The Complainant is Authentix, Inc., United States of America (“United States”), represented by Strategic IP Information Pte Ltd., Singapore.
The Respondent is Gisella Garate, Authentix Peru Sourcing & Consulting, Peru, self-represented.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 2022, 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.
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 the Respondent of the Complaint, and the proceedings commenced on December 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2022. The Response was filed in Spanish on December 22, 2021.
The Complainant sent a communication to the Center on January 14, 2022 requesting a suspension of the proceeding for the purposes of settlement discussions concerning the disputed domain name. Accordingly, the proceeding was suspended from January 17, 2022. At the request of the Complainant, received on March 3, 2022, the proceeding was further suspended until March 17, 2022 for the same purpose. The Complainant sent a communication to the Center on March 21, 2022, requesting the reinstitution of the proceeding. Accordingly, the proceeding was reinstituted on March 25, 2022.
The Center appointed Matthew Kennedy as the sole panelist in this matter on March 30, 2022. 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.
On April 1, 2022, the Panel issued Administrative Panel Procedural Order No. 1 in which it invited the Complainant to comment on the Respondent company’s trademark rights by April 6, 2022. The Complainant submitted its comments on the Respondent company’s trademark rights on April 6, 2022.
4. Factual BackgroundThe Complainant is a United States-based company that provides authentication solutions, including full product traceability of products from manufacturing to retail, globally. It was formed in 2003 and does business as “Authentix”. It holds multiple trademark registrations, including the following:
- International trademark registration number 1158658, for a semi-figurative mark consisting of the word AUTHENTIX in a stylized font with a check (✔) mark overlapping the top part of the letter “x”, registered on July 26, 2012, designating multiple jurisdictions, and specifying goods and services in classes 1, 2, 5, 9, 35, 39, 42, and 45; and
- International trademark registration number 1430464 for AUTHENTIX, registered on April 12, 2018, designating India, specifying goods and services in classes 9 and 35.
The above trademark registrations remain current. The Complainant operates a website in English at “www.authentix.com”, which prominently displays its semi-figurative AUTHENTIX mark and provides information about itself and its services. The contact address and telephone number are in the United States but the website notes that the Complainant also has locations in Ghana, Saudi Arabia, Singapore, and the United Kingdom. The Complainant operates accounts on Twitter, LinkedIn and YouTube as “authentix inc”, “authentix” and “authentix1”, respectively.
The Respondent is an individual, Gisella Garate, and her company, Authentix Peru Sourcing & Consulting [S.A.C.], established on August 26, 2019, and registered by the Superintendencia Nacional de los Registros Públicos (the National Superintendence of Public Registries) (“SUNARP”) on November 20, 2019, in Lima, Peru. The Respondent company operates as an intermediary between factories, workshops, and artisans in Peru to create and design textiles and handicrafts for buyers abroad.
The Respondent registered the disputed domain name on August 30, 2019. The disputed domain name resolves to a website in English that prominently displays the Respondent company’s semi-figurative AUTHENTIX PERU mark and provides information about the Respondent company, its services, products and news, accompanied by photographs. The site refers to the Respondent as “Authentix Peru” but the copyright notice refers simply to “Authentix”. One of the news items is titled “Traceable Alpaca”. The Respondent company operates accounts on LinkedIn and Instagram as “Authentix Peru Sourcing and Consulting” and “authentix.peru”, respectively. The website refers to shipping to North America, the European Union, and Asia.
The Respondent company holds Peruvian trademark registration number 00317106 for a semi-figurative AUTHENTIX PERU mark (reproduced below), registered by the Instituto Nacional de Defensa de la Competencia y de la Protección de la Propiedad Intelectual (National Institute for the Defense of Free Competition and the Protection of Intellectual Property) (“INDECOPI”) on November 11, 2021 (applied for on September 13, 2021 1), and specifying fabrics and their substitutes; linens; curtains of textile or plastic in class 24. That registration remains current.
The Complainant was alerted to the Respondent’s application for the above mark by its watch service but submits that it chose not to file an opposition “in lieu of having the [disputed] domain name changed to avoid confusion”. The Complainant sent a letter of demand dated October 15, 2021, to the Respondent company via the email address on its website. The Complainant sent a follow-up letter by email on October 26, 2021.
5. Parties’ Contentions A. ComplainantThe disputed domain name is confusingly similar to the Complainant’s AUTHENTIX mark. The Complainant has been operating on five continents, including South America, and in 2016 participated in a fuel marking program bid in Peru. The Complainant has been using the AUTHENTIX mark in relation to its business for nearly two decades. The mark is inspired by the term “authentic” and the authentication services provided by the Complainant.
