WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Proactiva Medio Ambiente, S.A. v. Proactiva
Case No. D2012-0182
Complainant is Proactiva Medio Ambiente, S.A. of Madrid, Spain, represented by Ubilibet, Spain.
Respondent is Proactiva of Florida, United States of America (“United States”), represented by Malloy & Malloy, P.A., United States.
2. The Domain Name and Registrar
The disputed domain name is <proactiva.com> which is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2012. On that same date, the Center transmitted by email toGoDaddy.com LLC a request for registrar verification in connection with the disputed domain name and GoDaddy.com LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On February 3, 2012, the Center received an email communication from Respondent asking on the status of the procedure, which the Center answered by email on February 6, 2012.
On February 6, 2012, the Center communicated to the Parties that the Complaint had been filed in the Spanish language while the registration agreement was in the English language, and invited them to submit any arguments in connection therewith. In response to that Center’s communication, the Center received Complainant’s communication on February 9, 2012, and Respondent’s communication on February 10, 2012.
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 Respondent of the Complaint, and the proceedings commenced on February 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2012. The Response was filed with the Center on March 7, 2012.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on March 16, 2012. This Panel finds that it was properly constituted. This 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 March 21, 2012, the Center received a supplemental filing from Complainant, and on March 27, 2012, the Center received a supplemental filing from Respondent.
The Complaint was submitted in Spanish and Complainant expressly requested that this proceeding be conducted in Spanish. The Response was submitted in English and Respondent expressly objected Complainant’s request and in turn requested that this proceeding be conducted in English. The Center’s communications to the Parties were made in both English and Spanish.
The general rule under paragraph 11(a) of the Rules is that the language of the administrative proceeding shall be the language of the Registration Agreement, unless otherwise agreed by the Parties. In this case, the Registration Agreement is in English, thus the Complaint should normally have been submitted in English ab initio.
Although it is clear from Respondent’s response that it has sufficient ability to communicate in Spanish (having understood and answered in English the arguments made in the Complaint submitted in Spanish), Respondent is located at an English speaking country, besides that the Registration Agreement is in English. Further, Complainant’s request filed with the Center on February 9, 2012, regarding the language of this proceeding, was drafted in English.
Absent an agreement between the Parties to the contrary, this Panel resolves that the language of this proceeding shall be English1.
This Panel notes that there is no prejudice to the Parties as they have been permitted to submit their arguments in their chosen languages. There is no need of translation thereof because this Panel is fluent in both Spanish and English. This Panel is satisfied that Respondent has fully understood the Complaint drafted in Spanish, and that Complainant has sufficient ability to communicate in English as demonstrated in its filing with the Center of February 9, 2012.
B. Unsolicited supplemental filings
The Center received unsolicited supplemental filings from Complainant on March 21, 2012 and from Respondent on March 27, 2012. Although the Rules do not explicitly provide for supplemental filings, paragraph 10(d) of the Rules empowers the panel to “determine the admissibility, relevance, materiality and weight of the evidence”.
In this case, this Panel has decided not to take into account such Parties’ supplemental filings since they are repetitive and do not change the substance of the litis and material evidence already in the file. In any event, if this Panel had taken into consideration such supplemental filings, that would not have changed the outcome of this proceeding.
4. Factual Background
Complainant is a Spanish company registered under its current name with the Commercial Registry of Madrid since October 4, 1996, and with stated date of having started operations on October 4, 1996.
Complainant has rights over the trademark PROACTIVA, for which it holds several registrations, including, among others: registration No. 0828913226 with the Brazilian National Institute of Industrial Property, registered in November 2009, class 40; registration No. 844401 with the Chilean National Institute of Industrial Property, registered in March 2009, classes 35, 37, 39, 40 and 42; and registration No. 975676 with the Mexican Institute of Industrial Property, registered in March 2007, class 40 (all of them applied for in December 2006).
The disputed domain name was created on August 7, 1998. Respondent was formed in July 1998 and has conducted activities in the importation and distribution of wine.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows:
Complainant is registered under its current name with the Commercial Registry of Madrid since October 4, 1996, that is, almost two years before the registration of the disputed domain name.
Complainant is a multinational company with 11,470 employees, more than 4,000 clients, and with a solid presence in South America, particularly in Argentina, Brasil, Chile, Colombia, Mexico, Venezuela, Ecuador and Peru. In such region, Complainant is a leader in environmental services, being specialized in integral handling of water and wastes.
PROACTIVA is a well-known trademark, both at national and international level, especially in Argentina and the rest of Latin America.
An Internet search for the word “proactiva” through Google shows thousands of results concerning several web sites making reference to Complainant, evidencing the notoriety and identification of such word with Complainant. The broad portfolio of domain names owned by Complainant has the effect that most Internet users relate “proactiva” with Complainant.
