The Complainant is Kompozitor Műanyagipari Fejlesztő Kft., of Budapest, Hungary, represented by Szecskay Attorneys at Law, Hungary.
The Respondent is Elena Pagni, of Sesto Fiorentino, Italy, represented by Carlo Sala, Italy.
The disputed domain names <furanflex.com> and <furanflex.net> are registered with Tuonome.it.srl.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2008. On November 18, 2008, the Center transmitted by email to Tuonome.it.srl a request for registrar verification in connection with the disputed domain names. On December 1, 2008, Tuonome.it.srl 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2008. The Response was filed with the Center on December 15, 2008.
On December 22, 2008, the Complainant, and then the Respondent, each submitted a supplemental filing in connection with this case.
The Center appointed James A. Barker as the sole panelist in this matter on December 23, 2008. 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.
The Complainant is the owner of the international trademark FURANFLEX since December 20, 2002, which designates more than 20 countries in Europe, including Italy and Hungary. The trademark is registered in classes 1, 19 and 37 for, in summary, plastic and plastic-based composite materials for covering the internal surfaces of chimneys; internal chimney coatings made from plastic; and the repair and renovation of chimneys.
On November 14, 2008 (as evidenced in the Complaint), the disputed domain names reverted to a website concerning “Flues Restoration”, with links to a number of commercial suppliers of related products, including “Fitfire”, “Isofit”, and “HT1000”. The website also includes a mention of the Complainant's mark, as well as purported comparisons between the Complainant's products and that of its competitors.
The Respondent provides little explanation of its own activities (other than what is self-evident from the websites to which the disputed domain names refer). The Respondent claims that the entity which uses the disputed domain names in fact is “Camitek S.r.l”, but does not provide any details about the business of that company.
The Complainant alleges that the disputed domain names are identical to its registered mark.
The Complainant also alleges that the Respondent has no rights or legitimate interests in the disputed domain names. In this connection, the Complainant notes that it has granted no rights to the Respondent, and that the Respondent's website contains links to products that compete with those of the Complainant. The Complainant therefore says that the Respondent is misleadingly diverting Internet consumers.
The Complainant says that the disputed domain names have been registered and used in bad faith. The Respondent is, says the Complainant, seeking to disrupt the business of the Complainant as a competitor, and has intentionally attempted to attract Internet traffic for commercial gain. The Complainant notes in this connection that, when searching for the term “furanflex” on “www.google.com”, the Complainant is the top ranked search result. The Complainant also refers to various statements on the Respondent's website that are disparaging of its products.
The Respondent notes, firstly, that “Camitek S.r.l” (which it says is the company that makes use of the disputed domain names in fact) has filed a lawsuit seeking a declaration that the Complainant's marks are invalid. From this, the Respondent refers to paragraph 4(k) of the Policy, and notes that the Panel may suspend the proceedings or issue no decision. (Independently, the Panel notes that it has a related discretion under paragraph 18 of the Rules.)
In the event that this case is not suspended, the Respondent denies the allegations in the Complaint. The Respondent denies that the disputed domain names are identical or confusingly similar to the Complainant's marks, on the basis that those marks are descriptive. The Respondent says that the Complainant's mark is made up of the chemical term “furan” together with “flex”, which is short for “flexible”. Alternatively, the Respondent argues that the mark is deceptive if the Complainant's products do not contain any furan.
The Respondent claims that it has a right or legitimate interest in the disputed domain names because there is no risk of consumer confusion. The Respondent also claims that ithe Complainant's trademarks do not entitle the Complainant to exclusive rights.
For somewhat similar reasons to those set out above, the Respondent argues that it did not register the disputed domain names in bad faith, since it has registered “a common, or descriptive term”.
Under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names were registered and are being used in bad faith.
Each of these elements are addressed below, immediately following a consideration of the Parties' supplemental filings, and the Respondent's argument relating to concurrent court proceedings.
Both the Complainant and the Respondent made supplemental filings in this case on the same day. Neither the Policy nor the Rules explicitly provide for supplemental filings to be made. A Panel has a discretion to admit or invite further filings under the paragraph 10(a), (b) and (d), and paragraph 12 of the Rules. However, the Policy is intended to provide an expeditious proceeding. Reflecting this, the Policy and Rules provide limited powers to the Panel, and set short deadlines for the proceedings to be progressed. The Panel considers that further uninvited submissions are generally inconsistent with the character and purpose of the Policy.
In this case, both the supplemental filings merely sought to make further argument about matters that could easily have been anticipated beforehand. As such, the Panel did not take those filings into account in addressing the Complainant's case against the Respondent.
In effect, the Respondent asks the Panel to suspend or terminate these proceedings because of concurrent court proceedings. The Respondent says that the company using the disputed domain names in fact has taken action seeking a declaration from an Italian court that the Complainant's Italian trademark is invalid.
The Panel however declines to exercise that discretion to terminate or suspend the proceedings for the following reasons.
Firstly, it appears that the remedies sought in the Italian courts (the cancellation of Complainant's Italian trademark) are not the same as those sought by the Complainant here. In this proceeding under the Policy, the Complainant seeks the transfer of the disputed domain names to it, including on the basis of (but not limited to) trademark registrations that are the subject of the referred-to Italian court proceeding.
