WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ETH Zürich (Eidgenössische Technische Hochschule Zürich) v. Andre Luiz Silva Rocha, Construtora Norberto Odebrecht S/A
Case No. D2016-0444
1. The Parties
The Complainant is ETH Zürich (Eidgenössische Technische Hochschule Zürich) of Zurich, Switzerland, represented by Schneider Feldmann AG, Switzerland.
The Respondent is Andre Luiz Silva Rocha, Construtora Norberto Odebrecht S/A of Sao Paulo, Brazil, represented by Chiarottino e Nicoletti Advogados, Brazil.
2. The Domain Name and Registrar
The disputed domain name <eth.com> (the "Disputed Domain Name") is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 7, 2016. On March 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 7, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2016. The Response was filed with the Center on March 29, 2016.
The Center appointed Nick J. Gardner as the sole panelist in this matter on April 4, 2016. 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 ETH Zürich (Eidgenössische Technische Hochschule Zürich), also known as the Swiss Federal Institute of Technology, a Swiss Federal university institution based in Zurich and formed under Swiss public law SR 414.1. It is a prestigious European university. It has filed extensive evidence as to its size and reputation, which is not in dispute. It owns a number of trademarks for the term "ETH" the earliest of which is Swiss registration P-526262, registered on June 16, 2004. It does not have any registrations in Brazil where the Respondent is based. It owns the domain name <eth.ch> and a number of other domain names.
The Respondent is a Brazilian company and part of a group known as Construtora Norberto Odebrecht (the "Odebrecht Group") which operates internationally in a number of industrial areas.
The Disputed Domain Name was originally created on March 15, 2001. It is now used to redirect web traffic to a website of the Odebrecht Group.
5. Parties' Contentions
The Complainant says that the Disputed Domain Name is identical to its registered trademark ETH.
It then says that the Respondent has no right or legitimate interest in the term ETH. It says ETH is not the Respondent's name and the Respondent has no authorization from the Complainant to use the term. The Complaint acknowledges that Brazilian trademarks for the term ETH do exist (these are in relation to sugar and were applied for in 2009) and are owned by a company within the Odebrecht Group but says these were registered in bad faith "in order to benefit from the good and well-known reputation of the Complainant's institution".
The Complainant says that the Respondent's registration and use is in bad faith because the Disputed Domain Name is not being used. Attempting to access a website at the Disputed Domain Name redirects to "www.odebrechtagroindustrial.com", the home page of the Odebrecht Group. The Complainant says the Respondent must have been aware of the Complainant and its reputation when in registered the Disputed Domain Name and the registration was intended to take advantage of that fame and reputation. The Complainant acknowledges that at one time there was accompany called ETH Bioenergia Company within the Odebrecht Group but says that company ceased to exist in 2013 and the Respondent has no need of the Disputed Domain Name.
The salient points the Respondent makes are as follows.
The Disputed Domain Name was originally registered for the benefit of a company that became part of the Odebrecht Group called ETH Bioenergia S.A. It was incorporated in 2007, under that name, and since then has regularly done business in the agricultural market, mainly producing ethanol, and owning several sugar cane mills. The company produced two million cubic meters of ethanol in 2015. That company changed its name in 2014 to Odebrecht Agroindustrial S.A. following its becoming part of the Odebrecht Group. However its previous corporate name, abbreviated to ETH, is still a relevant trademark for the Respondent's business, as it is still how the Respondent is known in its industry. It therefore now uses the Disputed Domain Name to redirect to the Odebrecht Group's website.
The Respondent says that the Disputed Domain Name was never registered or acquired with the intention of being sold, leased, or otherwise transferred to the Complainant, to a competitor of the Complainant's or to any third party whatsoever. It says that to the contrary it has maintained and used the Disputed Domain Name since 2007 for the purpose of selling and advertising its products and services, which do not conflict with those of the Complainant in any way. It says that the Complainant and the Respondent are not competitors, one being a university and the other an operating company in Brazil, with worldwide transnational operations, that owns several sugar cane mills to produce mainly ethanol and it is inconceivable that the Disputed Domain Name could have been registered by the Respondent to disrupt the Complainant's business.
6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of the Disputed Domain Name that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The 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
The Complainant has established that it owns a registered trademark in respect of the term ETH. The Panel holds that the Disputed Domain Name is identical to the ETH trademark. It is well established that the specific Top-Level of the domain name (in this case ".com") does not affect the domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. Accordingly the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds there is clear evidence that both (i) and (ii) apply in this case, (iii) does not apply as the Respondent's use has not been noncommercial. The term "ETH" is simply three letters of the alphabet.
