WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inventa-Agentes Procuradores de Marcas e Patentes Lda., Inventa Agência Angolana de Marcas e Patentes Lda., Inventa International Spain -Trademarks and Patents Consultants, S.L., Inventa International, Lda., Inventa - Agentes Procuradores de Marcas e Patentes Lda - Sucursal de Macau, Inventa Mozambique, Limitada, Inventa International - São Tomé e Príncipe, Limitada v. Inventa Technologies, Inc.
Case No. D2012-1701
1. The Parties
The Complainants are Inventa-Agentes Procuradores de Marcas e Patentes Lda. of Lisbon, Portugal; Inventa Agência Angolana de Marcas e Patentes Lda. of Luanda, Angola; Inventa International Spain - Trademarks and Patents Consultants, S.L. of Madrid, Spain; Inventa International, Lda. of Santiago Island, Cape Verde; Inventa - Agentes Procuradores de Marcas e Patentes Lda - Sucursal de Macau of Macau, China; Inventa Mozambique, Limitada of Maputo, Mozambique; and Inventa International - São Tomé e Príncipe, Limitada of San Tomé, San Tomé and Príncipe, represented by Carlos Eugénio Reis Nobre, Portugal.
The Respondent is Inventa Technologies, Inc. of Mount Laurel, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <inventa.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 24, 2012. On August 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 2012, the Registrar 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 August 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2012.
The Center appointed Luca Barbero as the sole panelist in this matter on October 8, 2012. 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 Complainants, Inventa-Agentes Procuradores de Marcas e Patentes Lda. (hereinafter, Inventa Portugal), Inventa Agência Angolana de Marcas e Patentes Lda. (hereinafter, Inventa Angola), Inventa International Spain -Trademarks and Patents Consultants, S.L. (hereinafter, Inventa Spain), Inventa International, Lda. (hereinafter, Inventa Cape Verde), Inventa - Agentes Procuradores de Marcas e Patentes Lda. - Sucursal de Macau (hereinafter, Inventa Macao), Inventa Mozambique, Limitada. (hereinafter, Inventa Mozambique) and Inventa International - São Tomé e Príncipe, Limitada. (hereinafter, Inventa Sao Tome & Principe) render Intellectual Property services worldwide and jointly compose the Inventa International Group.
The Complainants were incorporated as private limited companies as follows (as per business registration certificates and other official documents attached to the Complaint):
Inventa Portugal was incorporated on July 7, 1971;
Inventa Angola was incorporated on April 20, 1972;
Inventa Spain was incorporated on November 13, 2001;
Inventa Cape Verde was incorporated on December 1st, 2009;
Inventa Macao was incorporated on the January 10, 2001;
Inventa Mozambique was incorporated on June 26, 1999;
Inventa Sao Tome & Principe was incorporated on June 24, 2005.
The Complainant Inventa Portugal is the owner of several trademark registrations constituted of or comprising INVENTA, including the following, which have all been granted and duly renewed:
- Portuguese Trademark Registration No. 321104 for INVENTA (word and device), filed on December 30, 1996, in class 42;
- Portuguese Trademark Registration No. 343861 for INVENTA INTERNATIONAL (word and device), filed on February 18, 2000, in class 35;
- South African Trademark Registration No. 2001/00886 for INVENTA (word and device), filed on January 18, 2001, in class 42;
- Andorra Trademark Registration No. 25900 for INVENTA (word and device), filed on March 28, 2008, in class 45;
- Portuguese Trademark Registration No. 440575 for INVENTA INTERNATIONAL (word and device), filed on March 29, 2007, in class 45;
- Macau Trademark Registration No. N/41379 for INVENTA INTERNATIONAL (word and device), filed on February 12, 2009, in class 45;
- Chinese Trademark Registration No 7216166 for INVENTA INTERNATIONAL (word and device), filed on February 24, 2009, in class 45.
Inventa Portugal was also the owner of lapsed trademark registrations for INVENTA (word mark), such as the Portuguese Trademark Registration Nos. 169927, filed on July 1, 1971, in class 16, and 294667, filed on September 16,1993 in class 35.
The Complainant Inventa Spain is the owner of the following trademark registrations:
- Portuguese Trademark Registration No. 57258 for INVENTA INTERNACIONAL (word mark), filed on July 9, 2001, in class 42;
- United States Trademark Registration No. 3794585 for INVENTA INTERNATIONAL (word and device), filed on March 26, 2009, in class 45;
- Community Trademark Registration No. 10529782 for INVENTA INTERNATIONAL (word and device), filed on December 28, 2011, in classes 35, 41 and 45.
The Complainant Inventa Macao is the owner of the Hong Kong Trademark Registration No. 2000B11848 for INVENTA (word and device), filed on May 13,1999.