The disputed domain name is identical to several of Complainant’s trademarks. The addition of the suffix “.com” cannot be deemed as a material distinction since it is due to the technical configuration of the domain name system.
Respondent has no legitimate rights or interests with respect to the disputed domain name. Respondent is not the owner of any distinctive sign for the name “proactiva” at the Spanish Patent and Trademarks Office, the United States Patent and Trademark Office, the Argentinean National Institute of Industrial Property or at the European Office of Harmonization in the Internal Market.
Respondent has no license or contractual relationship with Complainant that allows it to use the trademark PROACTIVA or to use it in any domain name, and has received no authorization from Complainant to register or use the disputed domain name.
The term “proactiva” is similar to Respondent’s name. The company Proactiva Trading LLC is owned by Mr. Gariboldi who in turn is the owner or son of the owner of 50% of Consultora Demison, Complainant’s main competitor in Argentina. The websites of Complainant and Consultora Demison mention that these companies are in the environmental sector and, among other countries, both perform their services in Argentina.
The unanswered and even acknowledged facts by Mr. Gariboldi are: (i) the father of Respondent’s owner is the founder of the company Consultora Demison, S.A., and (ii) the son of the owner of 50% of Consultora Demison S.A. incorporated in 1998 in Florida a company under the name Proactiva Trading LLC.
Up to the date a letter was sent to Mr. Gariboldi, the disputed domain name resolved to “www.demison.com”, which is the main web site of Consultora Demison, S.A., as it had been happening for 13 years.
There are no grounds to argue on the disputed domain name being a generic word, since it is a deliberate and intentional registration of a competitor’s trademark, which has been echoed by numerous UDRP panel decisions.
Respondent registered the dispute domain name being fully conscious that it was appropriating another’s distinctive sign and that the adoption of the disputed domain name will prevent Complainant from obtaining its registration, with the sole purpose of disturbing the commercial activity of a competitor.
The disputed domain name has been registered and is used in bad faith.
Taking into consideration that Respondent has a family relationship with Complainant’s main competitor in Argentina, it is impossible it was not aware of the existence of said company at the time of the registration of the disputed domain name, which is confirmed by the fact that the disputed domain name redirected to the web site of Consultora Demison, S.A. “www.demison.com”.
Respondent cannot claim the generic character which in principle the name “proactiva” may have, because it was already established as a trademark of Complainant at the time Respondent obtained the registration of the disputed domain name.
Respondent maintains the disputed domain name, but now it simply reflects basic information about its holder company, Proactiva Trading, LLC, and has ceased to redirect to the web site of Consultora Demison, S.A.
It is clear Mr. Gariboldi’s intention of preventing Complainant from legitimately accessing ownership of the disputed domain name and, in that way, disturbing its commercial activity.
The holding of the disputed domain name by Respondent unlawfully obstructs Complainant’s access to Internet under its own trademark.
Internet users searching for the trademark or web site of Complainant, writing in their browsers the disputed domain name, were redirected to the Complainant’s competitor’s website “www.demison.com” or currently face information on a company in the beverage sector, which necessarily caused them or now cause confusion, because they could think that the website belonged or belongs to Complainant or that it was or is associated with or otherwise sponsored or supported by Complainant.
All such circumstances evidence the registration and use of the disputed domain name in bad faith.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent’s assertions may be summarized as follows:
Respondent states that Complainant asserts prior rights to “proactiva” by relying on the alleged registration of Complainant as a corporate entity in Madrid in 1996. Merely registering a corporate name does not confer any trademark rights. The name of a business will not be considered a trademark or service mark unless registered or used as such. Complainant’s own website states that Complainant began operating in 1999. By that time, Respondent had already (i) selected the name “proactiva” (May 1998), (ii) registered Proactiva Trading LLC as an entity with the State of Florida (July 1998) and (iii) registered the disputed domain name (August 1998.)
Further, a Google search does not reveal any news, stories or references to “Proactiva Medio Ambiente” prior to January 2000, and Complainant’s registration of the domain name <proactiva.es> until January 2000.
Complainant references ownership of a number of Latin American trademark registrations, none of which appears to have been filed any earlier than 2006. Even where a complainant had secured registered trademarks, the underlying trademark may be held descriptive and thus unenforceable for purposes of the UDRP.
The weak nature of the term “proactiva” is further evidenced by the common third-party use of the term in connection with a wide variety of goods and services. For example, a preliminary search for businesses utilizing the term “proactiva” that was strictly limited to the geographic bounds of Spain revealed numerous third parties that use or have used this laudatory term as a trade name. Additionally, Complainant is among other entities having registered domain names incorporating the solitary term “proactiva”, i.e.<proactiva.ca>. Accordingly, while Complainant may have established rights to the overall phrase “Proactiva Medio Ambiente”, the extent of this third party use evidences the weak nature of the term “proactiva” and undermines any claim by Complainant that it has established exclusive rights in, let alone become famous under said solitary term. Consequently, it is unlikely that consumer confusion would occur.
