WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OCOM IP BV, Fiberring B.V. v. Dialogic Srl
Case No. D2014-1314
1. The Parties
The Complainants are OCOM IP BV and Fiberring BV of Amsterdam, Netherlands, represented by Boekx Advocaten, Netherlands.
The Respondent is Dialogic Srl of Turin, Italy / Fibering SpA of Milan, Italy, represented by Studio Legale ELEXI, Italy.
2. The Domain Names and Registrar
The disputed domain names <fibering.biz>, <fibering.com>, <fibering.info>, <fibering.net> and <fibering.org> are 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 1, 2014. On August 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 5, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Dialogic Srl 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 August 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2014. The Response was filed with the Center August 27, 2014.
The Center appointed Clive N.A. Trotman, Hub. J. Harmeling and Tony Willoughby as panelists in this matter on September 30, 2014. 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
Information about the Complainants is taken from the Complaint.
The Complainants, part of the OCOM Group, are in the business of Internet connectivity, data centres, hosting, content delivery networks and related activities. The first Complainant owns and controls the intellectual property rights of the group. The second Complainant is an international network service provider operating in Europe and the USA and has used the name "Fiberring" since at least as early as 2003.
The Complainants display a map listing their Internet services and showing connectivity over a network that includes nodes in the United States, Europe and Scandinavia.
The following registered trademarks are held in the name of the first Complainant:
(1) FIBERRING, Benelux Trademarks Register, priority date May 27, 2003, registration number 0731208, classes 09, 35, 37, 38, 41, 42;
(2) FIBERRING, International Trademark (USA, Iceland, Turkey), based on trademark (1) above, registration date November 17, 2010, registration number 1061703, classes 37, 38, 42;
(3) FIBERRING, figurative, European Community Trade Mark (CTM), filing date November 18, 2010, registration date May 20, 2011, registration number 009531872, classes 37, 38, 42.
The Complainants use the domain names <fiberring.com>, <fiberring.biz>, <fiberring.info> and <fiberring.nl>.
Information about the Respondent is taken from the Response.
The Respondent is in the business of an Internet service provider at the level of business-to-business. The Respondent's business commenced in 2001 under the name Dialogic snc, and it was incorporated as Dialogic Srl on September 20, 2005. Official authorisation by the Italian register of telecommunications operators was granted on September 16, 2008. On December 24, 2013, the Respondent officially changed its name to Fibering SpA.
The following trademark application has been made in the name of the Respondent:
FIBERING, figurative, Office for Harmonization in the Internal Market (OHIM), filing date January 22, 2014, classes 9, 25, 38, 42. The application is under objection by the Complainants.
The disputed domain names <fibering.biz>, <fibering.com>, <fibering.info>, <fibering.net> and <fibering.org> appear to have been registered on October 13, 2013 in the Respondent's previous name of Dialogic Srl.
On May 21, 2014 the Complainants' representative wrote to the Respondent drawing the Respondent's attention to the Complainants' rights and seeking inter alia transfer of the disputed domain names.
5. Parties' Contentions
The Complainants' contentions include the following.
The Complainants claim rights in the trademarks listed in section 4 above and have produced extracts of the Benelux Trademarks Register, the ROMARIN file and the CTM file respectively.
The Complainants say that their business is active in countries including Italy.
The Complainants contend that the disputed domain names are confusingly similar to trademarks in which the Complainants have rights. The disputed domain names differ from the trademark FIBERRING by only one silent letter "r", they sound identical and there is a visual resemblance. The disputed domain names are used for goods and services similar or identical to those of the Complainants in the field of fiber optic Internet connectivity and there is a likelihood of confusion.
The Complainants further contend that the Respondent does not have rights or legitimate interests in respect of the disputed domain names. Specifically, the Respondent has used the disputed domain names to offer services identical to those of the Complainants under almost the same name and it is not known whether the Respondent actually delivers those services. It is difficult to conclude that the Respondent does not derive a commercial benefit from the use of the disputed domain names. The Complainants say the Respondent misleadingly diverts consumers to itself while tarnishing the Complainants' trademarks.
The Complainants say that nothing indicates that the Respondent is commonly known by the disputed domain names. Given the nature of the Respondent's website, there is no legitimate noncommercial or fair use of the disputed domain names.
The Complainants further contend that the disputed domain names were registered and are being used in bad faith. The Respondent is taking unfair advantage of the Complainants' goodwill by diverting Internet users to the Respondent's websites by confusion for commercial gain.
