WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deko loft+ væg p/s v. Erika Reyes
Case No. D2013-2119
1. The Parties
The Complainant is Deko loft+ væg p/s of Taastrup, Denmark, represented by Awapatent AB, Denmark.
The Respondent is Erika Reyes, Deko-loft of Bogotá, Colombia, represented by Carlos M Alvarez, Colombia.
2. The Domain Name and Registrar
The disputed domain name <dekoloft.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 December 6, 2013. On December 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 2013, 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 December 12, 2013, the Center informed the Complainant that the Complaint was administratively deficient. On December 16, 2013, the Complainant filed an amended Complaint.
The Center verified that the Complaint together with the amended 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 December 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2014. The Response was filed with the Center on January 6, 2014.
The Center appointed Luca Barbero as the sole panelist in this matter on January 15, 2014. 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 a Danish company supplying demountable system and glazed partitioning solutions.
The Complainant has provided evidence of ownership of the Danish trademark registration No. VR 1967 03274 for DEKO LOFT (figurative), filed on April 27, 1967, in class 37; and Danish trademark registration No. VR 1976 00306 for DEKO GRUPPEN (word) filed on November 8, 1974, in classes 2, 7, 11, 17, 19, 20, 27 and 37. The Complainant also submitted, at Annex F to the Complaint, a list of registrations and applications for trademarks including DEKO in the several countries of the world, in which, however, Colombia is not contemplated.
The Complainant is also the owner of the domain names <deko.dk>, registered on November 14, 1996, <deko.com>, registered on April 27, 2005, and <deko.eu>, registered on April 29, 2006.
The disputed domain name <dekoloft.com> was registered on May 23, 2008.
5. Parties’ Contentions
The Complainant states that it has sold its products under the trademark DEKO for over 40 years and that it is present in more than 40 countries in Europe, Africa and Asia. The Complainant informs the Panel that it develops partitions using state of the art technology and asserts that, through its long and successful efforts, the trademark DEKO has earned recognition, a good name and a reputation for high quality. The Complainant also affirms that it is likely that third parties try to take unfair advantage of this success by using a domain name comprising a quasi identical name.
The Complainant alleges that its trademark registrations grant it exclusive rights to use the trademark DEKO in connection with partitions and interiors in Colombia and in the international commerce.
The Complainant contends that the disputed domain name is confusingly similar to the trademark DEKO of the Complainant since it reproduces the trademark in its entirety with the addition of the generic term “loft”, which means “ceiling” in Danish and is directly related to the goods sold by the Complainant under the trademark DEKO.
The Complainant alleges that the Respondent is using the disputed domain name to divert Internet traffic to its own website and to mislead consumers into believing that the products promoted therein are originated by the Complainant. Therefore, the Complainant states that such use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.
The Complainant also states that it has not authorized, licensed or consented to the Respondent’s registration and use of domain names incorporating the trademark DEKO or any confusingly similar variation of the Complainant’s trademarks. Therefore, according to the Complainant, the Panel should find that the Respondent is also not commonly known by the disputed domain name.
With reference to the bad faith requirement, the Complainant contends that, due to the well-known and established status of the Complainant, the disputed domain name can be referred only to the Complainant, to its trademark or company name. The Complainant also points out that the Respondent’s registration of the disputed domain name prevents the Complainant to reflect its trademark in the corresponding domain name and that the Respondent’s use of the disputed domain name is an attempt to mislead consumers, to seek benefit from the Complainant’s reputation and tarnish the Complainant’s trademark rights.
The Complainant states that it sent a cease-and-desist letter and copy of the draft to the Respondent but the Respondent continued to hold and use the disputed domain name.
The Complainant indicates that the Respondent likely commercially benefits from the Internet traffic arriving at its website and/or from users who mistakenly believe that the Respondent’s website is associated with the Complainant and orders the products advertised therein. Therefore, the Complainant concludes that paragraph 4(b)(iv) of the Policy is applicable in this case since the Respondent is attempting to attract users to its web site for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site.
The Respondent informs the Panel that it is founding partner, member of the board and acting legal representative of a company organized under the laws of Colombia. Said company, the legal name of which is “Deko - Loft S.A.”, was incorporated on April 16, 2007, as shown by copy of the Certificate of Good Standing issued by the Chamber of Commerce of Bogota submitted at Annex A to the Response.
The Respondent also highlights that it uses the disputed domain name as an online marketing tool for its business and that it has opened three stores in the city of Bogota identified with the trade name “Deko Loft”. Photographs of said stores are attached as Annex B to the Response.
The Respondent rebuts the Complainant’s contentions and states that the disputed domain name is not confusingly similar to the Complainant’s trademark since:
(i) The Complainant has not asserted trademark rights over the whole expression “Deko loft” and has only provided evidence that it has registered trademark rights over the mark DEKO in Denmark;
(ii) The word “loft” is not generic in relationship with the term “deko”, which is a misspelling of “deco”, a shortening in English (or Spanish) for “decoration” and conveys distinctiveness to the disputed domain name;
(iii) In addition to its dictionary meaning (“ceiling” in Danish), the word “loft” has also been used to refer to an apartment built within a warehouse or industrial facility, where the architectural features are open space, with few or no walls. Moreover, Spanish-speaking architects and interior designers have taken this meaning of the word “loft” and use it to refer to an apartment or construction with big windows, almost no interior walls, and very luminous;
(iv) The term “loft” is used, not only as a noun, but also as an adjective, referring to a “modern” or “trendy” minimalistic design style. The mark DEKO LOFT is understood by the target customer as “trendy decoration”.
