The Complainant is Yara International ASA, Norway, represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States of America (“United States”).
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Ahmad Sawan, yara co, Jordan, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2020. On April 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2020, 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 April 17, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 20, 2020. The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on April 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2020. The Response was filed with the Center on May 11, 2020. The Complainant and the Respondent made unsolicited supplemental filings on May 14, 2020, and May 21, 2020, respectively. The Center appointed Adam Taylor, Pablo A. Palazzi, and Arif Hyder Ali as panelists in this matter on June 3, 2020. 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 manufactures and supplies fertilizer. In 2004, it was demerged and started trading under its present name “Yara International ASA”. The Complainant now has some 16,000 employees and operations in more than 60 countries. In 2019, it reported revenues of approximately USD 12.9 billion. The Complainant operates its own website at “www.yara.com”, having registered this domain name in 1999. The Complainant owns many registered trade marks for YARA worldwide including European Trade Mark No. 3631066, filed January 29, 2004, registered October 7, 2008, in classes 1, 6, 7, 9, 11, 13, 31, 37, 42, and 44. The Panel considers that it would be helpful to set out the following facts in the form of a chronology. October 7, 2012: The Respondent, whose full organization name is “Yara for Fertilizer & Chemical Industries Ltd”,1 was incorporated in Jordan. December 4, 2012: The Respondent registered the disputed domain name. January 22, 2013: The Complainant filed for a number of Jordanian trade marks for the word YARA and also for a ship device plus the word YARA. All were registered in 2013. April 4, 2013: The Respondent filed for a Jordanian trade mark consisting of a ship device plus the word YARA, later registered in 2015. March 17, 2016: The Respondent registered “YaraFert” as a trade name in Jordan. November 13, 2018: A Turkish court issued a decision that the Respondent had infringed the Complainant’s Turkish trade marks, including on the website at the disputed domain name, and prohibiting the Respondent’s use of “Yara” and “Yarafert” in relation to fertilizers and similar products. November 29, 2019: The Jordanian trade mark registry issued a decision accepting an opposition filed by the Complainant against the Respondent’s Jordanian trade mark based on the Complainant’s earlier Jordanian trade marks. As of April 15, 2020, there was a website at the disputed domain name with the following statement appearing prominently on the homepage: “Yara for Fertilizer & Chemical Industry LTD [was] established in 2012, and it's one of the major Jordanian fertilizers companies that provides high quality products by very skilled people.” Beneath this, various fertiliser products were listed. A page headed “Trademarks” included a statement that the Respondent owned three registered trademarks: BYBLOS, UGARIT and AFAMIA. 5. Parties’ Contentions A. Complainant A summary of the Complainant’s contentions is as follows: The Complainant is the world’s largest fertilizer company. The disputed domain name is identical or confusingly to the Complainant’s mark. The disputed domain name consists of the Complainant’s trade mark in its entirety plus the word “fert”, a shortened version of “fertilizer”. The Complainant’s trade mark appears at the beginning of the disputed domain name and is readily recognizable within it. Addition of “fert” increases rather than alleviates confusing similarity as the word “fertilizer” is associated with the Complainant. The Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has never authorised the Respondent to use its trade mark. By using the disputed domain name to offer goods and services related to those of the Complainant, the Respondent has not made a bona fide offering of goods or services. Nor does such use constitute a legitimate noncommercial or fair use of the disputed domain name. The Respondent has never been commonly known by the disputed domain name and has never acquired trade mark or service marks in it. None of the three trade marks listed on the “Trademarks” page of Respondent’s website consist of or contain the word “Yara” or “Yara Fert”. The fact that the website at the disputed domain name is for an entity identified as “Yara for Fertilizer & Chemical Industry LTD”, is insufficient to assist the Respondent under the Policy as any rights claimed by the Respondent must be legitimately held or obtained. Multiple judicial proceedings have found that this entity lacks trade mark rights in the name “Yara”. Also, given the Complainant’s use of its trade mark for some eight years before the Respondent registered the disputed domain name and its 1,180 trade mark registrations in 97 countries, it is practically impossible that the Respondent is known by this trade mark for the purposes of the Policy. The Respondent’s use of “fert”, which describes the Complainant’s business in shorthand, is a further indication of the Respondent’s lack of rights or legitimate interests in the disputed domain name. The disputed domain name was registered and is being used in bad faith. The Respondent’s motive in registering and using the disputed domain name is to disrupt the Complainant’s relationship with its customers and to attempt to attract Internet users for potential gain. Given the global reach and popularity of the Complainant’s services under its trade mark, and