The Response is somewhat confusing as to the interrelationship of various companies within the Odebrecht group. It is also not clear to the Panel what the position was in 2001 when the Disputed Domain Name was originally registered, or how (if at all) it was used between 2001 and 2007. However these are points of detail which do not affect the Panel's overall conclusion – fundamentally it is clear that with effect from at least 2007 the Disputed Domain Name has been used by an entity originally called ETH Bioenergia S.A. The Panel does not know why the letters ETH formed a part of its name or what (if anything) those letters may be an acronym for (whether in Portuguese or any other language). However the filed evidence indicates that this entity was a bona fide company that carried out a substantial business in the sugar processing industry and specifically in the production of ethanol. The Panel considers a domain name comprising these letters could readily be independently derived and sees no credible evidence on the record in this case to suggest that was not the case. In any event given that the Disputed Domain Name is composed of three letters it is, as a general rule, more likely that a registrant registered such domain name for entirely unrelated, bona fide purposes. That would seem to be so as a matter of common sense and it is supported by previous UDRP decisions dating from the very beginning of the UDRP.
Thus for example in 2000 in Kis v. Anything.com Ltd., WIPO Case No. D2000-0770 the legitimate interest in short letter domain names was confirmed by that panel's statement that:
"The Domain Name at issue here is a three-letter second-level domain within the popular ".com" top-level domain. All or nearly all of the three-letter names have long been taken; respondent itself holds a number of other short domain names (as reflected in Network Solutions' Whois database), including "an.com", "hw.com", "vz.com", "xv.com", "yz.com", "zw.com, "aex.com", "fii.com", "ldn.com", "lna.com", "mhi.com", "nnc.com", "otl.com", "tbj.com", "tca.com", "ukt.com", "vaz.com", "vdj.com", "wla.com", and probably many more. Respondent appears to have selected the Domain Name "kis.com" because of its length (if not because it represents an acronym for the Korean Information Site), rather than because it corresponds to Complainant's trademark -- indeed, it seems unlikely that Respondent was even aware of Complainant's trademark when it selected the domain name".
In 2002, in Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105 a further panel again held that the complainant had not established the lack of a right or legitimate interest in the acronym in the domain name <lfo.com>, although the complainant had a trademark for LFO.
To the same effect was Banca Monte dei Paschi di Siena S.p.A v. Charles Kirkpatrick, WIPO Case No. D2008-0260 where the panel highlighted the significance of short-letter expressions that have meanings other than those claimed by the complainant by noting:
"The Respondent was at the time of registration, of the view that no one company could claim exclusive rights in MPS because it stood for so many things. From its own searches of the term "MPS", the Panel finds the Respondent's view reasonable".
Specifically with respect to acronyms the panel said:
"The Panel acknowledges that MPS appears to be an extremely common 3-letter combination which can relate to a number of third parties other than the Complainant. MPS is also an acronym for a substantial number of things, including systems, societies, and syndromes".
The Panel accepts that the right to register such acronyms cannot be unlimited. Knowing of a complainant's trademark, registering a domain name to copy the trademark or using it to trade off it or to target the trademark owner or act inappropriately towards it must put the registrant in a different position and put at risk its claim to have a right or legitimate interest in the domain name. But in the absence of such factors, and none are present in this case (as to which see further below) the registrant has as much right as anyone else to use expressions such as acronyms, generic, dictionary words or other domain names made up from a small number of letters.
In this regard the Panel has considered the points made by the Complainant as to its fame and reputation. Whilst the evidence undoubtedly establishes the Complainant is a prestigious university, and show that at least some people in Brazil (particularly academics and actual or potential students of the Complainant) may associate the term ETH with the Complainant, it does not come anywhere close to establishing that the term ETH was so well-known as to mean a third party based in Brazil, and operating in a completely different field, either was or should have been aware of the Complainant and its use of the term ETH. The fact that the Respondent may have been part of a larger group that had various international operations does not alter this analysis. In short there is no applicable evidence on the record to suggest that the Respondent lacked a legitimate interest in adopting the acronym ETH as part of its name.
Accordingly the Complainant has failed to establish that the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
Whilst the Panel's finding under Section 6.B above is sufficient to enable a conclusion to be reached in relation to this Complaint, the Panel also finds that there is no evidence to suggest that the Disputed Domain Name has been registered and used in bad faith. The Complainant and the Respondent are in wholly different areas of activity – one is an academic institution and the other a sugar processing industrial business. It seems fanciful in the extreme to suggest the Respondent chose its name, or the Disputed Domain Name, because of any perceived connection with the Respondent, and the Complainant has not adduced any convincing evidence as to why the Respondent would have done so or what it might have gained from doing so.
The Panel does not accept the Complainant's argument that the Disputed Domain Name is not being used. The redirection of web traffic aimed at the Disputed Domain Name to another website is itself use – whether it is legitimate or not is a different issue. In the present case the redirection following a change of corporate name to a website relating to the new corporate name seems entirely legitimate.
The Panel notes that the Respondent has not explained why the term ETH formed part of the name of ETH Bioenergia S.A., or what those letters might signify. However it is for the Complainant to prove its case. In some circumstances a complainant may adduce sufficient evidence to a0t least raise an inference of bad faith, and hence require the Respondent to produce evidence rebutting that evidence. In the present case the Panel does not consider the Complainant has raised such an inference and hence does not consider the lack of this information from the Respondent is a factor that supports a finding of bad faith registration and use.
Accordingly the Complainant has failed to establish that the third condition of paragraph 4(a) of the Policy has been fulfilled.
For the foregoing reasons, the Complaint is denied.
Nick J. Gardner
Date: April 18, 2016