The Complainant Inventa Sao Tome & Principe is the owner of the Sao Tome and Principe Trademark Registration No. 492 for INVENTA (word mark), published in 2005, in class 42.
The Complainants are also the owners of the following domain names constituted of or comprising INVENTA:
<inventa.pt> and <inventanews.info>, registered by Inventa Portugal;
<inventa.co.za>, <inventadomains.com>, <inventa-internacional.com>, <inventa-international.com>, <inventaip.com>, <myinventa.com>, <inventa.tl>, registered by Inventa Spain;
<inventa.co.ao>, registered by Inventa Angola;
<inventa.cv>, registered by Inventa Cape Verde;
<inventa.co.mz>, registered by Inventa Mozambique;
<inventa.com.mo>, registered by Inventa Macao.
The disputed domain name <inventa.com> was registered on February 1, 1995 and, at the time of the drafting of the decision, is not redirected to an active website.
5. Parties’ Contentions
The Complainants contend that they are widely recognized within the field of Intellectual Property (having clients originating from the five continents) and are known by the INVENTA trade name and mark since approximately 40 years.
The Complainants assert that INVENTA has been generally known in the appropriate business or consumers circles worldwide as a sign (trade name and mark) of the Inventa International Group and, consequently, of the Complainant’s Intellectual Property services. The Complainants highlight that, despite the fact that a trade name is the designation adopted by a commercial enterprise to describe itself and to distinguish itself from other businesses and enterprises, it may also be separately protected as a trade mark or service mark, if the trade name is sufficiently used to identify goods or services. Accordingly, the Complainants conclude that they have trademark rights in the word “inventa” as a result of their use of INVENTA for purposes of identifying rendered services since 1971 and of the substantive and valuable goodwill acquired in the unregistered mark INVENTA.
The Complainants underline that unregistered trademarks based in civil law jurisdictions may be protected under the Policy where the following requirements are met:
a) proof of the establishment of a secondary meaning in respect of the mark in question, which can be proved by i) demonstrating substantial use in the course of trade of the mark in question over a reasonable period (e.g. by producing details of sales and advertising expenditure and samples of one's business literature, advertisements etc.) and (ii) producing evidence of third party use of the trade mark to identify the trade mark claimant's goods or services (e.g. correspondence from suppliers/customers, press cuttings etc.);
ii) proof of a method by which it is possible to protect an unregistered trademarks in a civil law jurisdiction, achieving a result comparable to that available under an action for passing off by way of an unfair competition action, provided that they could prove a reputation and goodwill in respect of the mark, the deceptive activity of the defendant and the likelihood of damage.
To demonstrate requirement a) mentioned above, the Complainants submitted correspondence, debit notes and receipts from and to suppliers and customers - which are multinational renowned corporations - showing that they have been using the trade name and trademark INVENTA in connection with their services at least as of 1978.
With reference to requirement b), the Complainants conclude that they have established unregistered mark rights in INVENTA since 1971 for purposes of paragraph 4(a)(i) of the Policy by virtue of the (i) continuous use (ii) public use and association of the mark to refer to the services provided by the Complainants and (iii) Complainants’ efforts to protect their rights in the mark.
Furthermore, the Complainants contend that, besides their unregistered trademark rights, they also established registered trademarks rights for INVENTA. The Complainants highlight that the oldest of their registered trademark INVENTA (word mark) dates back to the July 1, 1971 and that since then, the Complainants have registered other trademarks and have allowed some trademarks to lapse due to rebrandings of their corporate image. The Complainants underline that, notwithstanding the above, the mark INVENTA has been used continuously by the Complainants since 1971.
The Complainants contend that the disputed domain name is confusingly similar to the mark INVENTA in which they have exclusive rights.
Regarding the Respondent’s lack of rights or legitimate interests in the disputed domain name, the Complainants states that:
i) the Respondent is not a company controlled by the Complainants or an authorized licensee nor is he authorized to use the Complainant’s mark to identify its services or products and the Complainants have not permitted the Respondent to apply for use of any domain name incorporating the INVENTA mark;
ii) the Respondent’s related intellectual property right (U.S.A. trademark no. 2113928 for INVENTA) has lapsed as of August 28, 2008, as per the information provided by the United States Patents and Trademark Office;
iii) the Respondent is no longer organized as a corporation since Inventa Technologies, Inc. is void as of January 3, 2010, according to the Certificate of Status issued by the Division of Corporations of the State of Delaware provided as Annex to the Complaint and, as such, the Respondent’s trade name is no longer registered;
iv) regardless of the “first come, first served” rule, once the Complainants establish a prima facie case under paragraph 4(a)(ii) of the Policy, the Respondent must come forward with evidence of rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy;
v) according to the Wayback Machine of the Internet Achive, the last activity registered in connection to the webpage www.inventa.com dates back to the February 2nd, 2011, and the non use of the disputed domain name evidences lack of rights or legitimate interests in it.