the similarity of the disputed domain name to the Complainant’s own domain name, it is inconceivable that the Respondent chose the disputed domain name without knowledge of the Complainant’s name and trade mark. The mere registration of a domain name that is identical to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith. Inclusion of the word “fert” is also evidence of bad faith. By using the disputed domain name for a website that offers goods and services related to those offered by the Complainant, the Respondent is intentionally creating a likelihood of confusion with the Complainant’s trade mark. Because the disputed domain name is so obviously connected with the Complainant, the Respondent’s actions suggest “opportunistic bad faith”. B. Respondent A summary of the Respondent’s contentions is as follows: The disputed domain name is not identical or confusingly similar to the Complainant’s trade mark as it includes an additional element. The name “Yarafert” is an abbreviation of the Respondent’s corporate name. The Respondent is a major Jordanian fertiliser company. The Respondent has used the disputed domain name within the framework of its business activities and its registered trade name. The name “Yara” is a common Arabic girl’s name and it also has a dictionary meaning of “Little Butterfly”. Therefore, the Complainant does not have exclusive rights in the name. The Complainant has no rights in the term “yarafert”. The consumers of fertiliser products are a specific group of people who act carefully before making purchase decisions. Therefore, similarity alone between the parties’ respective names is insufficient to support a finding of infringement. The Respondent is not using “yarafert” as a trade mark, only for the limited purpose of a trade name. None of the Respondent’s products include the word “yara”. Therefore, no likelihood of confusion can arise. As the parties are in different countries, potential customers can only access their products through the Internet but the Respondent’s website does not appear on Internet searches for “yara”. Accordingly, no confusion can arise. The Respondent possesses rights and legitimate interests in the disputed domain name. The Respondent has been using the disputed domain name for a bona fide offering of goods and services in connection with the trade name that it has used legitimately since 2012, almost nine years before the Complaint was filed, and which name the Respondent has had registered since 2016. When assessing bona fide use it is not relevant to determine whether there has been trade mark infringement as this is a matter for the local courts. The Respondent did not choose the disputed domain name to capitalise on the Complainant’s trade mark. The Respondent is sensitive about other peoples’ intellectual property rights. The Respondent does not use “yarafert” in a trade mark sense or on its product packaging. The Respondent is commonly known by the disputed domain name as “yarafert” is an acronym of its company name and officially registered trade name. An Internet search for “yarafert” only brings up results relating to the Respondent’s own products. Paragraph 4(b) of the Policy is designed to protect those using the relevant name before the dispute for legitimate reasons, even if they have acquired no trade mark or service mark rights. The owner of the Respondent named the company after his daughter Yara who was born in 2005. Many companies are named after the children of their founders. The Respondent did not register and use the disputed domain name in bad faith. There is no evidence of bad faith. The Respondent is using the disputed domain name in good faith for a legitimate business which has been trading under its name for some nine years. The fact that the Complainant owns trade marks does not mean that the Respondent’s owner did not have a legitimate interest in using his daughter’s name. The Complainant has no monopoly over this common personal name. The Respondent’s owner could not have known about the Complainant’s trade mark when the owner’s daughter was born in 2005 as the Complainant’s first trade mark application in Jordan was not made until 2013. A respondent living in a country distant from a trade mark owner can become commonly known by a disputed domain name without having heard of complainant. People cannot be expected to name their children by reference to trade marks or domain names. The Respondent never intended to divert business from the Complainant or to tarnish its mark. The disputed domain name refers to the Respondent’s company name, not to the Complainant’s trade mark, and it is used only as a trade name and only to sell the Respondent’s products, which themselves do not use either “yara” or “yarafert”. The Respondent conducts its business fairly and gives correct contact information on its website. The Respondent had not offered the disputed domain name for sale to the Complainant and has no intention of doing so in future. Nor has it registered the disputed domain name to block the Complainant. In any case this would not be possible as the Complainant’s trade mark is “yara” not “yarafert”. The Complainant is guilty of reverse domain name hijacking. The Complainant preferred to take no action during the nine years when the Respondent made a considerable investment in the disputed domain name and its trade name and instead to wait until the Respondent had brought the company to “good places”. C. Complainant’s Supplemental Filing The following is a summary of the Complainant’s supplemental filing insofar as admitted by the Panel (see section 6A below). The existence of a personal or other name does not give the holder of that name (or the father) the right to use it as a domain name in connection with a business