The Complainant is Harman International Industries, Inc., United States of America (“United States” or “U.S.”), represented by Estrategia Juridica Nacional e International S.A.S., Colombia.
The Respondent is Comercializadora JBL S.A.S., Colombia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2021. On May 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2021, 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 sent an email communication in English and Spanish to the parties on June 10, 2021 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is English, but the Complainant requested Spanish to be the language of the proceeding. The Complainant submitted a request for English to be the language of the proceeding on June 11, 2021. 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 June 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2021. The Respondent did not submit any response. Accordingly, the Center sent the Commencement of the Panel Appointment process on July 6, 2021. On June 30 and July 2 and 9, 2021, the legal representative of a company called Comercializadora J.B.L Jesus Bermudez S.A.S. sent three email communications, stating that the wrong company of the disputed domain name was included in the Complaint and that the owner is Comercializadora J.B.L Jesus Bermudez S.A.S. Additionally, he requested 20 days to submit a Response and alleged that the commercial purpose is to “manufacture of plastic articles”. The Center appointed Edoardo Fano as the sole panelist in this matter on July 22, 2021. 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 August 3, 2021 the Panel issued a Procedural Order, requesting Comercializadora J.B.L Jesus Bermudez S.A.S. to clarify the relationship with the Respondent, Comercializadora JBL S.A.S., and address the Complainant’s contentions. The Panel granted Comercializadora J.B.L Jesus Bermudez S.A.S. ten (10) days until August 13, 2021 to answer the Administrative Panel Procedural Order and granted the Complainant the possibility to file a reply to Comercializadora J.B.L Jesus Bermudez S.A.S.’s submission by August 18, 2021. On August 13, 2021 the legal representative of Comercializadora J.B.L Jesus Bermudez S.A.S. submitted the Response to the Panel’s Procedural Order. On August 18, 2021 the Complainant submitted the Response to Comercializadora J.B.L Jesus Bermudez S.A.S.’s submission. The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules. 4. Factual Background The Complainant is Harman International Industries, Inc., a U.S. company operating in the field of connected car technology, lifestyle audio innovations, professional audio and lighting solutions, design and analytics, owning several trademark registrations for JBL, including the following one in Colombia: - Colombian Trademark Registration No. 113049 for JBL and design, registered on April 4, 1986. The Complainant provided evidence in support of the above. According to the WhoIs records, the disputed domain name was registered on April 17, 2010 and it resolves to an inactive website. On August 14 and September 3, 2020, the Complainant’s legal representatives sent a cease-and-desist letter to the Respondent and they received no reply. 5. Parties’ Contentions A. Complainant The Complainant, both in its Complaint and in the Response to Comercializadora J.B.L Jesus Bermudez S.A.S.’s submission following the Panel’s Procedural Order, states that the disputed domain name is confusingly similar to its trademark JBL, as the disputed domain name wholly contains the Complainant’s trademark. Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since, according to their corporate purpose found in each relevant Chamber of Commerce Registry, both Comercializadora J.B.L S.A.S. and Comercializadora J.B.L Jesus Bermudez S.A.S. operate in relation to many products corresponding to the Complainant’s field of activity and therefore can be mistaken with the Complainant by consumers. The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith, intentionally attempting to attract for commercial gain Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site. B. Respondent The Respondent as individuated in the Complaint, namely a company called Comercializadora JBL S.A.S. based in Bogotá, […], has made no reply to the Complainant’s contentions and is in default. However, since in its response to the registrar verification the Registrar confirmed that the Respondent is a company called Comercializadora JBL S.A.S. but provided different contact details, namely Sabaneta, Antioquia, […], the Center sent the Notification of Complaint and Commencement of Administrative Proceedings to both contact details. Following the Center’s notification, and as set out above, the legal representative of a company called Comercializadora J.B.L Jesus Bermudez S.A.S., based in Sabaneta, Antioquia, […], namely the contact details provided by the Registrar in connection with the disputed domain name, sent three email communications, stating that the wrong company of the disputed domain name was included in the Complaint and that the owner is Comercializadora J.B.L Jesus Bermudez S.A.S. In response to the Panel’s Procedural Order, requesting Comercializadora J.B.L Jesus Bermudez S.A.S. to clarify the relationship with the Respondent, Comercializadora JBL S.A.S., and address the Complainant’s contentions, the legal representative of Comercializadora J.B.L Jesus Bermudez S.A.S. asserts that there is no relationship between the two companies and that the owner of the disputed domain name is Comercializadora J.B.L Jesus Bermudez S.A.S., a company operating since 18 years in a different field than the Complainant, namely the manufacturing of plastic articles, and commonly known by the disputed domain name. Moreover, the legal representative of Comercializadora J.B.L Jesus Bermudez S.A.S. states that his client is open to consider the transfer of the disputed domain name in exchange for a reasonable compensation. 