The Complainant is Eiyolab, France, represented by Coblence & Associés, France.
The Respondent is Yave Fernandez Perez, Ayolabs S.L., Spain, represented by Oriol - IP, Spain. 2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2020. On July 30, 2020, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On August 3, 2020, the Registry 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 .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”). In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 11, 2020. In accordance with the ADR Rules, Paragraph B(3)(a), the due date for Response was September 22, 2020. The Response was filed with the Center on September 22, 2020. The Center verified that the Response satisfied the formal requirements of the ADR Rules and the Supplemental Rules. The Center appointed Marilena Comanescu as the sole panelist in this matter on October 7, 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 ADR Rules, Paragraph B(5). The language of the proceeding is English. 4. Factual Background The Complainant Eiyolab, registered in France in 2010, is a laboratory that develops and commercializes food supplements for athletes. The Complainant is the proprietor of the European Union Trade Mark (“EUTM”) Registration No. 09126971 for EIYOLAB (figurative mark with device and colors) filed on May 24, 2010, registered on November 2, 2010, and protected until May 24, 2030 for goods in classes 5, 29 and 32. The Complainant is promoting its goods on its website available at “www.eiyolab.com” registered on February 25, 2010. The disputed domain name The Respondent Ayolabs S.L., registered in Spain in 2018, is a company which provides laboratory manufacturing services to professional brands. The Respondent provides services to third parties for the manufacture of their sport nutrition products, being products labelled with other trademarks and brands. 5. Parties’ Contentions A. Complainant The Complainant requests the transfer of the disputed domain name to it and contends the following: - the disputed domain name - the Complainant’s trademark should be compared with the disputed domain name having in view particularly its verbal elements since consumers pay more attention to the phonetic similarities when they talk about the name of products; - the substitution of the letter “a” to the sequence “ei” at the beginning and the adjunction of the letter “s” at the end of the disputed domain name are insufficient to avoid the risk of confusion since the signs are very similar phonetically, both being composed of 3 syllables with one identical [YO] and two syllables similar [EI]/ [A] and [LAB]/ [LABS]; - it is obvious that the Respondent merely copied the prior trademark and domain names of the Complainant and made minor alterations and anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant; - the Respondent has no rights or legitimate interests in the disputed domain name as the Complainant did not grant the Respondent any license or permission to use its EIYOLAB trademark; - the Complainant doesn’t know the Respondent, nor has ever been in a relationship with it; - the Respondent was most likely aware of the Complainant’s mark when registering the disputed domain name and acquired such domain name for the purpose of diverting Internet traffic from the Complainant’s legitimate website to an illegitimate website offering similar goods and services; - the Respondent is not making a legitimate noncommercial use of the disputed domain name because it uses the corresponding website in order to present goods and services similar to those offered by the Complainant and thus it is diverting the Complainant’s customers on its own website; - because the Complainant holds trademark and domain name since 2010, it is obvious that the Respondent knew that the registration of the disputed domain name was infringing the Complainant’s trademark rights; - the disputed domain name was obviously registered in bad faith with the intent to divert the Complainant’s customer base, to tarnish the Complainant’s fame, to harm its online reputation and to disrupt the Complainant’s professional activities; - the disputed domain name is used in bad faith because it leads to a website of a manufacturer of food supplements whereas the Complainant is a manufacturer of foods supplements. B. Respondent The Respondent requests to deny the Complainant’s requested remedy and contends the following: - it is a company named Ayolabs, S.L. registered in Spain in 2018 and it is providing laboratory manufacturing services related to sport nutrition goods for third parties, which further affix their own labels on such products. The disputed domain name reflects the Respondent’s trade name. Annexes 2, 3 and 4 to the Response provide evidence regarding company incorporation; - the Complainant’s figurative trademark is not identical nor confusingly similar to the disputed domain name as its scope of protection was interestedly extended by the Complainant in this procedure. The Complainant’s trademark contains a name accompanied by specific graphic representation and colors. Furthermore, the verbal elements and the typography are also different when comparing the EIYOLAB trademark and the disputed domain name; - the Respondent has been commonly known by the disputed domain name and the trade name Ayolabs, even in the absence of a trademark recognized or established by national and/or European Union law; - the Respondent’s name is completely independent to the Complainant, being an acronym that derives from the initials of the Respondent’s founders/representatives, A - Adrien, Y - Yave and O - Oliver , and the term “labs” from the word “laboratories” describing the Respondent’s activity. Annexes 3 and 7 to the Response were provided to support such statements; - prior to any notice of the dispute, the Respondent has used the disputed domain name to provide laboratory services to third parties for the manufacture of their own products, being the products labelled with other trademarks. The Respondent does not sell products to the final consumers, as the Complainant does. Annexes 5, 6, 9, 11 and 12 to the Response provide evidence of website use and commercial activity of the Respondent; - the Respondent offers manufacturing services to professional brands whilst the Complainant is offering goods to general public/final consumer. For this reason, the Complainant’s accusations lacks any explanation as why the Respondent would be interested in the Complainant’s Internet traffic or to divert its allegedly customer base; - Google searches for the disputed domain