A review of the relevant facts also shows that Respondent has rights to and/or legitimate interests in the disputed domain name. The relevant facts irrefutably demonstrates that Respondent used “proactiva” in connection with a bona fide offering of products prior to receiving notice of this dispute and, significantly, prior to Complainant’s own use of the term “proactiva”.
Respondent took a number of steps to begin utilizing “proactiva” in connection with the importation and distribution of wine, including: (i) registering Proactiva Trading LLC as an entity with the State of Florida in July 1998, (ii) registering the disputed domain name in August 1998, (iii) recording surety bond with the Florida Division of Alcoholic Beverages in October 1998, and (iv) registering alcohol importation and distribution licenses with the Federal Bureau of Alcohol Tobacco and Firearms and the State of Florida Department of Alcoholic Beverage and Tobacco Regulation in March 1999.
By 1999, Respondent was marketing and promoting wine under the “proactiva” name and at that time every bottle of wine imported by Respondent was affixed with a label reading “Proactiva Trading, LLC”.
Respondent’s preparations and first use of “proactiva” in connection with wine importation and sales was made (i) without knowledge of Complainant’s existence or intent to use the term “proactiva”, (ii) prior to Respondent’s receipt of notice of the present dispute in February 2012, and (iii) prior to Complainant’s registration of its domain name <proactiva.es> in January 2000. Furthermore, Complainant’s website states that Complainant did not begin operating until 1999 and a Google search conducted for any news or articles referencing “Proactiva Medio Ambiente” prior to 2000 reveal no results. Thus, the evidence indicates that Respondent’s first trademark use of “proactiva” pre-dated Complainant’s first use of “Proactiva Medio Ambiente” in connection with a bona fide offering of any good and/or services.
Those facts also indicate that Respondent has been, and continues to be, commonly known by the disputed domain name. In certain cases, Respondent’s email address, namely […]@proactiva.com, also appeared on wine labels.
Respondent continues to utilize email addresses associated with the disputed domain name as a primary source of contact in connection with Respondent matters.
There is no indication that Respondent lacks a legitimate interest in the disputed domain name. Any such claim would be undermined by (i) the fact that Respondent’s registration of the disputed domain name pre-dated Complainant’s registration of every domain name or trademark relied upon in the Complaint, and (ii) the non-competitive nature of the goods and services offered by Respondent and Complainant services.
Complainant ceased importing wine in September 2008. Nevertheless, Respondent (i) is continuing to explore future business possibilities, (ii) maintains an active Florida alcohol importers license and (iii) once feasible, intends to resume operations.
Complainant has failed to substantiate any claim that Respondent lacks rights or legitimate interest in utilizing the highly suggestive and diluted term “proactiva”.
There is no indication of bad faith here as Respondent registered the disputed domain name before Complainant could have asserted rights in the PROACTIVA trademark by first using in commerce.
The facts discussed above demonstrate that (i) the disputed domain name was not registered or acquired primarily for the purpose of selling, renting or otherwise transferring it to Complainant or to a competitor of Complainant, for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the disputed domain name, (ii) the disputed domain name was not registered in order to prevent Complainant form reflecting the trademark in a corresponding domain name and, in connection therewith, Respondent has not engaged in a pattern of such conduct, (iii) Complainant and Respondent are not competitors, (iv) the disputed domain name was not registered by Respondent primarily to disrupt Complainant’s business, (v) the disputed domain name was not registered by Respondent in an international attempt to attract for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Complainant relies solely on the fact that the disputed domain name briefly, in May 2011, redirected to “www.demison.com”,, website belonging to Consultora Demison, S.A., an Argentina-based company in which Respondent’s father has an ownership stake. Initially, it bears nothing that this redirection occurred in May 2011, since it was done without bad-faith and was removed immediately following receipt of the correspondence from Complainant.
Complainant relies exclusively on conclusory statements and provides no evidence or facts to support its contention that Consultora Demison, S.A. and Complainant are competitors or that consumer confusion occurred or was likely. In fact, these companies offer services travelling in separate trade channels and Respondent is unaware of a single instance in which these two companies have competed for a contract/customer.
Respondent requests the remedies requested by Complainant be rejected.
6. Discussion and Findings
The burden for Complainant, under paragraph 4(a) of the Policy, is to show:2 (i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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
It is clear to this Panel that Complainant has rights in the trademark PROACTIVA.
Since the addition of a generic top-level domain (gTLD) such as “.com” after a domain name is technically required, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark.