The Respondent has no rights or legitimate interests with respect to the disputed domain name. The Complainant has not authorized the Respondent to use the AUTHENTIX mark either in whole or in part, in any manner whatsoever, including as a domain name. The use of the mark is solely intended towards portraying the disputed domain name as being associated with or related to the Complainant. Even though the Respondent appears to be engaged in a different field of activity from the authentication services offered by the Complainant, this does not remove the risk of confusion between the mark and the disputed domain name. The general public is likely to deem the disputed domain name to be an extension of the Complainant’s trademark and domain name and to presume that there is an affiliation between the Parties, which is not the case. The Respondent company could easily be taken to be a subsidiary of the Complainant.
The disputed domain name was registered and is being used in bad faith. The Respondent, who has no relationship whatsoever with the Complainant or any entity associated with the Complainant, has clearly registered the disputed domain name in bad faith. The Complainant has been extensively using the AUTHENTIX trademark worldwide and no third party is using this trademark globally. The Complainant did not receive a substantial written response from the Respondent to its written notices of infringement, which demonstrates bad faith. It is clearly no coincidence that the Respondent chose and registered a domain name that is confusingly similar to the domain name associated with the Complainant’s official website. The Complainant has a well-established reputation in the AUTHENTIX trademark through its exclusive use throughout the world in relation to providing effective authentication solutions to Fortune 500 and government customers. The Respondent must have been aware of the Complainant’s AUTHENTIX trademark when the disputed domain name was chosen as even a cursory search online would reveal the Complainant’s rights in the name.
The Respondent’s website makes reference to traceability and traceable products (i.e., alpaca), which is the core of the Complainant’s global business (i.e., supporting customers around the world with the traceability of their products through the supply chain).
B. RespondentThe Respondent individual, Ms. Gisella Garate, is an entrepreneur who has worked in textiles, handicrafts, and social support for many years. She created the Authentix Peru brand in Lima, Peru. In 2019, she created the Respondent company, Authentix Peru Sourcing & Consulting S.A.C. with the sole objective of supporting hundreds of women and families in her country. Thanks to the work of all the artisans, they have created the “Authentix Peru” mark and logo, which has been registered in Peru.
The objective of the website is to communicate to clients abroad and in Peru the services that they offer and thereby serve as the nexus between the clients and the artisans. The Respondent had no idea of the existence of the Complainant but, from what she understands, it works in a completely different sector from the Respondent so there should be no problem. The Respondent’s name was created on the basis of the word “authentic” (“auténtico” in Spanish) as the Respondent’s ancestral techniques are authentic.
Peru is a country rich in traditions, culture, tourism, and ancestral techniques but also a country with many needs, due to which the Respondent cannot defend herself as she would like, due to the high costs involved, especially during the Covid pandemic.
6. Discussion and Findings 6.1 Language of the ProceedingParagraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in English.
Neither Party made a request regarding the language of the proceeding but the Complaint was filed in English whereas the Response was filed in Spanish.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Rules do not provide for the Parties to file second submissions but, in the present case, the Response annexes a Peruvian trademark registration certificate that appears highly relevant and which, being in Spanish, the Complainant might not have been able to anticipate at the time that it filed the Complaint. Therefore, the Panel invited the Complainant to comment on the Respondent company’s trademark rights and drew the Complainant’s attention to an English translation of the trademark registration certificate that was publicly available online. The Complainant then filed comments. In these circumstances, the Panel considers that requiring the Respondent to translate the Response into English would create an undue burden and delay whereas accepting the Response, including its attachments, in Spanish, does not cause prejudice to either Party.
Therefore, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English, but that the Panel will accept the Response and its attachments in Spanish, without a translation.
6.2 Analysis and FindingsParagraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
Failure to prove any one of the above elements will lead to denial of the Complaint. The Complainant bears the burden of proof of each of the above elements.
A. Identical or Confusingly SimilarBased on the evidence presented, the Panel finds that the Complainant has rights in the AUTHENTIX mark.
The disputed domain name wholly incorporates the AUTHENTIX mark. It also includes the country name “Peru”. However, given that the mark remains clearly recognizable in the disputed domain name, the Panel does not consider that the addition of this geographical term avoids a finding of confusing similarity. See WIPO Overview 3.0, section 1.8.
The only other element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix (“.com”). As a mere technical requirement of domain name registration, the Panel does not consider that the gTLD suffix avoids a finding of confusing similarity either. See WIPO Overview 3.0, section 1.11.
Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets out certain circumstances which, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. However, these circumstances are not an exhaustive list.
The Panel recalls that the second element of paragraph 4(a) of the Policy does not call for a weighing of the Parties’ respective rights and legitimate interests.
The Panel will assess the rights and legitimate interests of the Respondent as at the time of the filing of the Complaint. See WIPO Overview 3.0, section 2.11.
The Complainant alleges that the Respondent has no rights or legitimate interests with respect to the disputed domain name. It submits that it has not authorized the Respondent to use its AUTHENTIX mark either in whole or in part, in any manner whatsoever, including as a domain name. Due to the combination of the mark with a country name in the disputed domain name, the Respondent company could easily be taken to be a subsidiary of the Complainant. However, the Complaint did not mention that the Respondent company held a registered trademark for AUTHENTIX PERU and device, despite the fact that the Complainant had been alerted by its watch service to the Respondent’s application for this mark.
