WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dextra Asia Co., Ltd. v. Lakeside Enterprises Limited
Case No. D2012-0403
1. The Parties
The Complainant is Dextra Asia Co., Ltd. of Bangkok, Thailand, represented by Cabinet Germain&Maureau, France.
The Respondent is Lakeside Enterprises Limited of Victoria, Mahe, Seychelles, represented internally.
2. The Domain Name and Registrar
The Disputed Domain Name <dextra.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 29, 2012. On February 29, 2012, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On February 29, 2012, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Disputed Domain Name. 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 March 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2012. The Response was filed with the Center on March 12, 2012.
The Center appointed Alistair Payne, Francine Tan and Tony Willoughby as panelists in this matter on April 11, 2012. 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 is Dextra Asia Co., Ltd, a Thailand based corporation and a subsidiary of the Dextra Group, which has operated as a manufacturer and supplier of construction products and equipment since 1983. The Dextra Group operates mainly in the region of Asia-Oceania, but also in the Middle East, Africa, America and Europe and employs 900 people worldwide. The Complainant owns various trade mark registrations which feature the DEXTRA trademark, in particular United States Trademark Registration No. 3,640,656 for the word mark DEXTRA dating from January 2009. The Complainant also owns a range of domain names incorporating the DEXTRA mark including, in particular, <dextragroup.com>, <dextraasia.com>, <dextrachina.com> and <dextrapower.com>.
The Respondent, based in the Seychelles, seems to have registered the Disputed Domain Name on September 15, 2008.
5. Parties’ Contentions
The Complainant asserts that it has registered trade mark rights in the word comprising the dominant portion of the Disputed Domain Name. The Complainant states that it has obtained a significant degree of renown as a consequence of use of its trade mark in the course of the Dextra group’s 5000 projects throughout the world since 1983. The Complainant says that the Disputed Domain Name is identical to its DEXTRA mark.
As far as rights or legitimate interests are concerned the Complainant submits that the Respondent is not legally or economically related to the Complainant and has never been authorized by the Complainant to use or register its DEXTRA mark. It says that there is no evidence of the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or the DEXTRA mark in connection with a bona fide offering of goods or services. The Complainant says that in re-directing the Disputed Domain Name to a parking page of sponsored links, for the purpose of commercial gain the Respondent is not making any legitimate non-commercial or fair use of the Disputed Domain Name.
The Complainant submits that although the Respondent’s activity, making mass speculative domain name registrations and re-directing them to parking pages with sponsored links, is not illegitimate per se, it amounts to cybersquatting when it involves registering a domain name that is identical to a third party’s registered trademark. In this regard the Complainant says that the Respondent appears to be located in the Seychelles Islands, which is a geographical area in which the Complainant has been operating under the name DEXTRA for almost 30 years, and therefore it is reasonable to assume that the Respondent was not unaware of the Complainant’s business and rights in the trademark DEXTRA. Essentially, the Complainant’s submission is that the Respondent registered and is using the Disputed Domain Name to mislead visitors and to profit from confused visitors looking for the official website of the Complainant.
In addition the Complainant says that one of the sponsored links displayed on the parking page to which the Disputed Domain Name resolves is to the web site of a British company “Dextra UK”, which is involved in the development of carbohydrates. The Complainant says that to the extent that this causes confusion to Dextra UK’s customers, it is also evidence that the Respondent is using the Disputed Domain Name intentionally to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website.
The Respondent submits that "dextra" is a dictionary word, meaning "right" or "favourable" and is in common usage. It says that for various reasons the Complainant has no trade mark rights in the DEXTRA mark for the purposes of the Policy.
As a word or mark in common usage (here, the Respondent points to numerous domain names not owned by the Complainant that incorporate the word “dextra” as well as the many thousands of search engine hits for the word), the Respondent says that the principle of “first come first served” operates and that the first registrant is legitimately entitled to seek registration of the common term as a domain name. The Respondent says that using the Disputed Domain Name, since its registration, in connection with a website that posts advertising links is a bona fide offering of goods and services. The links displayed on the website associated with the Disputed Domain Name are generic links of common interest, or are descriptive of the nature of the term "dextra", and are randomly rotated. It submits that the Complainant has not met its burden under this element of the Policy of making out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
As far as bad faith is concerned, the Respondent submits that it registered the Disputed Domain Name in good faith on the basis that “dextra” was a generic word and in common usage.
The Respondent further says that the only evidence that the Complainant provides of bad faith in registering the Disputed Domain Name is its suggestion that:
"[T]he Respondent appears to be located in Seychelles which is a geographical area where the Complainant has been operating under the name DEXTRA for almost 30 years. One may therefore reasonably assume that the Respondent could not be unaware of the Complainant’s business and rights in the trademark DEXTRA".
The Respondent admits that it is located in the Seychelles but says that it is clear that the Complainant is not located in the -Seychelles as it is in fact located in Thailand. Nor, says the Respondent, does the Complainant have any subsidiaries in Seychelles, as is clearly shown on Complainant's website. In addition, the Respondent submits that the Complainant was not operating in Africa (the geographical region of the Seychelles) at the date of registration of the Disputed Domain Name. The Respondent notes that currently the Complainant only appears to operate in Africa in South Africa and in Algeria and operations in both countries, based on its investigations, appear to have commenced subsequently to registration of the Disputed Domain Name. The Respondent submits that the Complainant understands this perfectly and that it invented the questionable concept of "operating in the same geographical area" purely for the purposes of bringing this Complaint.
