WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Exide Technologies v. Triara.com S.A. de C.V.
Case No. D2010-1741
1. The Parties
The Complainant is Exide Technologies of Milton, Georgia, United States of America represented by Katten Muchin Rosenman LLP, United States of America.
The Respondent is Triara.com S.A. de C.V. of Colonia Pena Pobre, Mexico.
2. The Domain Name and Registrar
The disputed domain name <exidemexico.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2010. On October 14, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On October 14, 2010, Tucows Inc. 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 October 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2010.
The Center appointed J. Nelson Landry as the sole panelist in this matter on December 9, 2010. 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 a producer and recycler of lead-acid batteries present in more than 80 countries. It has used the trademark EXIDE in association with stored electrical energy products and services for industrial and transportation applications since 1901. The Complainant created and adopted the trademark EXIDE in 1900 and commenced using it in the United States within a year. Over the past century, the Complainant has, in association with the trademark EXIDE, engaged in many related fields such as storage battery, to power pneumatic-electric railroad interlocking switches, to protect daytime operation of electric elevators, the operations of telegraph station police and fire alarms, to power the first telephone battery exchange and in addition to the manufacture of batteries, it also found varied uses for batteries (herein the “Trademark EXIDE”). The Complainant commenced the exportation of its Exide batteries to China, Japan, Iceland, Canada, Central America, South America, Australia, New Zealand, Europe, Africa, the Philippines, Java, Sumatra, the West Indies and Mexico where the Respondent is located. It now operates in about 80 countries within six global internal divisions.
The Complainant has obtained trademark registrations in the United States and in numerous international jurisdictions including Mexico where the Trademark EXIDE was registered on March 5, 1971, in association with “storage batteries and their parts; supplies and accessories, dry cells, battery chargers and electrical apparatus.” Many other international registrations of the Trademark EXIDE were applied for in many countries prior to the registration of the disputed domain name.
The Complainant has no relationship with the Respondent, nor has it granted to the Respondent a license, permission or consent to use, register or appropriate any of the Trademark EXIDE in the disputed domain name or in any manner whatsoever.
The disputed domain name was registered on July 28, 2010. Upon learning about said registration, the Complainant, by letter, informed the Respondent of its rights in the Trademark and requested the transfer of the disputed domain name to the Complainant (sic “Respondent”). The Respondent did not reply to the said demand letter.
5. Parties’ Contentions
The Complainant represents that pursuant to its use and registration of the Trademark EXIDE first in the United States, then in over 80 countries of the world, it became one of the world’s largest producers and recyclers of lead-acid batteries in a wide range of stored electrical products and services for industrial and transportation applications.
The Complainant further represents that it registered its Trademark EXIDE first in the United States more than a century ago and, during that time, expanded its line of products and services in all the above mentioned countries including Mexico and that, in consequence thereof along with the extensive marketing and commercial production, the Trademark EXIDE has become famous.
The Complainant states that it first registered the domain name <exideworld.com> on May 16, 1995 and changed its official Internet website to “www.exide.com” on March 2, 2000. According to the Complainant, the Trademark EXIDE is known worldwide to symbolize the source or origin of the goods and services of the Complainant and has been so recognized by the international public and is now a distinctive symbol of the Complainant’s products of high quality, reputation and goodwill.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the latter is not commonly known by the name “exide” or any variation thereof and does not own any company or business name registration containing the term “exide”, on the one hand, and is not related to the Complainant and has not received from the Complainant any license, permission or consent to use the Trademark EXIDE or any variation thereof on the other hand.
The Complainant further submits that the Trademark EXIDE is a uniquely coined term registered as a trademark exclusive to the Complainant in which it has established rights pursuant to its use in connection with its own goods and services exclusively for at least 110 years prior to the registration of the disputed domain name and concludes that such registration of the disputed domain name as contended herein makes all registrations and uses thereof by the Complainant appear illegitimate. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
The Complainant relies on several factors and representations to contend that the disputed domain name has been registered in bad faith and is being used in bad faith.
According to the several trademark registrations and its long use by the Complainant, including in Mexico, the Respondent must have had constructive notice, prior knowledge of the Complainant’s prior rights in the Trademark EXIDE and willfully registered the disputed domain name to profit from the reputation and fame associated with the EXIDE Trademark. Considering the Respondent’s ignorance and failure to reply to the Complainant’s letter requesting the transfer of the disputed domain name and further the registration by the Respondent of “exide”, an identical word, in a confusingly similar domain name, it would appear that this was done deliberately to attract the public and divert Internet visitors away from the Complainant’s official Exide website with the intent of causing public confusion and deception as to the source, origin and affiliation of the disputed domain name. These aforementioned factors, according to the Complainant, support a conclusion of registration in bad faith. See Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Cellular One Group v. Card Resources Corp., WIPO Case No. D2000-1180; Yahoo! Inc. v. M & A Enterprises, WIPO Case No. D2000-0748; Cellular One Group v. The Design Factory, WIPO Case No. D2000-1670; ebay Inc. v. Sunho Hong, WIPO Case No. D2000-1633; Expedia Inc. v. European Travel Network, WIPO Case No. D2000-0137; and Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
According to the Complainant, the combination of the Trademark EXIDE and the country of Mexico in the disputed domain name where the Complainant uses the trademark and does business, represents a deliberate design and calculation to trade on and misappropriate the monetary value, reputation, fame and goodwill in the Trademark EXIDE to unjustly enrich the Respondent from such unauthorized association. The bad faith is further confirmed by the fact that the Respondent’s webpage associated with the disputed domain name points the Internet visitor to the “www.telmex.com” website which is likely to cause further consumer confusion since the Complainant provides network power products to telecommunications related companies. (see exhibits 3 and 7)
The Complainant relies on several earlier UDRP decisions to further represent that the presence of the entire Trademark EXIDE is a proper inference of evidence of bad faith. See Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028.