With reference to the circumstances evidencing bad faith, the Complainants remark that bad faith is defined in Black’s Law Dictionary 7th Edition as “dishonesty of belief or purpose” and assert the dishonesty of the Respondent’s purpose inherent to the conscious doing of an incorrect conduct, i.e., bad faith, regarding both the registration and use of the disputed domain name.
In particular, the Complainants contend that the disputed domain name was renewed in bad faith, stating that:
i) the Respondent's last renewal of the disputed domain name is to be the date on which to determine if the disputed domain name was registered and used in bad faith for purposes of paragraph 4(a)(iii) of the UDRP. This conclusion should be supported by Paragraph 2 of the UDRP which does not differentiate between the initial date of registration and subsequent requests for renewal;
ii) the Respondent's last renewal of the disputed domain name occurred between June and July 2009;
iii) the fact that the Complainants had not applied to register the mark INVENTA in the United States of America from where the Respondent conducts its business is irrelevant, due to the fact that the essence of the Internet is its worldwide access and, as such, contemplation of the ownership of domain name registrations cannot be restricted to comparisons with trademark registrations or other rights in the jurisdictions where the Respondent's web site is hosted. Therefore, it should be pertinent to contemplate the effects of a domain name registration and use in connection to the use of identical and confusingly similar trademarks in other jurisdictions. Furthermore, reputation in unregistered marks has been, in some Panel's opinions, adequate to establish trademark rights for the purpose of the UDRP;
iv) the disputed domain name was registered for a dishonest purpose which is the wasting of the Internet since the website is being passively held;
v) at the time of the disputed domain name’s last renewal, the Respondent was no longer interested in “maintaining valid its connections to” INVENTA as business identifier, as it allowed both its trademark and trade name (and corresponding legal personality) to become ineffective.
As to the use of the disputed domain name, the Complainants highlight that the last activity registered in connection with the web page “www.inventa.com” dates back to the February 2011 and states that, since the disputed domain name is not currently used, the Respondent is not interested in preserving or effectively using the disputed domain name either for lodging a webpage (and offer goods or services) or as a business identifier. The Complainants conclude that the Respondent’s passive holding of <inventa.com> amounts to bad faith. The Complainants also stress that the disputed domain name “is of essential significance to the Complainants”, for example for purposes of communication between the Complainant’s themselves and with clients and official institutes, and that domain names constitute a valuable resource offered for free to the global community and, therefore, must not be wasted in a frivolous manner such as the passive holding of a domain without actively using it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainants have rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainants have trademark rights for INVENTA. This conclusion is supported by:
i) the Complainants’ trademark registrations constituted by INVENTA with the addition of device elements and/or the descriptive words as “International” and “Internacional” (listed in the factual sections), where the core of the trademarks is constituted by the sign INVENTA. See, among others, Ternana Calcio S.p.A. v. Domain Reseller Consulting Inc., WIPO Case No. D2003-0137 (<ternana.com>), finding that the complainant had established rights in a device mark where the word “Ternana” was found to be the most prominent and substantial component, since the device elements were found not sufficiently distinctive to prevent consumer confusion arising from the identity of the two words. See also the following decisions, where the addition of the geographical identifier “international” to a trademark was not found sufficient to eliminate the similarity between the Complainant's marks and the domain name because it was found merely generic: HSBC Holding, plc. v. c/o HSBCINTERNATIONAL.COM / Juanita Saya / Abby Holdings, WIPO Case No. D2009-1001, F. Hoffmann-La Roche AG v. Clear Foto, WIPO Case No. D2009-0501; Shaw Industries Group Inc. Columbia Insurance Company v. Adminstrator, Domain, WIPO Case No. D2007-0583;
ii) the documents submitted by the Complainants, that demonstrate their substantial use in the course of trade of INVENTA to identify the intellectual property services provided, from 1978 to present, by the Complainants to companies located in various countries of the world. Such documents include correspondence from and to suppliers, customers and debit notes and receipts from and to suppliers and customers (see, e.g., Thomas Pick aka Pick Inc. v. EUROPREMIUM LTD, Elaine Maria Gross, WIPO Case No. D2008-1010, <bs.com>, summarizing the common methods used to prove that one has established secondary meaning in respect of a particular trade mark: “(i) to demonstrate substantial use in the course of trade of the trade mark in question over a reasonable period (e.g. by producing details of sales and advertising expenditure and samples of one's business literature, advertisements etc.); and (ii) to produce evidence of third party use of the trade mark to identify the trade mark claimant's goods or services (e.g. correspondence from suppliers/customers, press cuttings etc.)”).