In summary, the Respondent says that it registered the Disputed Domain Name without knowledge of the Complainant, and that at the time of registration it and its directors were not aware of the Complainant’s use of the DEXTRA mark in the United Arab Emirates, Thailand, Singapore, India or Hong Kong. As at that time the Complainant had not yet made a first use in trade of its mark in the United States and had not commenced business in Africa, the Respondent says that it was not and could not have been aware of use in those territories either.
As far as use in bad faith is concerned, the Respondent says that its website is set to post generic links of common interest together with the links generated using the descriptive nature of the term "dextra". All these links are therefore unrelated to the Complainant’s business and none of them lead Internet users to businesses that compete with the Complainant’s specialised construction goods business or professional industry customer base. There is not and cannot be Internet user confusion and therefore there is no support for the Complainant’s argument that there is confusion under paragraph 4(b) (iv) of the Policy.
Further the Respondent says that for 3.5 years the Complainant took no issue with the Respondent’s ownership and use of the Disputed Domain Name. Had there been any wrongdoing, the Complainant arguably would have objected much earlier. This is indicative that the Complainant does not really believe that the Respondent has acted in bad faith.
The Respondent seeks a finding of reverse domain name hijacking on the basis that there is no evidence that the Respondent sought to target the Complainant’s mark or such as would reasonably support a finding under the second or third elements of the Policy. In addition the Respondent submits that the Complainant falsely concocted its claim of use in the Respondent’s geographical area in order to try and support its claim.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant owns a United States Trade Mark Registration No. 3,640,656 for the word mark DEXTRA dating from January 2009. The Panel notes that contrary to the Respondent's contentions, for the purposes of paragraph 4(a)(i) of the Policy the date of acquisition of those rights is irrelevant, provided that they were acquired prior to the date of the Complaint. Further, the Complainant’s DEXTRA word mark is identical to the substantive term “dextra” in the Disputed Domain Name.
Therefore the Panel finds that the Complainant has trade mark rights in a mark which is identical to the Disputed Domain Name and the Complaint succeeds under this element of the Policy.
B. Rights or Legitimate Interests
For the reasons set out below under “bad faith” the Panel finds it unnecessary to consider the second element of the Policy in this case.
C. Registered and Used in Bad Faith
The Panel accepts the Respondent’s submission that the word “dextra” is a known word and in common use on the Internet. However, this does not mean that the Complainant does not have rights in its DEXTRA mark that it is entitled to protect under the Policy. The key determinant under this element of the Policy is whether or not the Respondent has sought to target the Complainant’s DEXTRA mark by registering and subsequently using the identical Disputed Domain Name in bad faith.
The Respondent is based in the Seychelles Islands. It maintains that in September 2008 it was unaware of the Complainant’s mark or business as, in particular, the Complainant does not operate in the Seychelles and only commenced operations in 2 countries in the African region after the date of registration of the Disputed Domain Name.
The Panel notes that the Complainant operates as a manufacturer and supplier of construction products from its base in Thailand. It also appears to trade in other Asian countries and in the Middle East and had done so for some time prior to the date of registration of the Disputed Domain Name in 2008. It is notable that there is no evidence before the Panel of the Complainant trading in the Seychelles or that the Complainant’s DEXTRA mark has such renown that it is likely to be known in geographical areas other than those in which the Complainant is actively operating its construction product business. In short the Panel does not accept the Complainant’s bald assertion that it has been operating under the name DEXTRA for almost 30 years in a “geographical area” which can fairly be said to include the Seychelles. The Complainant has put before the Panel no evidence to support that assertion.
There appears to be no other reason why the Respondent should have known of the Complainant’s business and DEXTRA mark. The Respondent does not operate in a competing field. Also, it appears from the Respondent’s evidence that the Complainant admitted in a submission to the United States Patent and Trademark Office in connection with its United States trade mark registration for DEXTRA, that its business and products were not to be marketed to the general public, but were targeted at a specialised client base in the construction sector. On this basis the Panel sees no reason why the Respondent should have known of the DEXTRA mark at the date of registration of the Disputed Domain Name.
The Respondent’s use of the Disputed Domain Name for a website that offers “generic links of common interest” and links generated using the descriptive nature of the term "dextra" is perfectly legitimate. None of the links appear to the Panel to be related to the Complainant’s business or aimed at targeting or trading off its specialised construction products business. In these circumstances it is very difficult to see how the Complainant can allege that the website creates Internet user confusion, or that there is anything illegitimate about the Respondent's online service offering. In short the Panel finds that there is no evidence of bad faith such as would support the Complainant’s case under this element of the Policy.
The Panel’s view is only reinforced by the e-mail communication which the Complainant sent to the Respondent in December 2011, more than 3 years after registration of the Disputed Domain Name. In that communication the Complainant indicated that, “my company is very interested in acquiring the domain name…As we wish to take ownership of the domain name. This is a final offer from our side.” There was no mention of protecting the Complainant’s trade mark or of confusion arising from the Respondent’s use of the Disputed Domain Name. Nor did the e-mail make any allegation of bad faith registration or use by the Respondent.
Accordingly, the Panel finds that the Complaint fails under the third element of the Policy.
D. Reverse Domain Name Hijacking
Overall, it appears to the Panel that the Complainant has simply embarked on a course to obtain the Disputed Domain Name, if not by negotiation, then by launching this Complaint, but knowing that there was no real prospect of being able to demonstrate registration and use in bad faith. In this regard the Panel finds support for its view in the Complainant’s wholly unsupported and, at best, disingenuous submission that it has been operating under the name DEXTRA for almost 30 years in the “geographical area” of the Seychelles Islands. This submission was the sole basis for the Complainant’s allegations of bad faith registration and use. The Panel is in this instance prepared to make a finding of reverse domain name hijacking.
For all the foregoing reasons, the Complaint is denied.
Dated: April 19, 2012