The Complainant is Ateq, France, represented by AtlantIP, France.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States”) / Cyan Yo, China. 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 23, 2020. On April 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 24, 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 28, 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 amended Complaint on May 1, 2020. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2020. The Center appointed John Swinson as the sole panelist in this matter on June 9, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is ATEQ, a company incorporated in France. According to the Complaint, the Complainant is the world number one supplier of automatic leak testing machines and leak test systems for assembly lines and laboratories. The Complainant has been operating for 45 years and now has operations in 39 countries and services more than 5,000 customers worldwide. According to the Complainant, the Complainant has developed a range of industrial quality control equipment for leak testing. The Complainant has a pending trade mark application in the United States for a device that includes the words LEAK TESTING ACADEMY filed on March 2, 2020. The Respondent is Cyan Yo of China. No response was filed by the Respondent and therefore little information is known about the Respondent. The Disputed Domain Name was registered on March 5, 2020, three days after the Complainant filed its application for a United States trade mark registration. The Disputed Domain Name resolves to a website offering the domain for sale for USD 990. 5. Parties’ Contentions A. Complainant The Complainant makes the following submissions: Identical or confusingly similar The Complainant is the world number one supplier of automatic leak testing machines. The Complainant is the owner of a prior trade mark for LEAK TESTING ACADEMY. The Disputed Domain Name is identical to LEAK TESTING ACADEMY as there are no additions. There is an obvious risk of confusion between the earlier rights of the Complainant in LEAK TESTING ACADEMY and the Disputed Domain Name. Rights or legitimate interests The Respondent has not been granted, assigned, licensed, sold or transferred any rights in LEAK TESTING ACADEMY. The Respondent does not hold any trade mark rights for LEAK TESTING ACADEMY. The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods and services, nor has it made any preparations to do so. The Respondent is offering the website for sale for USD 990 with the intent for commercial gain misleadingly to divert consumers. Registered and used in bad faith The Respondent should have had knowledge of the Complainant when he registered the Disputed Domain Name. Bad faith registration and use can be proven by the fact that the Disputed Domain Name prevents the Complainant from using LEAK TESTING ACADEMY on the most valuable generic top level domain (gTLD). The Disputed Domain Name is being used to sell the website, which is evidence of bad faith use and registration. The Disputed Domain Name was registered just days after the Complainant applied for LEAK TESTING ACADEMY and days after the Complainant sent an outlook invitation to international sales partners about “Leak Testing Academy Brand Recognition”. The Respondent has used a privacy server which is further evidence of bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. The onus of proving these elements is on the Complainant even though the Respondent failed to submit a response. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to “a trade mark or service mark in which the Complainant has rights”. The Complainant claims that the Complainant has trade mark rights in LEAK TESTING ACADEMY and a logo which includes the words LEAK TESTING ACADEMY. The Complainant filed a trade mark application in the United States for a trade mark in logo form that includes the words LEAK TESTING ACADEMY. The online record of United Stated Patent and Trade Mark Office (USPTO) indicates that this application is currently pending and it appears from USPTO online records reviewed by the Panelist that the Complainant received an office action from the USPTO on April 22, 2020. Three questions arise here, namely: (1) whether a pending application that has not yet proceeded to acceptance or registration at the time the Complaint is filed gives rise to a “trade mark in which the Complainant has rights”; (2) whether the logo form of the trade mark gives the necessary rights to the words LEAK TESTING ACADEMY; and (3) whether the Complainant has established unregistered or common law trade mark rights in LEAK TESTING ACADEMY. In respect of the first issue, the Complainant has not provided any reasons as to why a pending trade mark application should confer trade mark rights for the purposes of the Policy. As far as the Panel is aware, the Complainant does not have a trade mark registration for LEAK TESTING ACADEMY or similar. The Panel is not required to determine whether the trade mark application relied upon by the Complainant would proceed to acceptance. The WIPO Overview 3.0 at section 1.1 is clear that “a pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i).” This is consistent with previous Panel decisions where Panels have found that “unless such applications have proceeded to grant they do not constitute trademarks in which a complainant has UDRP-relevant rights” (Intellect Design Arena Limited v. Moniker Privacy Services / David Wieland, iEstates.com, LLC,WIPO Case No. D2016-1349). In Rodale, Inc. v Christianne Schelling,WIPO Case No. DBIZ2002-00130 for the Start-up Trademark Opposition Policy for .BIZ the Panel found that “the broad consensus in domain name dispute resolution is that a trademark application alone is not sufficient evidence of mark rights in a disputed domain name.” In respect of the second issue, the trade mark application is for a logo mark which includes the words LEAK TESTING ACADEMY. It may be the case that the USPTO does not grant exclusive rights in respect of these words, but only of the logo as a whole. Moreover, the words “Leak Testing” are descriptive; the Complainant has used these words in a descriptive or generic sense in the Complaint. Trade mark registrations with design elements usually satisfy the requirement that the complainant show “rights in a mark”. However where design elements comprise the dominant portion of the relevant mark such that they effectively overtake the textual elements in prominence, or where the trade mark registration entirely disclaims the textual elements such that the scope of protection afforded to the mark is effectively limited to its stylized elements (which is unknown at present, because the subject application is still under examination by the USPTO), it is open for the Panel to find that the complainant’s registration is insufficient by itself to support a finding for the complainant under the paragraph 4(a)(i) of the Policy. See also WIPO Overview section 1.10. In respect of the third issue, the Complainant has provided no evidence of its use of or reputation in LEAK TESTING ACADEMY or of the logo mark that includes the words LEAK TESTING ACADEMY. The USPTO website indicates that the Complainant has not used the trade mark, the subject of the United States trade mark application, prior to filing, only that the Complainant has an intention to use to use that trade mark. To establish unregistered or common law trade mark rights for purposes of the Policy, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services (see section 1.3 of the WIPO Overview 3.0). Here, the Complainant has made statements regarding the fame of ATEQ (the Complainant’s company name) but has not provided any evidence of its use or reputation in the LEAK TESTING ACADEMY mark. The Complainant has not demonstrated that LEAK TESTING ACADEMY has acquired distinctiveness or provided any evidence about the duration and nature of use of the mark, sales under the mark, the nature and extent of advertising of the mark or the degree of public recognition. The Complainant has not demonstrated that it has rights in LEAK TESTING ACADEMY for the purposes of the Policy. Accordingly, the Complainant does not succeed on the first element of the Policy, and the Complaint fails. B. Rights or Legitimate Interests/Registered and Used in Bad Faith Due to the findings in element one, the Panel is not required to consider these elements; the Panel would note however that the timing of the registration of the Disputed Domain Name does not present a favorable look for the Respondent. 7. Decision For the foregoing reasons, the Complaint is denied. John Swinson
Sole Panelist
Date: June 23, 2020
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