In light of the above, the Panel finds that the Complainants have proven the condition under paragraph 4(a)(i) of the Policy, requiring that the disputed domain name registered by the Respondent be identical or confusingly similar to a trademark or a service mark in which the Complainants have rights.
B. Rights or Legitimate Interests
It is well-established that the burden of proving that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies on the Complainants. However, satisfying this burden of proof according to paragraph 4(a) (ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainants show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).
In the present case, the Respondent, by not submitting a Response, has not rebutted the Complainants’ contentions. The Panel, however, is required to evaluate the Complainants’ submissions to ascertain whether the Respondent’s lack of rights or legitimate interest has been demonstrated on a prima facie basis.
The Complainants stated that the Respondent is not a company controlled by the Complainants or their authorized licensee, that it is not authorized to use the Complainant’s mark to identify its services or products and that the Complainants have not permitted the Respondent to apply for use of any domain name incorporating the INVENTA mark.
However, according to paragraph 4(c)(ii) of the Policy, a party may demonstrate rights or legitimate interests in a domain name as a consequence of having been commonly known by the domain name. As stated in previous decisions (See, i.a., Chemical Works of Gedeon Richter Plc v. Covex Farma S.L., WIPO Case No. D2008-1379, <cavinton.com>), it is reasonable to presume that a party owning rights in a trademark has been known by the trademark, and, consequently, by an identical domain name.
While panelists have tended to recognize that a respondent's registration of a trademark which corresponds to a disputed domain name normally will establish respondent’s rights or legitimate interests in that domain name, it has been declined to find respondent’s rights or legitimate interests in a domain name on the basis of a corresponding trademark registration in circumstances indicating that such trademark was obtained primarily to circumvent the application of the UDRP, such as when the registrant was seeking to take unfair advantage of the owner of previously existing trademark rights. See WIPO panelists WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") and, among others, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847
In the case at hand, the Complainants submitted evidence showing that the Respondent owned a registered trademark INVENTA in the United States, filed on October 10, 1996, for computer consulting and systems integration services in the information technologies field. The Respondent is also the owner of a registered company named Inventa Technologies, incorporated in 2000 and which has been put in the “void” status at the beginning of 2010.
In addition, the screenshots of the website that was published at the disputed domain name show that <inventa.com> was actively used, since 1996 to – at least - February 2011 (date of the last screenshot available on “www.archive.org”), to promote the Respondent’s business and services in the technology field, such as database migrations, remote administration/DBA services and remote infrastructure management.
The Panel has taken note of the fact that the Respondent’s trademark registration has lapsed and that the Respondent’s company was put in the “void” status on January 2010. However, in light of the Respondent’s previous rights in the trademark INVENTA and of the active use of <inventa.com> to promote the Respondent’s activity, at least until February 2011, the Panel finds that the Respondent has been commonly known by the disputed domain name. Moreover, the Panel finds that the disputed domain name has been used in connection with a bona fide offer of services without prima facie intent to misleadingly divert the Complainants’ clients, for commercial gain, or to tarnish the Complainants’ trademark, since the Respondent did not provide services competing with the Complainants’ ones.
Furthermore, in light of substantial and good faith use of the disputed domain name made by the Respondent to promote its business from 1996 to 2011, the Panel is unable to infer from the lapse of the trademark INVENTA of the Respondent and the current non use of the disputed domain name, that the Respondent has lost its rights to or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
For the reasons detailed below, the Panel also finds that the Complainants failed to demonstrate that the Respondent’s registration and use of the disputed domain name amounts to bad faith.
With particular reference to bad faith registration, the Complainants asserted that it should be assessed at the time of the last renewal of the disputed domain name, dating back to 2009.
The Panel considers that, generally, a mere renewal of a domain name has not been treated by panels as a new registration for the purpose of assessing bad faith. A small number of panels have considered the renewal of a domain name as equivalent to a new registration in certain circumstances, including where it is found that: the registrant changed its use of the domain name prior to renewal; such use amounted to textbook cybersquatting; and the registrant nevertheless proceeded to renew the domain name registration with intent to benefit from its inclusion of the complainant's trademark (see WIPO Overview 2.0).
In the case at hand, the Panel finds that the Complainants failed to demonstrate that the Respondent had the Complainants’ trademark in mind both at the time of the registration and of the renewal of the disputed domain name. Furthermore, the Complainants did not demonstrate that the Respondent registered and used the disputed domain name with the intention to trade on the Complainants’ trademark and reputation. In fact, as mentioned above, the Respondent has used the disputed domain name until the beginning of 2011 to promote its own activity under the trademark INVENTA for services which do not directly compete with the Complainants’ intellectual property services.
For the foregoing reasons, the Complaint is denied.
Dated: October 29, 2012