The Complainants assert that the Benelux trademark of 2003 (trademark (1) above) well predated the registration of the disputed domain names, which is suggestive that the Respondent had prior knowledge of the Complainants' trademark when it registered the disputed domain names. It is submitted that the registration of a domain name that is confusingly similar to a well-known trademark may be sufficient for a finding of registration and use in bad faith.
The Complainants state that a cease, desist and transfer communication was sent to the Respondent on May 21, 2014.
The date of incorporation of Dialogic Srl is disputed by the Complainants, which give a date of September 29, 2009.
The Complainants have cited a number of previous decisions under the Policy that they consider to be supportive to their case.
The Complainants request the transfer to themselves of the disputed domain names.
The Respondent denies the Complaint and its contentions include the following.
The Respondent contends that in January 2014, a search for FIBERING found no conflicting registered trademark or entry at the OHIM on line database. A Google search for FIBERING found no identical company name or trademark. The Respondent made the trademark application shown in section 4 above for FIBERING, identical to its company name, in good faith. The disputed domain names were available for registration. The Respondent had not heard of the Complainants until it received the cease and desist letter in May, 2014.
The Respondent contests the validity of the trademarks in which the Complainants claim rights. It claims that trademark (1) of 2003 for FIBERRING was issued at a time when Benelux trademarks were issued without substantive review. It is submitted, with citations of decisions under the Policy, that trademark registrations issued without examination do not carry the same presumption of validity as examined registrations. Furthermore the unexamined Benelux registration, if valid, extends only within Benelux, not Italy.
The Respondent says it has discovered, since service of the Complaint, that the Complainants' application number 6198261 for a CTM trademark for FIBERRING on August 14, 2007 was rejected on April 14, 2008 on the grounds that the proposed trademark had no distinctive character and consisted exclusively of signs and words related to the relevant services. The Respondent submits that the Complainants' case hinges on trademark (1) for a word that was found on examination for the purposes of CTM application number 6198261 to lack sufficient distinctiveness and to be descriptive of a service, namely a fiber ring circuit for telecommunications. Even if the Respondent had found this in its January 2014 search, it would have been free to register the disputed domain names.
The Respondent says the Complainants' CTM trademark (3) of 2010 is registered only in respect of the Complainants' logo, accompanied by the word FIBERRING, and should be disregarded.
The Respondent says that its website is entirely in Italian whereas the Complainants' website is entirely in English or Dutch and the Parties target different markets.
The Respondent submits that because Complainants' claimed trademark is descriptive and non-distinctive, small differences are sufficient to avoid a finding of confusing similarity. The Respondent's claimed trademark conversely is a coined word without obvious reference to the word "ring".
The Respondent contends that it has rights and legitimate interests in the disputed domain names. They correspond to the Respondent's company name and trademark, which the Respondent uses to deliver bona fide services. The Policy requires the Complainants to show that the Respondent has no legitimate rights or interests, which the Complainants fail to do.
The Respondent denies that the disputed domain names have been registered and are being used in bad faith. It says that its application for the CTM trademark FIBERING is incompatible with bad faith intent and reflects its company name Fibering SpA.
The Respondent says it was unaware of the Complainants' claimed rights, that actual knowledge of the Complainants and their trademarks would be needed for a finding of bad faith, and there was no intent to divert Internet users to the Respondent. There was no bad faith motivation on the part of the Respondent at the time of registration of the disputed domain names or since.
The Respondent asserts that it and the Complainants operate in different geographical markets and refutes the Complainants' claim to operate in Italy, stating that the Complainants lack legal authorisation to do so.
The Respondent has made certain allegations about the ultimate ownership of the Complainants and their motivation in bringing this Complaint that are outside the scope of the Policy. It has also alleged that the Complainants' have come to this forum without clean hands.
The Respondent has cited a number of previous decisions under the Policy that it considers to be supportive to its case.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that a complainant asserts to the applicable provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith."
The Complainants have made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
In the exercise of its power to undertake limited factual enquiries into matters of public record (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") paragraph 4.5), the Panel has visited the websites to which the disputed domain names resolve and notes that they are presently in similar usage except as to language.
Before advancing to its substantive analysis, the Panel briefly notes as a preliminary procedural matter that the Complaint satisfies the criteria for the consolidation of multiple complainants in a single administrative proceeding (WIPO Overview paragraph 4.16).
A. Identical or Confusingly Similar
The disputed domain names are <fibering.biz>, <fibering.com>, <fibering.info>, <fibering.net> and <fibering.org>. The Complainants seek to prove that each is confusingly similar to a trademark, FIBERRING, in which they claim to have rights. The generic Top-Level Domain ("gTLD") designation of the disputed domain names may generally be disregarded in the consideration of confusing similarity under the Policy, and what remains is "fibering".