name and the Complainant’s trademark reveal that there is not any kind of diversion of Internet traffic (Annex 8 to the Response); - the Complainant is based in France, the Respondent is based in Spain; the Respondent elected its trade name and the corresponding disputed domain name from the Respondent’s founders names and its main activity. Thus the registration of the disputed domain name lacks any kind of bad faith; - further evidence that the Respondent registered the disputed domain name is good faith are the following: (i) the Complainant’s trademark registration is not qualified as a well-known trademark since there is no evidence in this regard; (ii) the Respondent did not know the Complainant’s mark when registering the disputed domain name; and (iii) there are clear differences between the Complainant’s mark and the disputed domain name; - the disputed domain name was used to identify and provide information about the Respondent’s genuine enterprise Ayolabs, S.L. laboratory manufacturing services; - the Complainant’s cited case law clearly show different circumstances and mostly relates to well-known trademarks and enterprises and therefore they are not applicable to this case; - the Complainant brought the Complaint in an attempt to use the proceeding for the purposes of Reverse Domain Name Hijacking particularly because (i) the Complainant made accusations far from reality and its statements were not proved by any supporting evidence; (ii) the Complainant requested the transfer of the disputed domain name to it in an attempt to arrogate the Respondent’s rights and interests in the term “Ayolabs” and, in case its Complaint would succeed, it would directly mislead the Respondent’s clients, which would have no response from the Respondent to their emails directed to the email address at “@ayolabs.eu” and this would be contrary to the fair practices on the market; and (iii) the Complainant failed to provide any evidence of any kind to support the Respondent’s bad faith behaviour. 6. Discussion and Findings According to Article 4(4) of Regulation (EC) No. 2019/517 (“the Regulation”) and in connection with Paragraph B(11)(d)(1) of the ADR Rules, the Panel shall issue a decision granting the remedy requested by the Complainant if the latter proves in the ADR proceeding the following: (i) that the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by national law of a Member State and/ European Union law and; either (ii) the domain name has been registered by the Respondent without rights or legitimate interest in the name; (iii) the domain name has been registered or is being used in bad faith. In the present ADR proceeding, the Complainant has pleaded the cumulative existence of the circumstances provided by the Regulation and ADR Rules (points (i), (ii) and (iii) above). The Panel notes that the Regulation and ADR Rules list the issues under points (ii) and (iii) in the alternative, but nevertheless the Panel will examine both of these issues in order to reach its decision in the present ADR proceeding. A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union law Article 4(4) of the Regulation states that “[a] domain name may also be revoked, and where necessary subsequently transferred to another party, following an appropriate ADR or judicial procedure, in accordance with the principles and procedures on the functioning of the .eu TLD laid down pursuant to Article 11, where that name is identical or confusingly similar to a name in respect of which a right is established by Union or national law”. Paragraph B(11)(d)(1)(i) of the ADR Rules requires that the disputed domain name be “identical or confusingly similar to a name in respect of which a right is recognized or established by national law of a member State and/or European Union law”. The Complainant holds an EUTM for the mark EIYOLAB, a figurative mark with device and colors. The disputed domain name In accordance with section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)1 , it is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. Panels view the first element as a threshold test concerning a trademark owner’s standing to file a complaint, i.e., to ascertain whether there is a sufficient nexus to assess the principles captured in the second and third elements. Issues such as the strength of the complainant’s mark or the respondent’s intent to provide its own legitimate offering of goods or services without trading off the complainant’s reputation, are decided under the second and third elements. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Further, section 1.10 of the WIPO Overview 3.0 refers to trademarks with prominent figurative elements stating that “to the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element”. Therefore, on this basis, trademark registrations with design elements would prima facie satisfy the requirement that the complainant show “rights in a mark” for further assessment as to confusing similarity. The Panel therefore finds that the Complainant’s trademark EIYOLAB is confusingly similar to the disputed domain name Under the ADR Rules, the burden of proof for the lack of rights or legitimate interests of the Respondent lies with the Complainant. However, the existence of negative facts is difficult to prove, and the relevant information for the Respondent is mostly in its sole possession. Therefore, the Panel holds that it is sufficient that the Complainant makes a prima facie demonstration that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production then shifts to the Respondent to submit appropriate evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element. The Complainant contends that it has no relationship or association with the Respondent, and has not authorized the Respondent to use or register in a domain name the EIYOLAB trademark, that the Respondent is not commonly known by the disputed domain name and is not using it in connection with the offering of goods or services, or making a legitimate noncommercial or fair use of it without the intent for a commercial gain. Rather, the disputed domain name is used for a web page providing competing goods to those offered by the Complainant. Thus, the Complainant has made a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name. Example of justification for registering or using the disputed domain name, are listed in Paragraph B(11)(e) of the ADR Rules as follows (i) prior to commencing this proceeding the Respondent has used the disputed domain name in connection with the offering of goods or services or that it has made demonstrable