According to the Complainant, the use of the disputed domain name continues to cause further malicious damage and business injury to the Complainant in placing a cloud over the Complainant’s title and ownership of all its trademarks. See Cellular One Group v. Paul Brien, supra and Antera S.p.A. v. Antera, Inc., WIPO Case No. D2000-0689.
Stressing the impossibility for the Respondent to use the disputed domain name without violating the Complainant’s Trademark EXIDE and the registration and use of the disputed domain name primarily to confuse the public, the Complainant concludes and asserts that the Respondent registered and uses the disputed domain name primarily for the purpose of disrupting the Complainant’s business, to divert and attract for commercial gain Internet users to the disputed domain name by creating a likelihood of confusion with the Trademark EXIDE as to the source, sponsorship, affiliation, association or endorsement of the Respondent’s disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for the domain name to be cancelled or transferred:
(i) The domain name registered by the Respondent 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided substantial and consistent evidence that around 1900, it adopted a new Trademark, EXIDE, a coined term which has no descriptive meaning nor presence in a dictionary. The Complaintant explained that its origin comes from the part “ex” of the word “excellent” and the part “ide” of the word “oxide”. This Trademark EXIDE has been used by the Complainant for over a century in association with storage batteries, uses for various purposes and furthermore, provided evidence that starting in 1923, these Exide batteries were exported to numerous countries including Mexico. The Panel finds that the Complainant owns the rights in the Trademark EXIDE and that by reason of the consistent increasing international use, marketing and commercial promotion, a significant amount of goodwill reputation and now fame is associated therewith.
The disputed domain name does incorporate the whole of this distinctive Trademark EXIDE, with the addition of the word “Mexico”, a generic country name in which the Trademark EXIDE is registered. The addition of this country name does not in any way diminish this distinctive part of the disputed domain name, which is “exide”, and in this Panel’s view, does not reduce the likelihood of confusion between the disputed domain name and the Trademark EXIDE, considering the fame associated with the trademark. It is most likely that the public would assume that the disputed domain name is an official website of the Complainant for Mexico.
The Panel finds that the disputed domain name is confusingly similar to the Trademark EXIDE.
Accordingly, the Complainant has satisfied the first criterion of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by stating that the Respondent has never been known by the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name. Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of the Trademark EXIDE. There is no evidence that the Respondent has ever engaged is any legitimate business under the Trademark EXIDE.
Keeping in mind the fame and long use of the Trademark EXIDE and the fact that it consists of a coined term on the one hand and the fact that the Complainant is not related to the Respondent, did not give any license, permission or consent to use the Trademark EXIDE and to register the disputed domain name on the other hand, the Panel agrees with the Complainant when the latter states “it is impossible to conceive any legitimate use of the EXIDE term or Trademark by the Respondent”. The Panel finds that the Respondent has no rights or legitimate interest in the disputed domain name.
Accordingly, the Complainant has satisfied the second criterion of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that [the respondent] ha[s] registered or [the respondent] ha[s] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent] ha[s] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent] ha[s] engaged in a pattern of such conduct; or
(iii) [the respondent] ha[s] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent] ha[s] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website 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] website or location or of a product or service on [the respondent’s] website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainant contends, with ample justification in this Panel’s view, that the disputed domain name was registered and used in bad faith.
Upon considering the extensive international use over a century, including Mexico, the fame associated the Trademark EXIDE consisting of a coined term, it is most difficult for this Panel to consider that the Respondent was not aware of the existence of this Trademark EXIDE when he registered the disputed domain name. Upon being served first with the letter of complaint and request of transfer from the Complainant and the absence of a reply to the said letter and any Response to the Complaint, the Respondent most likely, if not certainly, was aware of the existence of the Trademark EXIDE upon registering the disputed domain name. How can the choice of such a coined term by the Respondent be explained without prior knowledge? Considering the presence of the whole Trademark EXIDE in the disputed domain name and the confusing similarity with the Trademark EXIDE, the Panel considers and finds, in agreement with the Complainant’s representations, that the registration of this particular disputed domain name was done deliberately with knowledge of the Trademark EXIDE to attract and divert Internet visitors away from the official website of the Complainant and thereby, benefit from the public confusion.
The Panel therefore concludes and finds that the disputed domain name was registered in bad faith.
Subsequently to registering the disputed domain name, the Respondent associated therewith a webpage wherein the visitors were directed to websites under “www.telmex.com” where parties also provide network power products to telecommunication related companies. The Complainant is actively engaged in this line of activities.
To this Panel, the presence of the famous Trademark EXIDE in the disputed domain name and the use of the Respondent’s website in the same line of activities of the Complainant represent a blatant and deliberate intent to trade on and procure the fame, reputation and worldwide notoriety associated to the EXIDE Trademark in deceiving and confusing the consumer public. The Panel therefore finds that the disputed domain name is used in bad faith.
Accordingly, the Complainant has satisfied the third criterion of paragraph 4(a) of the Policy.
The Panel concludes that:
(a) the disputed domain name <exidemexico.com> is confusingly similar to the Complainant’s trademark;
(b) the Respondent has no rights or legitimate interests in the disputed domain name;
(c) the disputed domain name has been registered and is being used in bad faith.
Therefore, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <exidemexico.com> be transferred to the Complainant.
J. Nelson Landry
Dated: December 20, 2010