The Respondent contests that the Complainants have rights in the word FIBERRING as a trademark and says it is descriptive and non-distinctive. Specifically the Respondent expresses the view that trademark (1), which forms the basis of trademark (2), would have been granted without substantive review, and the Complainants' attempt to register the same word as a CTM in 2007 was rejected. Furthermore registration of trademark (3) was for a figurative mark.
As is plain from the Complainants' cease and desist letter of May 21, 2014, the Parties to this dispute are engaged in a trademark dispute that is outside the scope of the Policy. The Panel notes that the Complainants appear to have used the company name "Fiberring" since 2003 and thereby also appear to have accrued unregistered trademark rights in FIBERRING. The Panel therefore considers it appropriate to proceed on the basis that the Complainants have sufficient trademark rights for purposes of the Policy.
The Respondent's position is that there is no confusing similarity between FIBERRING, which equates with "fiber ring", and the component "fibering" of the disputed domain names, partly because small differences from descriptive or generic words are sufficient to avoid confusion. The Panel rejects this position.
The Panel finds that the disputed domain names are each confusingly similar to the unregistered trademark FIBERRING for the purposes of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainants have asserted prima facie that the Respondent does not have rights or legitimate interests in respect of the disputed domain names.
Whilst it is for the Complainants to prove their case, paragraph 4(c) of the Policy provides for the Respondent to counter the Complainants' assertion and to establish rights or legitimate interests in the disputed domain names by demonstrating:
"(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."
The above circumstances are without limitation.
The Complainants have sought to pre-empt the provisions of paragraph 4(c) of the Policy by asserting, inter alia, that the Respondent's use of the disputed domain names is not bona fide because the Respondent provides services similar to the Complainants' and misleadingly diverts customers; that the Respondent is not commonly known by the disputed domain names; and that the Respondent's use of the disputed domain names is not noncommercial.
In support of its position in the terms of paragraph 4(c)(i) of the Policy, the Respondent has produced a screen shot of a website ("www.dialogicnet.com") mapping its progression from Dialogic snc in 2001 to Fibering SpA in 2014. Documentation produced in evidence supports the existence of the Respondent's company with certain key events in its timeframe including its incorporation as Dialogic Srl on September 20, 2005, authorisation by the Italian register of telecommunications operators on September 16, 2008, and a formal change of name to Fibering SpA on December 24, 2013. The Respondent has produced a copy of its website ("www.fibering.org") that, taken in combination with the company history set out above, the Panel finds convincing as offering a real service.
In the absence of a finding that the disputed domain names were registered or used in bad faith, as is confirmed in section 6C below, they are found to have been used for the offering of a bona fide service. Such usage evidently pre-dated the first recorded notice of the dispute, which appears to have been the Complainants' cease and desist letter dated May 21, 2014, because this recognised, in respect of <fibering.com>, that the Respondent was offering Internet connectivity through fiber optic cable.
The Policy does not require either the Complainants or the Respondent to demonstrate stronger rights or legitimate interests or to be shown to be more deserving of a particular domain name in any way. The Respondent has demonstrated bona fide usage in satisfaction of paragraph 4(c)(i) of the Policy and has therefore successfully rebutted the Complainants' case that it lacks rights or legitimate interests. Accordingly the Panel finds for the Respondent in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainants must prove under paragraph 4(a)(iii) of the Policy that the disputed domain names have been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The onus of proof remains upon the Complainants. No evidence has been produced to the effect that the disputed domain names are for sale or have been offered, or would be offered, for sale or rent to the Complainants for profit.
No evidence proves that the Respondent has set out to block the Complainants from registering domain names containing "fibering", which is not the Complainants' name. A finding under paragraph 4(b)(ii) of the Policy would in any case require proof of a pattern of blocking registrations over and above the fact that the Respondent has simultaneously registered several gTLD variants of its chosen domain names.
No evidence proves that the Respondent's primary purpose was to disrupt the business of a competitor.
No evidence has been produced to show that the Respondent has intentionally attempted to divert Internet users by confusion.
The Panel can find no other evidence of bad faith registration and use of the disputed domain names and accordingly the Panel therefore finds for the Respondent under paragraph 4(a)(iii) of the Policy.
The Policy is in place to resolve complaints of abusive registration and use of domain names. The mutual trademark dispute that clearly exists between the Parties, and the Respondent's allegations about the Complainants not having clean hands in this dispute, are not the concern of this Panel.
For the foregoing reasons, the Complaint is denied.
Clive N.A. Trotman
Hub. J. Harmeling
Date: October 8, 2014