the Second Respondent through the official distribution channel of the Complainant in Cyprus and that the Complainant is most likely unaware of the ultimate destination of the goods in Cyprus. In view of this, there is no reason to accept that the Complainant has given an implicit consent to the use of the disputed domain name by the Second Respondent.
The First Respondent has not disputed that the Second Respondent is the party that uses the disputed domain name in the above manner and has not submitted any statement in its defense.
Moreover, the combination of the Complainant’s trademark ALUCOBOND and the country name “cyprus” in the disputed domain name may well be regarded by Internet users as referring to an online location where Alucobond products of the Complainant are offered for the territory of Cyprus. See section 2.5.1 of the WIPO Overview 3.0.
In view of this and in the lack of any evidence to the contrary, the Panel will regard both Respondents as sharing the responsibility for the registration and use of the disputed domain name, and is not satisfied that either of them is carrying out a bona fide offering of goods through the use of the disputed domain name.
Therefore, the Panel finds that the Respondents do not have rights and legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
As discussed in section 6.B above, the evidence in the case file and the conduct of the Respondents allows the Panel to reach the conclusion that both of them bear the responsibility for the registration and use of the disputed domain name. As further discussed in the same section 6.B, the website at the disputed domain name features not only the Complainant’s products, but also products of its competitors and does not disclose any details about the identity of the entity that actually carries out its business through the website and its relationship (or lack of relationship) with the Complainant. Moreover, the combination of the Complainant’s trademark ALUCOBOND and the country name “cyprus” in the disputed domain name may well be regarded by Internet users as referring to an online location where Alucobond products of the Complainant are offered for the territory of Cyprus. This may well confuse Internet users as to the origin of the goods that are offered to them by the Second Respondent.
Notably, the Second Respondent does not deny that its website features references to the name “Alucobond” as a descriptive term for aluminium composite panels, and at the same time confirms that it regards it as such by using this argument as one of its main defenses in this proceeding. Such references to the name “Alucobond” combined with the offering of products of the Complainant’s competitors alongside the products of the Complainant may cause additional confusion in Internet users, especially since the Second Respondent states on its website that it “can provide more options for the price sensitive customer”.
The Panel considers that by using the disputed domain name, in violation of UDRP Bad Faith paragraph 4(b)(iv), the Second Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the Complainant’s ALUCOBOND trademark as to the source, sponsorship, affiliation, or endorsement of the Second Respondent’s website and of the products on this website.
Therefore, the Panel finds that the Respondents have registered and used the disputed domain name in bad faith. 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 name be transferred to the Complainant.
Assen Alexiev
Presiding Panelist
Wilson Pinheiro Jabur
Panelist
Dennis A. Foster
Panelist
Date: April 15, 2019
Full & Egal Universal Law Academy