WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CORPORACION EMPRESARIAL ALTRA S.L. v. Development Services, Telepathy, Inc
Case No. D2017-0178
1. The Parties
The Complainant is CORPORACION EMPRESARIAL ALTRA S.L. of Málaga, Spain, represented by Privacidad Global, Spain.
The Respondent is Development Services, Telepathy, Inc of Washington, D.C., United States of America (the “United States”), represented by Muscovitch & Associates, Canada.
2. The Domain Name and Registrar
The disputed domain name <airzone.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed in Spanish with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2017. On January 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2017, 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.
On February 6, 2017, the Center notified the Parties, in both English and Spanish, that the language of the Registration Agreement in this case is English. The Complainant requested Spanish to be the language of the proceedings on February 6, 2016. The Respondent requested English to be the language of the proceedings on February 9, 2017. Following the Center’s request on February 13, 2017, the Complainant filed a translation into English of the Complaint on February 17, 2017.
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 February 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2017. On March 10, 2017, the Respondent requested an extension of the Response due date. In accordance with the Rules, paragraph 5(b), the Response due date was extended to March 16, 2017. The Response was filed with the Center on March 16, 2017.
The Center appointed Pablo A. Palazzi, José Carlos Erdozain and W. Scott Blackmer as panelists in this matter on April 27, 2017. 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 a company dedicated to smart air conditioning.
The Complainant has registered the trademark AIRZONE in Spain, Canada, Mexico, the European Union and several other jurisdictions by way of an international registration.
The disputed domain name was registered by the Respondent on September 2, 1999. The disputed domain name resolves to a parking page with pay-per-click links.
5. Parties’ Contentions
The Complainant was incorporated in the year 1996 in Spain under the corporate name “Airzone S.L.”. The Complainant changed its corporate name to CORPORACION EMPRESARIAL ALTRA S.L. in 2009. The Complainant manufactures and markets air conditioning control systems.
According to the Complainant, the disputed domain name does not have and has never had any real activity. It exists for the sole purpose of claiming a profit from the work of others, attempting to induce the Complainant into purchasing the same on several occasions and taking advantage of the reputation of another company and its trademarks.
The Complainant states that the Respondent lacks any rights or legitimate interest with respect to the disputed domain name, since Respondent does not own any trademark. The disputed domain name has been registered for years, with the sole purpose of trying to ensure that the Complainant should acquire it and in order to advertise, using the reputation of others without any indication of, or even pretending to be really making an appropriate use of it.
With respect to bad faith registration and use the Complainant states the following:
- there has been no real use of the disputed domain name for years, as can be verified on the website of Internet Archive (“web.archive.org”);
- the Complainant company existed and had registered trademarks prior to the registration of the disputed domain name;
- the disputed domain name has been registered since 1999, solely and exclusively with the intention of selling it;
- the disputed domain name, registered in the year 1999, was registered subsequent to the incorporation of the Complainant’s company, which was in 1996, which means that the disputed domain name was registered when its name was already being identified in commercial transactions with a person other than the registrant, and could be considered, therefore, as a trademark used in trade, albeit not registered;
- the decision in Creative Labs (UK), Ltd. y Creative Labs, S.L. v. Pilar Cañas Curto, WIPO Case No. D2000‑0896, admitted the existence of a right in favor of the complainant, due to the mere existence and prior use of its company or trade name, by way of trademark or distinctive sign;
- the Complainant’s domain name <airzone.es> was already registered and in use a year before the registration of the disputed domain name.
The Complainant therefore requests the transfer of the disputed domain name.
The Respondent states the following:
- the disputed domain name was registered on September 2, 1999.
- the disputed domain name was registered purely because it was a commercially appealing combination of two common dictionary words.
- the same day the Respondent registered other generic domain names using the term “zone”, such as <equityzone.com> and <latinzone.com>.
- the same month the Respondent, consistent with its theme of acquiring “zone” formation domain names, registered <codezone.com>, <cruisezone.com>, <toyszone.com>, and <diningzone.com>.
- Over the last 17 years, there have been numerous third-party offers to purchase the disputed domain name, from individuals who have nothing to do with the Complainant and who wanted the disputed domain name for their own non-infringing use: offers for <airzone.com> have arrived from a zone control distributor in Texas, a manufacturer of ozone generators in Virginia, a Florida air conditioning company, a […] contractor in Illinois, and even as a tribute site for Michael Jordan, among others.