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed: (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. A. Identical or Confusingly Similar The Panel finds that the Complainant is the owner of the trademark JBL and that the disputed domain name is identical to the trademark JBL. It is well accepted that a generic Top-Level Domain (“gTLD”) or a country code Top-Level Domain (“ccTLD), in this case “.com.co”, may be ignored when assessing the similarity between a trademark and a domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11). The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel considers that the Respondent in the present Administrative Proceedings is Comercializadora J.B.L Jesus Bermudez S.A.S., as proved by matching the information provided by the legal representative of Comercializadora J.B.L Jesus Bermudez S.A.S. in response to the Panel’s Procedural Order and the contact details provided by the Registrar in the registrar verification. The Panel notes that the Complainant was probably aware of it, considering that both cease-and-desist letters sent by the Complainant’s legal representative to the Respondent were addressed also to the attention of Mr. Jesus Bermudez. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following circumstances, in particular but without limitation: “(i) before any notice to you 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 (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 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.” According to paragraph 4(a) of the Policy, the Complainant has the burden of proving the three elements of the Policy. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite difficult, since proving a negative circumstance is always more complicate than establishing a positive one. As such, it is well accepted that it is sufficient for the Complainant to make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. The Complainant, as set out above, asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since, according to their respective corporate purposes found in the Chamber of Commerce Registry, both Comercializadora J.B.L S.A.S. and Comercializadora J.B.L Jesus Bermudez S.A.S. operate in relation to many products corresponding to the Complainant’s field of activity and therefore can be mistaken with the Complainant by consumers. The Panel notes that, according to the Aburra Sur Chamber of Commerce incorporation certificate (annex 1 of the Respondent’s Response to the Panel’s Procedural Order), the Respondent’s company Comercializadora JBL Jesus Bermudez S.A.S. was incorporated on November 17, 2011, which demonstrates that the Respondent’s name substantially corresponds to the disputed domain name. As regards the past use of the disputed domain name, currently inactive, the Panel, in accordance with its powers to consult matters of public record (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8), has checked the Wayback Machine (“www.archive.org”) and found some pages to which the disputed domain name has resolved in 2013 and 2014, showing what appears to be a bona fide offering of products, different than the Complainant’s products, by a company called Comercializadora JBL Jesus Bermudez y Cia. Ltda., that is the previous company name of the Respondent Comercializadora J.B.L Jesus Bermudez S.A.S. according to Aburra Sur Chamber of Commerce incorporation certificate (annex 1 of the Respondent’s Response to the Panel’s Procedural Order). In addition, Comercializadora J.B.L Jesus Bermudez S.A.S’s corporate purpose confirms that it does not operate in relation to products corresponding to the Complainant’s field of activity as alleged by the Complainant. In light of the above, the Panel finds that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith In order to succeed, the Complainant must establish that all three elements of the Policy are present cumulatively, and the Panel has already found that the Respondent does have rights or legitimate interests in respect of the disputed domain name. Even though it is not therefore necessary to proceed to determine bad faith registration and use of the disputed domain name, the Panel deems that the Complainant’s unsupported assertion that “the Respondent by using the domain name intentionally attempted to attract for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site” would not meet its burden of proof on this third element either. The Panel therefore finds that that the Complainant has failed to prove that the disputed domain name has been registered and is being used in bad faith, according with paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, the Complaint is denied. Edoardo Fano
Sole Panelist
Date: August 25, 2021
Full & Egal Universal Law Academy