WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lorenzo International Limited v. Tucows.com Co / Tucows Inc
Case No. D2010-2254
1. The Parties
The Complainant is Lorenzo International Limited of Singapore, the Republic of Singapore, represented by Keystone Law Corporation, Singapore.
The Respondent is Tucows.com Co / Tucows Inc of Toronto, Canada, represented by AlvaradoSmith, United States of America.
2. The Domain Name and Registrar
The disputed domain name <lorenzo.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2010. On December 23, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On December 23, 2010, Tucows Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 7, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 7, 2011 and on January 10, 2011.
The Center verified that the Complaint together with the amended 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 January 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response January 31, 2011. The Response was filed with the Center on February 1, 2011.
The Center appointed Desmond J. Ryan, Dan Hunter and David E. Sorkin as panelists in this matter on March 1, 2011. The Panel finds that it was properly constituted. Each member of 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 claims to be the owner of 41 registrations or applications for the trademark LORENZO in 21 countries throughout the world including the United States of America. The Panel notes that according to the copies of the certificates of registration of these trademarks each of them comprises the word LORENZO either in plain script or in a distinctive block type. Each is registered in respect of furniture in International Class 20 and, in the case of registrations in Australia, The Netherlands, Poland, Tanzania, Taiwan and Zanzibar the registrations also cover retail services in Class 35. The Panel notes however, that each of these registrations appears to be in the name of Uhin Holding Pte Ltd, not the Complainant. No information is given by the Complaint as to the relationship if any, between the Complainant and Uhin Holdings Pte Ltd. The Panel notes however, that each has the same address in Singapore.
Apart from one registration in Singapore all are dated well after the registration of the disputed domain name.
(In the Response the Respondent refers to a further United States trademark registration No. 3,888,097 filed March 19, 2004, however, this registration is in the name of Lorenzo Jewelry Limited (Hong Kong Corporation) with an address in Hong Kong and registered in Class 14 in respect of jewelry. There is no indication of any connection between this registration and the Complainant.)
No information is provided in the Complaint about the Complainant or its business. However, the Panel notes that the Complainant's website at <Lorenzo.furnipoint.com> states that:
"Established in 1983, Lorenzo International is an integrated lifestyle furniture group involved in the design, manufacture, assembly, wholesale and retail of conceptualised lifestyle furniture.
Most of the Group's products are sold under its "LORENZO" brand and categorized into two collections. Dante – the classic leather collection, and ENZO–the wood-based collection. These products are sold through 32 wholly-owned stores and 20 Licensed Retailing Systems ("LRS") stores in six countries including Singapore, Taiwan, Malaysia, PRC, Brunei and Myanmar.
In addition to retailing its own products, the Group also exports its "LORENZO" branded products to more than 50 countries around the world. Its products are supplied by its manufacturing facilities – two leather sofa manufacturing facilities in Malaysia and Kunshan, PRC, and a wood-based furniture manufacturing facility in Kunshan, PRC.
The Group also acts as an original design manufacturer (OEM) to design and manufacture leather sofas under its customers' own brands, and as an original equipment manufacturer (OEM) to manufacture furniture based on customers' designs."
The Respondent is a domain name registrar based in Canada. It was established in 1992 and was one of the first 34 registrars accredited by the International Corporation for Assigned Names and Numbers in 1999. In 2006 it acquired the business of Mailbank, Inc. which carried on business as NetIdentity. Included in the acquisition was NetIdentity's large portfolio of domain names comprising surnames, and the service which NetIdentity carried on of providing personalized email addresses to persons having a surname corresponding to one of its domain names. One of those domain names was the disputed domain name. The Respondent states that it provides that service to 15 persons having the surname "Lorenzo". The Respondent claims to have over 42,000 personal surnames registered for use in its Personal Names Service.
The disputed domain name resolves to a page which carries the statement:
"This domain name is part of the OpenSRS Personal Name Service and is one of the Tucows owned portfolio of personal domain names. Learn more about the Personal Names Service. If you have any questions about this domain name or website, please email pninquiry[at]tucows.com (replace ‘[at]’ with ‘@’)”. .
As at December 2010 the page also carried links to several other sites, apparently on a pay-per-click basis. Following the link at the "Personal Names Service" leads to a site at which, inter alia, the enquirer may purchase a personalized email address and other services.
The Respondent and its predecessor have been the respondents in at least thirteen domain name cases concerning "personal name" domain names. In all but three of those cases the Respondent has been successful. The Respondent claims that each of those three cases was subsequently overturned by a court of mutual jurisdiction. The Respondent purports to provide copies of the decisions in each of those cases; however, only one such copy was provided and the Panel notes that in that case judgment was apparently entered by consent and no reasons for judgment are included. The Panel also notes that in at least two of those cases the domain name is now owned by the respective Complainant
5. Parties’ Contentions
The Complainant states that the Complaint is based on its ownership of the several registrations of the mark consisting of the word LORENZO referred to above.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because:
it has not used the disputed domain name in a valid and/or legitimate manner;
it has not shown any use or preparation to use the disputed domain name in connection with the bona fide offering of goods or services;
it does not operate any business through the disputed domain name;
it has not registered any trademark or service mark which uses the word LORENZO;
the Complainant has not permitted the Respondent to use the trademark nor is there any connection between the Complainant and the Respondent;
the Complainant contends that the domain name was registered and is being used in bad faith because:
it does not sell the personal domain names but licenses their use by third parties as an email address;
the Respondent has practiced different treatment for different domain names;
there is very little traffic through the domain name and the links associated with the word LORENZO appear to have been selected by an algorithm a rather than intentionally selected by the Respondent;
the webpage as at December 7, 2010 does not link to Lorenzo Jewelry and the Respondent operates no business directly linked to the trade name LORENZO;
the Respondent has registered several other domain names which have a similar looking page to that of the disputed domain name and which do not provide any business link to the respective domain names; and
the disputed domain name prevents the Complainant from registering the disputed domain name.