- A substantial offer for the disputed domain name was submitted by a party unrelated to the Complainant. In March 2001, the […] Company on a call proposed $10,000 as an acceptable price for the acquisition of the disputed domain name.
- These offers demonstrate that the disputed domain name is not exclusively associated with the Complainant and that numerous parties found value in the disputed domain name outside of any use made by the Complainant.
- The Complainant failed to disclose that it initiated contact with the Respondent several times and that there were no attempts by the Respondent to induce offers from the Complainant. In making these offers, the Complainant’s current National Director, Mr. Ramos., used an online offer contract to submit a purchase offer for the disputed domain name. The Respondent replied with an offer to sell the disputed domain name for $10,000. By using that form, Mr. Ramos expressly disclaimed any legal claim to the disputed domain name by agreeing to the contract terms provided by the Respondent to make offers online.
- The Respondent relied upon the Complainant’s contractual representation that it had no legal claim to the disputed domain name that accompanied the offer contract entered into in 2004, and responded with an offer to sell the disputed domain name for USD 10,000, the same offer price presented to the […] Company in 2001. This indicates that the Respondent’s assessment of the value of the disputed domain name was developed independently of the identity of the offeror and, contrary to the Complainant’s claim, did not arise from the Complainant’s use.
- The Complainant never responded to this offer and the Complainant went away until filing this Complaint over 12 years later.
- Generic formative domain names have value because the terms on which the domain name is based have a common meaning, relevance, are memorable, and have desirable connotations and associations. The business practice of registering and offering for sale generic-formation domain names has long been held in UDRP decisions to confer a legitimate interest in the domain names to the respondent.
- To claim that, absent intentional targeting of a trademark holder, it is somehow illegitimate to register and sell a generic formative domain name that has widespread appeal because a trademark owner may one day desire that domain name for its own particular product or service, would give trademark holders an “automatic” right to a corresponding domain name - an approach which is totally unsupported by the UDRP.
- That the business practice of offering generic-formation domain names for sale can itself constitute a legitimate interest under the Policy is further supported by several cases rendered under the Policy.
- Where, as here, the Respondent’s interest in the disputed domain name is unrelated to the Complainant’s trademark, a legitimate interest may be found. The Respondent’s legitimate interest is reinforced by the Complainant’s own failure to allege that the Respondent’s use was infringing or in any way targeted the Complainant. The disputed domain name was configured on a page that provided advertising links unrelated to the Complainant or its competitors.
- A bad faith showing would have required the Complainant to prove that the Respondent registered the disputed domain name specifically to sell to the Complainant, or because of the value of the disputed domain name was derived exclusively from the fame of the Complainant’s trademark.
- the disputed domain name was registered because it is a commercially appealing term, not to target the Complainant of which the Respondent was unaware at the time.
- The Complainant offers mere speculation and provides no support for its claims that the Respondent targeted the Complainant in its registration and use of the disputed domain name. The Complainant does not detail when it commenced sales to the United States or other countries, and provides no evidence at all that the Respondent would have been aware of the Complainant in 1999.
- Not being aware of the Complainant, the Respondent was under no duty to search the world for companies that might claim locally enforceable rights to a similar term. It is well established that a respondent is not obliged to search the records of foreign trademark offices, and that foreign trademark registrations do not put domestic domain name registrants on constructive notice of foreign trademarks.
- The Complainant’s claim rests on its false assertion, already disproven, that “airzone” is “a name that only the complainant identifies with”. As discussed above, the United States Patent and Trademark Office indicates that the Complainant’s mark holds a junior position in the United States in relation to other companies with rights to the “airzone” mark. A single inquiry from an unrelated third-party with a genuine interest in acquiring the disputed domain name for an unrelated use would disprove the Complainant’s assertion that “airzone” is a name that only the Complainant identifies with; the Respondent received over a dozen offers from unrelated third parties.
- At no time did the Respondent solicit the sale from the Complainant; it was the other way around – the Respondent responded to an offer to purchase initiated by the Complainant, and only after the Complainant certified that it was not making any trademark claim to the disputed domain name, as aforesaid. Responding to an offer to purchase is not considered bad faith.
The Respondent requests that the Panel reject the Complaint and enter a finding that there has been Reverse Domain Name Hijacking.