preparations to do so; (ii) the Respondent as an undertaking, organization or natural person has been commonly known by the disputed domain name; or that (iii) the Respondent is making a legitimate and noncommercial or fair use of the disputed domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or European Union law. Here the Respondent provided evidence that it is registered in Spain since 2018 under the trade name Ayolabs, S.L. which is an invented word, coming from the combination of Respondent’s founders initials and a dictionary term describing the Respondent’s field of activity. The Respondent’s trade name was registered as a domain name, i.e., the disputed domain name. Further on, the Respondent provided satisfactory evidence that, prior to commencing this proceeding, it has used the disputed domain name in order to promote its own commercial activities as such activities are registered in the relevant documents and before the relevant authorities, under its trade name and without making any reference to the Complainant’s mark or business. Indeed, the Parties may act in similar industries, such of providing sport nutrition products, but there are many other companies active in this industry and, according to the case file, the Panel finds that under the ADR Rules the Respondent did not use the disputed domain name to illegitimately take advantage of the Complainant’s mark. For all the above, the Panel concludes that the Complainant failed to establish the second element of the Policy and the Respondent has rights or legitimate interests in the disputed domain name as provided under Paragraph B(11)(d)(1)(ii) of the ADR Rules. C. Registered or Used in Bad Faith The Complainant contends it has trademark rights and domain name since 2010 and that it has gained reputation but there is no evidence provided regarding the use of its trademark or any reputation ascertained by any forum. Further, the Complainant simply resumes to make allegations that the Respondent choose the disputed domain name with its trademark in mind and it uses the disputed domain name in order to divert Internet traffic to its website where similar goods to those of the Complainant are offered to Internet visitors, the Respondent chose the disputed domain name to tarnish the Complainant’s fame, to harm its online reputation and to disrupt the Complainant’s professional activities. The arguments and evidence provided in the Response are satisfactory for this Panel to conclude that the disputed domain name reflects the Respondent’s trade name which was chosen by the Respondent independent of the Complainant’s trademark. The use of the disputed domain name was in connection with the activities for which the Respondent is registered with the relevant authorities in its home country. On the website corresponding to the disputed domain name, the Respondent’s name, contact details, services offered are visibly and clearly displayed. There is no evidence before the Panel that the Respondent targeted or was aware of the Complainant or its trademark when choosing the disputed domain name, nor when it used it. For all the above the Panel finds that there is no evidence on record to conclude that the disputed domain name was registered or used in bad faith, thus the Complainant has failed to demonstrate this element provided under Paragraph B(11)(d)(1)(iii) of the ADR Rules. 7. Reverse Domain Name Hijacking (“RDNH”) ln its Response, the Respondent makes a claim of Reverse Domain Name Hijacking (“RDNH”) which the Panel will address below. The ADR Rules are addressed to resolving disputes concerning allegations of abusive domain names in the .EU country code Top-Level Domain. In a similar manner, the UDRP is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. Paragraph 12 (h) of the ADR Rules states that “[if] after considering the submissions the Panel finds that the Complaint was initiated in bad faith, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of administrative proceeding” (on the interpretation of the similar concept of “reverse domain name hijacking" see section 4.16 of the WIPO Overview 3.0). Also, panels have consistently found that the mere lack of success of the complaint is not in itself sufficient to constitute an abuse of the administrative proceeding. Section 4.16 of the WIPO Overview 3.0 sets out a number of circumstances which UDRP panels have considered as supporting a finding of RDNH. These include: facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database; unreasonably ignoring established Policy precedent notably as captured in the WIPO Overview 3.0 and basing a complaint on only the barest of allegations without any supporting evidence. Given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules, some panels have held that a represented complainant should be held to a higher standard. In the present case, the Complainant, assisted by a professional attorney, should have appreciated that making bare allegations without supporting evidence is not sufficient to demonstrate its trademark use or claimed reputation or the registration and use of the disputed domain name in bad faith. The Complainant conducted a search on the Respondent’s website, provided as Annex E to the Complaint, and thus noted that Respondent activates in the same industry of sport nutritional goods but further plainly concluded that this use is another evidence of bad faith registration ignoring the other relevant factors such as the name and contact details of the Respondent clearly evidenced on such website which coincide with the information listed in the WhoIs, or the lack of any reference to its trademark or name on the website under the disputed domain name. However, in order to make a finding of RDNH, the Complaint must be brought in bad faith in an attempt to abuse the administrative proceeding. Accordingly, in this case, the Panel concludes that, on a balance of probabilities, the Complainant considered the Respondent to be a competitor and misjudged the nature of its case under the ADR Rules relying on the basis of the phonetical similarities between the composition of the disputed domain name and its trademark. 8. Decision For the foregoing reasons, the Complaint is denied. Also, the Panel denies the Respondent’s request for a finding of Reverse Domain Name Hijacking. Marilena Comanescu 1 Considering the substantive similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), the Panel also refers to UDRP case law and analysis, where appropriate.
Sole Panelist
Date: October 27, 2020
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