The Respondent has filed extensive submissions and has cited several prior UDRP decisions in its favour relating to circumstances substantially identical to those in the present case. The Respondent also cites the decision of the United States Court of Appeal for the Ninth Circuit in Avery Dennison Corp v. Sumpton, a decision in favour of the founder of its predecessor.
The Respondent's submissions maybe summarized shortly as follows:
The disputed domain name was registered in October 1996, 14 years prior to the filing of the Complaint.
Its predecessor had no reason to know of the Complainant or its trademark and was not targeting the Complainant when it registered the domain name.
The Complainant and its predecessor carried on a legitimate business in providing and hosing personal email addresses and that such activity has been held to be legitimate in many prior UDRP decisions concerning the Respondent and its predecessors including:
International Raelian Religion and Raelian Religion of France v. Mailbank.com Inc., WIPO Case No. D2000-1210 (WIPO, April 4, 2001); Buhl Optical Co v. Mailbank.com, Inc., WIPO Case No. D2000-1277 (WIPO, March 1, 2001); Bosco Products, Inc. v. Bosco E-Mail Service and Mailbank.com, NAF Claim No. FA94828; José de Jesús Velázquez Jiménez v. Mailbank.com Inc., WIPO Case No. D2001-0341 (WIPO June 10, 2001); Puls Elektronische Stromversorgungen GmbH v. NetIdentity, WIPO Case No. D2002-0205 (WIPO May 31, 2002; Dong A/S v. NetIdentity, NAF Claim No. 250240 (Nat. Arb. Forum. June 2, 2004); Walls Industries, Inc., Cleburne, Texas v Tucows.com Co, NAF Claim No. 824361 (Nat. Arb. Forum, Dec. 21, 2006); Ken Batchelor Cadillac Company, Inc. v. Tucows.com Co c/o Admin Domain, NAF Claim No. 1126742 (Nat. Arb. Forum, Feb. 26, 2008); Raccords et Plastiques Nicoll v. Tucows.com Co., WIPO Case No. D2008-1322 (WIPO, December 3, 2008); Markel Corporation v. Tucows.com Co., WIPO Case No. D2007-1750 (WIPO, June 5, 2008); Ancien Restaurant Chartier v. Tucows.com Co., WIPO Case No. D2008-0272 (WIPO, May 6, 2008); Grasso's Koninklijke Machinefabrieken N.V., currently acting as Royal GEA Grasso Holding N.V. v. Tucows.com Co., WIPO Case No. D2009-0115 (WIPO, April 10, 2009).
and by the United States Court of Appeal.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant claims to have rights in the trademark LORENZO. However, none of the evidence provided by the Complainant directly supports that claim. None of the trademark registrations which it cites are in the name of the Complainant and the Complainant has given no evidence as to any connection between it and the owners of those registrations. It is therefore open to the Panel to dismiss the Complaint solely on that basis. Nevertheless, the Panel is prepared to draw an inference, based on the fact that the Complainant and the registered proprietor of the trademarks have the same address, that the two companies are related and have a common interest in the protection of the LORENZO trademark.
Whilst in many cases the trademark registrations are for the word LORENZO rendered in a particular style the dominant particular of the trademark is the word per se. The disputed domain name comprises that word and accordingly, for the purposes of the Complaint, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The disputed domain name was registered in October 1996. Apart from a single registration in Singapore dating from May 1989 there is no basis upon which the Panel could conclude that at the date of registration of the disputed domain name the Respondent's predecessor knew, or could have reason to suspect, that the Complainant had any rights in the word LORENZO as a trademark. The fact of its registration in Singapore is not, without strong evidence of use and notoriety, sufficient to support such a conclusion. No such evidence has been adduced by the Complainant.
The Complainant contends that the business of providing and hosting personal email addresses is a legitimate business and that contention is supported by the findings in no less than thirteen prior UDRP decisions involving the Complainant and its predecessors. It remains therefore to consider whether the use of the disputed domain was in the bona fide offering of those services.
When the Respondent acquired the disputed domain name in 1996 it did so as part of the acquisition of an ongoing business and it has continued to use the domain name in that business in the same way as it was used by its predecessors. Whilst there may be some circumstances in which it is proper to treat the date of the Respondent's acquisition of the domain name as the date from which the Respondent's bona fides is to be judged that is not the case where, as here, the business, and the use of the disputed domain name in the business, is ongoing. Accordingly the Panel treats the date of first registration as the relevant date for the purposes of determining the bone fides of the use of the domain name in connection with the offering of goods and services by the Respondent and its predecessors. The Panel notes in addition that even if it were to adopt the date of acquisition by the Respondent as the relevant date the Complainant has adduced no evidence to raise a presumption that the Respondent's use was not bona fide as of that date. Further, there is no evidence that the Respondent's continuing use of the domain name in the same way in connection with its Personal Names Service is not bona fide. The Respondent states that it was not aware of the Complainant or of its claim to trademark rights until it received the Complaint. The Complainant has therefore demonstrated that prior to any notice to it of the dispute it used the disputed domain name in the bona fide offering of its services.
The Panel therefore finds that the Respondent has a legitimate right and interest in the domain name.
C. Registered and Used in Bad Faith
In view of the finding in paragraph 6B above, there is no reason for the Panel to further consider this ground of Complaint. The Panel notes however, that for the reasons set out above, the Panel would not find bad faith registration or use.
The Respondent has not sought a finding of reverse domain name hijacking.
For all the foregoing reasons, the Complaint is denied.
Desmond J. Ryan AM
David E. Sorkin
Dated: March 15, 2011