The evidence shows that the Respondent company is the holder of a Peruvian trademark registration for AUTHENTIX PERU and device, as described in Section 4 above. The textual elements of the Respondent’s mark (i.e.,AUTHENTIX and PERU) are very prominent in the mark and identical to the operative element of the disputed domain name, which omits only the space between them for technical reasons. The figurative element of that mark (i.e., the contour of a mountain range) does not overtake AUTHENTIX PERU in prominence and cannot be reflected in a domain name for technical reasons.
The Panel considers that the Respondent company’s trademark registration ordinarily supports a finding that the Respondent has rights or legitimate interests in the disputed domain name. See WIPO Overview, section 2.12.1. At the same time, that trademark registration will not automatically confer rights or legitimate interests on the Respondent for the purposes of the Policy where the overall circumstances demonstrate that the trademark was obtained primarily to circumvent the application of the Policy or otherwise to prevent the Complainant’s exercise of its rights, even if only in Peru. See WIPO Overview, section 2.12.2.
The Complainant does not allege that the Respondent company obtained its trademark primarily to circumvent the application of the Policy or otherwise to prevent the Complainant’s exercise of its rights. On the contrary, the Complainant chose not to oppose the Respondent’s trademark application and would have been content for the Complainant to use a different domain name.
The Panel has noted the circumstances of this case. The Respondent company applied for its trademark in September 2021, prior to the Complainant’s letter of demand, and obtained registration of that mark by INDECOPI in November 2021, prior to the filing of the Complaint in December 2021. Although the trademark was registered over two years after the registration of the disputed domain name in August 2019, its textual elements (i.e., AUTHENTIX and PERU) are the same as the initial elements of the Respondent company’s name “Authentix Peru Sourcing & Consulting S.A.C.”, which was formed four days prior to the registration of the disputed domain name in August 2019 and registered by SUNARP soon after. The Respondent’s trademark is registered in Peru, which is the jurisdiction where the Respondent is registered and does business. The Respondent makes active use of its trademark on its website, which offers products and services for the sourcing of textiles and handicrafts from Peru, but there is no other evidence of use of that mark. The Respondent company’s trademark does not resemble the Complainant’s semi-figurative mark, although it does incorporate the exact term AUTHENTIX, which constitutes the Complainant’s wordmark. The Respondent individual provides an explanation for her choice of the term “authentix” in her corporate name and trademark, based on the meaning of the dictionary word “authentic”. Authenticity is clearly related to the use that the Respondent is making of the trademark, which is selling genuine textiles and handicrafts made according to ancestral techniques. Although “authentix” seems to be somewhat of a coined word, it differs from the dictionary word “authentic” aurally only in the addition of a final /s/ and visually only in the substitution of an “x” for the “c”. In the Panel’s view, it is plausible that the Respondent independently coined the same suggestive word. There is no evidence on record of the Complainant’s reputation, besides its own website and company brochure, from which the Panel could infer that the Respondent knew or should have known of the Complainant’s AUTHENTIX mark. The Complainant notes the reference to “traceability” on the Respondent’s website, which is related to the Complainant’s activities, but the evidence shows that reference to be somewhat incidental to the Respondent’s website content. The Complainant expressly conceded in the Complaint that the Respondent appears to be engaged in a different field of activity from the authentication services offered by itself, although it later noted the importance of traceability to its own business. The Panel has noted that the Respondent’s website copyright notice refers to “Authentix” rather than “Authentix Peru”, but considers that an insufficient basis to infer that the Respondent is seeking to trade on the reputation of the Complainant.
In these circumstances, the Panel is unable to find that the Respondent selected its company name and obtained its trademark primarily to circumvent the application of the Policy or otherwise to prevent the Complainant’s exercise of its rights.
Accordingly, the Panel finds that the Complainant has failed to satisfy the second element in paragraph 4(a) of the Policy. The Panel moreover notes that administrative (trademark opposition) or court (trademark infringement) options remain available to the Complainant.
C. Registered and Used in Bad FaithGiven the Panel’s findings regarding the second element in paragraph 4(a) of the Policy, it is unnecessary to reach a conclusion regarding the third element.
7. DecisionFor the foregoing reasons, the Complaint is denied.
Matthew Kennedy
Sole Panelist
Date: April 8, 2022
1 The Panel notes its general powers articulated inter alia in paragraphs 10 and 12 of the Rules and has searched the publicly available database of Peruvian trademark register at “https://enlinea.indecopi.gob.pe/buscatumarca/” in order to identify the date on which the Respondent filed the application that led to its trademark registration. The Panel considers this process useful in weighing the evidence of that trademark registration submitted by the Respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8.