6. Discussion and Findings
The Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
(i) the disputed domain name is identical 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 was registered and is being used in bad faith.
The Complaint was originally filed in Spanish. After the Center notified the Parties that the language of the Registration Agreement in this case was English, the Complainant filed a translation into English of the Complaint.
The language of the proceeding is the language of the registration agreement, unless both parties agree otherwise, or the panel determines otherwise under paragraph 11 of the UDRP Rules.
Here both parties disagree. The Complainant requested Spanish to be the language of the proceedings. The Respondent requested English to be the language of the proceedings. Therefore, it is for the panel to determine the language of the proceedings.
Since the registration agreement was in English, and the Complainant has filed its Complaint in English and also its website has an English version, this is evidence that the Complainant is able to understand English. Therefore, the Panel determines that English will be the language of the proceeding.
B. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the disputed domain name identical or confusingly similar to that trademark.
The Panel finds that the Complainant has sufficiently established trademark rights in the term “Airzone”. It is clear to the Panel that the distinctive portion of the disputed domain name, consisting of the Complainant’s trademark in its entirety, is identical to the Complainant’s trademark.
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
C. Rights or Legitimate Interests
In light of what is explained with respect to bad faith registration and use, there is no need to address the existence of rights or legitimate interests.
D. Registered and Used in Bad Faith
The Respondent combines dictionary English words registering these as domain names and uses them as advertising portals, or to sell those domain names for their generic value. The Respondent has done this with many domain names, including others registered in the same month as the disputed domain name that also add “zone” to common words, <latinzone.com> and <equityzone.com>.
The Panel is of the view that this can be a legitimate business practice and not a use in bad faith, so long as the intent is to capitalize on the dictionary value of the words comprising the domain name and not to exploit the value of third-party trademarks.
The Respondent has demonstrated that it registered the disputed domain name in September 1999 and denies being aware of the Complainant at that time or having any intention to take advantage of the Complainant’s trademark.
The view of the Panel in this case is that this is a credible defense, because the disputed domain name is comprised of two English dictionary words (“air” and “zone”), and the website associated with the disputed domain name is in the English language and advertises products apparently aimed at a predominantly American market, without including links to the Complainant or competitors of the Complainant. In this regard, the Panel finds it more reasonable to assume that when registering the domain name, the Respondent’s purpose was just to capitalize the dictionary value of words of common use and not for any other purposes.
The Respondent’s conduct after registration also does not reflect a motivation to target the Complainant. The evidence submitted shows that it was the Complainant that made the overtures to purchase the disputed domain name, at least two years after it was registered. In subsequent negotiations, the Complainant’s representative also indicated that it did not assert legal rights to the disputed domain name, so it is difficult to criticize the Respondent for entering into such discussions.
The Complainant has not met its burden of establishing bad faith in the Respondent’s registration and use of the disputed domain name.
E. Reverse Doman Name Hijacking
The Respondent requested a finding of Reverse Doman Name Hijacking.
Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Mere lack of success of the Complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking (see paragraph 4.17 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). In the Panel’s opinion the whole circumstances must be reviewed, on an objective basis, to determine whether the Complaint was brought in bad faith.
The Panel is satisfied that the Complainant must or at least ought to have appreciated at the outset that its Complaint could not likely succeed. This will often be an important consideration on the question of Reverse Domain Name Hijacking (Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309. Furthermore, previous panels have found a complainant’s bad faith and abuse of the administrative proceeding where the complainant or its representative knew at the time of filing the complaint that it could not prove the respondent’s bad faith registration (see for example New Forests Asset Management Pty Limited v. Kerry Schorsch, Global Advertizing, LLC, WIPO Case No. D2015-1415).
The facts of the case show that:
- The Complainant is represented by counsel;
- The Complainant failed to mention that at all times it was the Complainant who approached the Respondent to buy the disputed domain name.
- There is no proof of a bad faith element in this case.
- The Complainant provides no explanation for the delay of 17 years in challenging the Respondent’s registration of the disputed domain name.
In addition, by submitting an offer to the Respondent, the Complainant expressly disclaimed any legal rights over the disputed domain name.
In all of these circumstances, the Panel finds that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking and constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied.
Pablo A. Palazzi
José Carlos Erdozain
W. Scott Blackmer
Date: May 15, 2017