providing services similar to those offered by a The fact that Respondent is a legally-constituted Jordanian company with a registered trade name does not give it the right to use a domain name confusingly similar to the Complainant’s mark in relation to similar goods and services. The Complainant’s trade mark registrations pre-date the Respondent’s trade name registration by at least eight years. A corporate name, unlike a trade mark registration, is weak and unconvincing. The Complainant does not contest the Respondent’s right to operate as a legally-constituted Jordanian company, only that it cannot use the disputed domain name, which is confusingly similar to the Complainant’s trade mark in connection with goods and services similar to those offered by the Complainant under its mark for some eight years previously. The Respondent does not assert rights to the YARA trade mark and admits that it does not use “yarafert” in a trade mark sense. The Policy does not require registration and use of a domain name as a trade mark, only registration and use in bad faith. While the Complainant only registered its trade mark in Jordan in 2013, it owned some 554 trade marks in some 70 countries before the Respondent registered the disputed domain name, including in nearby Egypt and Qatar. The Respondent has not established that it was commonly known by the disputed domain name before registration of the disputed domain name, which it is required to do. The earliest evidence of use provided with the response is almost one year later on August 14, 2013, and its certificate of trade name was only issued three years later in 2016. 6. Discussion and Findings Under the Policy, the Complainant is required to prove on the balance of probabilities that: - the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; - the Respondent has no rights or legitimate interests in respect of the disputed domain name; and - the disputed domain name has been registered and is being used in bad faith. A. Supplemental Filings Each party has made an unsolicited supplemental filing. Section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that UDRP panels have repeatedly affirmed that the party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response, e.g., owing to some “exceptional” circumstance. In this case, the Complainant has satisfied the Panel that it should be entitled to reply to allegations in the Response that the Complainant could not reasonably foreseen. The Panel has therefore decided to admit the Complainant’s supplemental filing, except insofar as it repeats previous submissions or raises matters that could reasonably have been addressed in the Complaint, in particular evidence of actual confusion. The Panel considers that the Respondent’s supplemental filing consists of matters that are either not relevant to the Panel’s decision or are repetitive of the Response and has therefore disallowed it. The Panel would add, however, that none of the disallowed material in either supplemental filing, even if admitted, would have made any difference to the outcome of this case. B. Identical or Confusingly Similar The Complainant has established rights in the mark YARA by virtue of its registered trade marks as well as unregistered trade mark rights deriving from its extensive use of that name. The Respondent argues that Internet users are unlikely in practice to confuse the Complainant’s trade mark with the term “yarafert”. However, section 1.7 of the WIPO Overview 3.0 makes clear that the first element functions primarily as a standing requirement. The test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trade mark and the disputed domain name. Where at least a dominant feature of the relevant mark is recognisable in the disputed domain name, it will normally be considered confusingly similar to that mark for purposes of UDRP standing. Section 1.8 of the WIPO Overview 3.0 adds that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, would not prevent a finding of confusing similarity under the first element. Here, the Complainant’s distinctive trade mark is readily recognisable within the domain name and, accordingly, the addition of the term “fert”, an abbreviation of the descriptive term “fertilizer”, does not avert a finding of confusing similarity. For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark. The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests It is unnecessary for the Panel to consider this element in view of its finding under the third element below. D. Registered and Used in Bad Faith Under this third element of the Policy, the Panel’s role is to assess whether, on balance, the Respondent acted in bad faith, i.e., that it possessed the relevant intent vis-à-vis the Complainant’s trade marks when registering the disputed domain name in 2012, and using it thereafter. By means of its Complaint, the Complainant established that, at the time of registration of the disputed domain name in 2012, it had already been trading in the fertiliser industry under the apparently distinctive name “Yara” for some eight years and that it already owned very many trade marks worldwide. Despite the lack of evidence as to the extent of the Complainant’s trading activity under its name as of 2012, and despite the fact that the Complainant did not apply for a trade mark in Jordan – where the Respondent is located – until 2013, the above facts created at least an initial inference that the Respondent, which also supplies fertiliser products, was likely to have been aware of the Complainant’s name and/or trade marks when selecting the disputed domain name in 2012. However, the Respondent strongly denies that it was aware of the Complainant. The Respondent asserts that the disputed domain name was selected as an