The disputed domain name entirely incorporates the word “proactiva” without any other element.
This Panel considers that, for purposes of a finding under paragraph 4(a)(i) of the Policy, it is irrelevant whether (i) Complainant’s rights over a trademark arose out after registration of the disputed domain name3 and (ii) Complainant’s registered trademark might seem weak or descriptive.
Therefore, this Panel finds that the disputed domain name is identical to Complainant’s trademark.
B. Rights or Legitimate Interests
Complainant has alleged that Respondent lacks any rights or legitimate interests in respect of the disputed domain name.
Complainant suggests that Respondent selected both the corporate name of Proactiva Trading LLC and the disputed domain name bearing in mind Complainant’s own name.
Respondent has established that Proactiva Trading LLC was formed in July 1998 and the disputed domain name was created in August 1998. Notwithstanding that Complainant asserts that since 1996 it is recorded under such name in the Commerce Registry of Madrid, Spain, Respondent argues that Complainant’s website at <proactiva.es> clearly states that Complainant started activities under its current name in 1999. There is no evidence in the record showing that Complainant was well known under its corporate name, Proactiva Medio Ambiente, during the period of 1996-1998 in Spain and/or other countries, but the opposite may be inferred from the Google search attached to the Response.
The record shows Complainant obtained registration of its trademark PROACTIVA in several South American countries in 2009, but there is no evidence showing that Complainant has in fact used the trademark PROACTIVA between 1996 and 1998, and that during that period PROACTIVA had become a well known trademark to clearly identify Complainant’s products or services in Spain and/or other countries.
The word “proactiva” is not a coined word but rather a common dictionary word. Furthermore, Respondent produced Internet search results at “www.axesor.es” showing several companies in Spain whose corporate names include the word “proactiva”.
In the present circumstances, it is groundless for this Panel to consider that the disputed domain name consisting of a dictionary word was selected with the intention of exploiting its value as a trademark owned by someone else where at the time the disputed domain name was created Complainant had not obtained (not even applied for) registration of any PROACTIVA trademark.
Complainant relies on the fact that in May 2011, the website associated to the disputed domain name was redirected to the web site of Consultora Demison, S.A., and contends that the latter is its competitor in Argentina. Complainant further contends that such redirection took place for 13 years, without providing any evidence thereof.
It is undisputed that Respondent is held by the son of a shareholder of Consultora Demison, S.A. However, nothing in the record supports Complainant’s allegation that back in 1998 Respondent’s holder (Mr. Gariboldi, either the son or the father) were aware of Complainant’s existence. Further, Respondent rejects that Complainant and Consultora Demison, S.A. are competitors, stating that it is unaware that such two companies have competed for a contract or customer. Unfortunately, Complainant did not submit any conclusive evidence supporting its allegations.
In the case at hand, Respondent has presented evidence showing that it is an entity formed in 1998, whose full name is Proactiva Trading LLC, at which year the disputed domain name was also created, that it conducted some import-wine related business activities under that name, and that it uses the disputed domain name for email addresses. Paragraph 4(c)(ii) of the Rules clearly establishes that Respondent may have a right or legitimate interest where it (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if having acquired no trademark or service mark rights over such name.
On the overall, this Panel considers that Complainant has not established that Respondent lacks rights or legitimate interests in the disputed domain name, but rather the opposite may in fact be concluded from the documentation that is on the present record.
Therefore, this Panel finds that Complainant failed under paragraph 4(a)(ii) of the Policy.
Given the aforesaid, this Panel considers unnecessary to discuss whether Complainant might have succeeded under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Complaint is denied.
Dated: March 30, 2012
1 See Red Nacional de Ferrocarriles Españoles v. Jesús Hidalgo Álvarez, WIPO Case No. D2000-1025: “The language of the proceeding is English, as being the language of the domain registration and service Agreement [...] and to the fact that there is no express agreement to the contrary by the parties. Furthermore, in order to procure for the parties a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases, and that the both parties be treated with equality in these administrative proceedings, the Panelist has agreed to receive and consider all writs, information and documents submitted also in the Spanish language”.
2 See Koninklijke Philips Electronics N.V. v. Relson Limited, WIPO Case No. DWS2001-0003: “Each of the three stated elements are made up of a number of facts, each of which has to be proven in order for the Complainant to succeed [...] Facts are proven through evidence [...] Mere “assertions” are nothing more than argument and must in each case be based on facts proved through evidence”.
4 See Ken’s Foods Inc. v. kens.com, WIPO Case No. D2005-0721, H & R Johnson Tiles Limited v. Cristal Ceramicas S.A., WIPO Case No. D2004-0432, and Windsor Fashions, Inc. v. Windsor Software Corporation, WIPO Case No. D2002-0839.