The Respondent recognizes that it has not been authorized to use the Complainant’s trademarks but claims to be commonly known by a company name and trade name identical to the disputed domain name and indicates that it is using the disputed domain name to promote its business and its three stores.
The Respondent also highlights that the Complainant lacks evident trademark rights in the sign “Deko loft” in Colombia and states that the website located at the disputed domain name is clearly written in Spanish and directed towards customers located in Colombia that look for the products and services offered by “Deko – Loft S.A.” within the territory of Colombia.
The Respondent also notes that the Complainant’s website is available in various languages, but not in Spanish, and highlights that the Complainant’s products are sold in Europe, Africa and Asia, not in Latin America.
The Respondent alleges that it has not violated the Complainant’s trademark rights, as the Respondent’s business and its use of the disputed domain name has been connected to a bona fide offering of goods and services within the territory of Colombia long before any notice to Respondent of the dispute.
In addition, the Respondent denies that the Complainant’s trademark be well-known in Colombia and asserts that there is no evidence that the Respondent was or should been aware of the trademark DEKO before registering the disputed domain name. The Respondent further notes, that the Complainant has not shown evidence of registered trademarks or pending trademark registrations in Colombia at the time of the registration of the disputed domain name.
As to the Complainant’s assertions on the use of the disputed domain name, the Respondent alleges that it did not register and is not using the disputed domain name to divert traffic from the Complainant’s website to the Respondent’s one and highlights that the architecture and design of the Complainant’s and the Respondent’s websites, as well as the logos and graphics of the trademarks used by the Complainant, are different.
The Respondent also denies to have received any cease-and-desist letter from the Complainant.
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 Complainant 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 Complainant has 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 Complainant states that the disputed domain name is confusingly similar to its trademark DEKO and has provided evidence of ownership of trademark registrations for DEKO alone or with the addition of other terms or figurative elements, including a Danish registration for a figurative trademark where the denominative part is constituted by the expression “DEKO LOFT”.
As stated in several prior panel decisions and summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the location of the trademark, as well as its date of registration and the goods and/or services for which it is registered are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.
The Panel finds that, for the purpose of this proceeding, the Complainant has established trademark rights in the sign DEKO.
The Panel also finds that, from a straightforward visual or aural comparison of the Complainant’s trademarks with the alphanumeric string in the disputed domain name, the Complainant’s trademark is recognizable as such within the disputed domain name, and that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
In the case at hand, it is undisputed that the Respondent has not been authorized to use the Complainant’s trademarks. However, the Respondent claims to be commonly known by a name corresponding to the disputed domain name and to be using the disputed domain name in connection with a bona fide offering of goods or services long before any notice of the dispute.
According to the evidence on records, the Respondent has established its company Deko-Loft S.A. in Bogota in 2007, before the registration of the disputed domain name, and the disputed domain name is redirected to a website in Spanish providing information about the Respondent’s activity, which consists in the sale of decorative coatings of various brands through three stores located in Colombia.
Instead, the Complainant produces and sells movable partitions and devices for commercial and institutional buildings in Denmark and in several countries of the world, but not in Latin America. In addition, according to the Panel’s review of the documents attached to the Complaint, the Complainant does not own registered trademarks valid in Colombia, were the Respondent is based, and has failed to submit convincing evidence to substantiate its claim that its trademark is well-known in Colombia.
Therefore, as mentioned also in section 6.C, the Panel is not persuaded that the registration of the disputed domain name was made by the Respondent with the Complainant’s trademark in mind.
Moreover, the Complainant also alleged that it sent a cease-and-desist letter to the Respondent prior to the start of this proceeding but has submitted no evidence to demonstrate that this letter was actually sent.
In view of the above, the Panel finds that the Respondent has a legitimate interest in the disputed domain name based on its use of the trade name Deko-Loft S.A. and that the Respondent engaged in a bona fide offering of goods and services under the disputed domain name prior to any notice of objection from the Complainant.
Consequently, the Panel finds that the Complainant has not complied with the second element required in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As mentioned in the section above, the Complainant has not provided evidence of ownership of any trademark registrations for DEKO in Colombia and has not submitted documentation to demonstrate that its trademarks might be known in said country. Indeed, the Complainant admits that it sells its products in several countries in Europe, Africa and Asia but does not mention Latin America.
Therefore, the Panel finds that the Complainant has failed to prove that the Respondent should have been aware of its trademarks at the time of the registration of the disputed domain name. In addition, the Complainant has also failed to prove that the Respondent had actual knowledge of the Complainant’s trademarks at that time.
As to the use of the disputed domain name, the Panel notes that the website published at the disputed domain name is in Spanish language and appears to be specifically targeted to Colombian users and not to misappropriate the contents published on the Complainant’s website “www.deko.com”.
The Panel finds that, in light of the circumstances of the case and documents produced, the name “Deko Loft” and the disputed domain name were, on balance, not selected by the Respondent to intentionally trade on the Complainant’s distinctive signs or to specifically target the Complainant’s customers.
In view of the above, the Panel finds that the Respondent has also failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith.
For the foregoing reasons, the Complaint is denied.
Date: January 29, 2014