Secondly, paragraph 4(k) of the Policy makes it clear that neither party is prevented from submitting the dispute to a court of competent jurisdiction for independent resolution before or after this administrative proceeding.
Thirdly the Complainant has a valid and subsisting Italian trademark, until such time as a court may determine otherwise. The commencement of court proceedings does not affect this. For the Panel to suspend or terminate the proceedings in this case would be speculative of the outcome of those proceedings. The Panel is reluctant to do so, given the other factors above, and because there is no evidence of a certain or near date for any such court action to be resolved.
Accordingly, on the facts of this case, the Panel has proceeded to a decision on the merits. Such an approach is similar to that taken by panels in comparable circumstances. See e.g., Cognigen Networks, Inc. v. Pharmaceutical Outcomes Research a/k/a Cognigen Corporation, WIPO Case No. D2001-1094; Sonatel Multimédia SA v. Universal Computer Associates SUARL/Mamadou Kébé, WIPO Case No. D2005-0009.
Rights in a mark
The Respondent denies that the disputed domain names are identical or confusingly similar to the Complainant's trademark on the basis that that mark is descriptive. The Respondent rests its argument on the fact that the Complainant's mark combines the term for a chemical (furan) together with a common shortened form for “flexible” (i.e. “flex”).
The Respondent provides little persuasive evidence that the Complainant's mark is descriptive. The Respondent provides no evidence of third party descriptive use of that term. The term does not, as a combination, appear to have any natural or obvious meaning. Neither does the term appear descriptive of the Complainant's products or services, which relate to chimney products and internal pipes and coatings. Even if “furan” is a chemical component of the Complainant's products, the combined terms “furan” and “flex” do not describe the Complainant's products themselves. The Respondent does not otherwise provide evidence that that combination is, as such, descriptive. Rather, that term is one which appears to the Panel to be distinctive for trademark purposes.
Even if that term were descriptive, that would not be relevant for the purpose of this element of the Policy, once the Complainant has established that it has rights in its mark. The test for the purpose of this element of the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases. See e.g. BWT Brands, Inc. and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480; Koninklijke Philips Electronics N.V. v. In Seo Kim, WIPO Case No. D2001-1195; Energy Source Inc. v. Your Energy Source, NAF Case No. FA 96364; Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc., WIPO Case No. D2001-1121; GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001.
The Respondent alternatively argues that the Complainant's mark is deceptive if the Complainant's products do not contain furan. But this submission fundamentally misunderstands the nature of a trademark. A mark is a badge of origin which may clearly be fanciful or arbitrary, and will usually be a more distinctive (and therefore stronger) mark if it is. Whether or not the Complainant's products contain furan (a matter on which the Response suggests no conclusion) has in the present proceeding no relevance to its rights in its registered mark.
Identical or confusingly similar
It is well-established that the gTLDs are to be generally disregarded for the purpose of comparing a mark and a disputed domain name: Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499. Disregarding those elements in this case (the “.com” and “.net” elements), and taking the above into account, it is clear that the disputed domain names are identical to the Complainant's mark.
The Panel therefore finds that the Complainant has established its case under this first element.
The Respondent considers that it has rights or legitimate interests in the disputed domain names on the basis that the term “furanflex” is descriptive. But, for the reasons set out above, the Panel finds that that term has no readily apparent dictionary or common meaning. This finding combined with the Respondent's use of the disputed domain names, does not indicate that the Respondent has rights or legitimate interests therein. The Panel also finds that there is no other evidence which would support such a finding. Accordingly, the Panel finds that the Complainant has established this second element.
The evidence in this case clearly indicates that the Respondent was aware of the Complainant when it registered and then used the disputed domain names. The website to which the disputed domain names refer clearly include references to the Complainant's mark and its products. The Respondent does not itself deny that it was aware of the Complainant when it registered the disputed domain names. The disputed domain names exactly incorporate the Complainant's mark. The website to which the disputed domain names refer promotes competing products with those of the Complainant. This evidence all strongly suggests that the Respondent registered the disputed domain names to misleadingly divert Internet users looking for the Complainant. As such, this evidence supports a finding of bad faith under paragraphs 4(b)(iii) and (iv) of the Policy.
Despite this, the Respondent seeks to deny bad faith by arguing, as it does in relation to the other elements of the Policy, that the Complainant's marks are descriptive. For the reasons set out above, the Panel does not accept this argument. The Panel also notes that, even if the Complainant's mark was descriptive, this would not prevent a finding of bad faith in circumstances which indicate that the Respondent knew of, and intended to take advantage of the Complainant's mark.
The Respondent otherwise alleges that the Complainant is under investigation by the Italian Antitrust Authority. The Respondent provides no explanation of its evidence for this allegation. (That evidence was the WhoIs details for a domain name unrelated to this case, “real-fitfire.com” and pages from the website to which that domain name resolves – neither of which appear to the Panel to be relevant to this dispute.) In any case, the allegation is not relevant to the Panel's finding in relation to bad faith use and registration of the disputed domain names.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <furanflex.com> and <furanflex.net>, be transferred to the Complainant.
James A. Barker
Dated: January 13, 2009