abbreviation of its company name “Yara for Fertilizer & Chemical Industries Ltd”, incorporated some three months earlier, and that the Respondent has legitimately used the “Yarafert” name ever since, including later registration as a trade name in 2016. While such claims do not automatically exculpate the Respondent, as it is still conceivable that the Respondent adopted its corporate name, trading name, and the disputed domain name as part of a scheme to target the Complainant’s trade mark, the Panel would need relatively convincing evidence before it to be able to reach such a conclusion within the restricted ambit of a UDRP proceeding. The Panel has carefully considered the Respondent’s explanation for its choice of “Yara” as the primary part of its name. The Respondent’s assertion, even if true, that “Yara” is a common Arabic girl’s name, and that it bears a dictionary meaning of “little butterfly”, still does not make it an obvious name for a fertiliser company to choose. However, the Respondent has established through evidence that “Yara” is in fact the name of the owner’s daughter who was born in 2005, thereby providing the Respondent with a potentially plausible legitimate reason for selecting the name that is independent of the Complainant. The Panel still retains a degree of a scepticism about the Respondent’s motive, as it seems surprising that the similarity of its name to the relatively unusual name of a major supplier of similar products would not have come to the Respondent’s attention and somehow featured in its calculations. However, the facts outlined above make it difficult for the Panel to disentangle the Respondent’s motives within the limited scope of a UDRP proceeding, where the Panel does not have the benefit of witness testimony, disclosure of documents or the other tools that are typically available to assist a court. In its supplemental filing, the Complainant appears to concede at least some degree of legitimacy to the Respondent’s use of its corporate / trading name by saying that it does not contest the Respondent’s right to operate (presumably in Jordan only) as a legally-constituted Jordanian company and that it objects only to the Respondent’s use of the disputed domain name, which was confusingly similar to the Complainant’s trade mark and used for goods similar to its own. This assertion underlines the difficulty that the Panel faces in this case. In the circumstances, the Panel does not feel able to conclude that the Respondent registered the disputed domain name by reference to the Complainant’s trade mark rather than to the Respondent’s own corporate name, which was registered shortly beforehand and which has not been shown on the balance of probabilities to have been adopted with the Complainant in mind. The position might well have been different of course if the Complainant had been in a position to produce evidence of the Respondent’s use of the website at the disputed domain name specifically to target the Complainant in some way but there is no such evidence. The Panel would add that its conclusion above is not altered by the finding of the Turkish court in 2018 that the Respondent infringed the Respondent’s Turkish trade marks, including on the website at the disputed domain name. The Panel is dealing with bad faith, not trade mark infringement, and its main concern is to assess the Respondent’s intentions at the time of registration of the disputed domain name in 2012, much earlier than the cited court finding. This the Panel has done as best it can, based on the evidence before it. The fact that the Respondent’s later use of the disputed domain name was held to have fallen foul of the Complainant’s Turkish trade marks does not of itself demonstrate that the Respondent’s original selection of the disputed domain name was in bad faith in the context discussed above. In summary, the Panel does not consider that the circumstances are sufficiently clear to enable it to make a finding that the Respondent registered and used the disputed domain name in bad faith for the purposes of the Policy. The Panel therefore finds that the Complainant has failed to establish the third element of paragraph 4(a) of the Policy. E. Reverse Domain Name Hijacking (“RDNH”) 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”. RDNH 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”. The Respondent’s claim for RDNH is based on the Complainant allegedly allowing some nine years to pass before filing this case, during which period the Respondent allegedly made a substantial investment in its disputed domain name and trade name. The Panel has little difficulty in rejecting this claim. Even if the Complainant did “wait” for this period before filing the Complaint, which has not been established, delay was not a factor in the Panel’s decision to reject the Complaint. Indeed, panels have generally declined to adopt concepts such as laches, or its equivalents, in UDRP cases – see section 4.17 of WIPO Overview 3.0. At the same time, the Respondent seems to imply some kind of acquiescence, but has not actually shown how it has been harmed by, or relied upon, such delay. Accordingly, the Panel is not satisfied that the Complainant brought this proceeding in bad faith and declines to find that the Complainant has been guilty of RDNH. 7. Decision For the foregoing reasons, the Complaint is denied. Adam Taylor Pablo A. Palazzi Arif Hyder Ali 1 It is not in dispute that this is the same entity as “yara co” named as Respondent and the Panel therefore treats these entities as one and the same.
pre-existing, well-known trade mark owner with many trade mark registrations around the world.
Presiding Panelist
Panelist
Panelist
Date: June 17, 2020
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