WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Asturiana de Laminados, S.A. v. Perfect Privacy, LLC / Elzevir Ng
Case No. D2014-1457
1. The Parties
The Complainant is Asturiana de Laminados, S.A. of Olloniego, Asturias, Spain, represented by PROTECTIA Patentes y Marcas, S.L., Spain.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America ("USA") / Elzevir Ng of Markham, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <elzinc.com> is registered with Register.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 28, 2014. On August 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 28, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 4, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 5, 2014.
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").
On September 5, 2014 the Center received two email communications from the Respondent indicating that it wished to find an amicable settlement with the Complainant. On September 5, 2014 the Center sent an email communication to the parties regarding a possible settlement of the dispute. After several exchange of email communications between the Complainant and the Respondent from September 5, 2014 to September 10, 2014, the Center received an email communication from the Complainant confirming its intention to not suspend the proceedings.
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 September 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2014. The Respondent did not submit any formal response. Accordingly, the Center notified commencement of the panel appointment process on October 16, 2014.
The Center appointed Luca Barbero as the sole panelist in this matter on October 22, 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 producer of rolled zinc and is the owner of several trademark registrations for ELZINC together with other word or device elements, the most dated of which were filed in October 2006. Amongst others, the Complainant owns the following trademark registrations:
- Community trademark No. 5354923 for ELZINC (figurative), filed on October 4, 2006, in classes 6, 35 and 40;
- Community trademark No. 5415914 for ELZINC SLATE (word mark), filed on October 25, 2006, in classes 6, 37 and 42;
- Community trademark No. 5416052 for ELZINCGRAPHITE (word mark), filed on October 25, 2006, in classes 6, 37 and 42;
- Community trademark No. 11454014 for ELZINC PROTECT+ (word mark), filed on December 26, 2012, in class 6;
- International trademark No. 934627 for ELZINC (figurative mark), registered on March 27, 2007, in class 6;
- Canadian trademark No. TMA807790 for ELZINC (figurative mark), filed on April 15, 2010, in class 6.
The Complainant is also owner the domain name <elzinc.es>, registered on April 11, 2007, at which it operates its main web site.
The disputed domain name <elzinc.com> was registered on April 2, 2002 and is pointed to a landing page of the concerned Registrar where it is stated that the web site is no longer available.
The Complainant sent a warning letter by a certified email to the Respondent with reference to the disputed domain name, on July 2, 2014, to which the Respondent did not reply.
5. Parties' Contentions
The Complainant contends that the disputed domain name <elzinc.com> is identical to its registered trademarks since it reproduces them in its entirely with no alterations, thus causing a likelihood of confusion in the Internet user. The Complainant also states that the generic Top-Level Domain ("gTLD") ".com" is not relevant and has not to be considered for the purpose of paragraph 4(a)(i) of the Policy.
The Complainant asserts that the Respondent has no rights or legitimate interest in the disputed domain name as the Respondent has not acquired any license from the Complainant and it was not authorized to register and use the disputed domain name, which includes its trademarks.
The Complainant also alleges that its trademarks predate the registration of the disputed domain name and state that, since the disputed domain name reproduces a sign used by the Complainant, the Respondent cannot develop a legitimate activity under this name.
The Complainant further submits that there is lack of connection between the disputed domain name and the name of the Respondent, that the Respondent is not known as Elzinc and that the Respondent did not reply to the Complainant's cease and desist letter.
The Complainant highlights that the Respondent is not making an active use of the disputed domain name and asserts that the Respondent cannot claim to be making a bona fide offering of goods and services under the disputed domain name. It also asserts that it cannot be ascertained whether the Respondent has been known under the disputed domain name, since said registration is infringing a valid and renowned trademark.
With reference to the bad faith requirement, the Complainant contends that the Respondent could not rightfully ignore the existence of the Complainant and its trademarks at the time of the registration of the disputed domain name and that the Respondent's registration cannot be ascribed to a coincidence. Therefore, the Complainant concludes that the Respondent registered the disputed domain name with the Complainant's trademark in mind, knowing that it was infringing the earlier rights of the Complainant.
The Complainant also states that the passive holding does not exclude bad faith use since there exists a potential risk of activation.
The Complainant alleges that the purpose of said redirection is probably to get some kind of economic benefit from the known earlier trademarks of the Complainant, searching to obtain an amount of money each time an Internet user searches for ELZINC and gets connected with the web site correspondent to the disputed domain name. Therefore, the Complainant concludes that the behavior of the Respondent fits exactly in the circumstance of registration or use in bad faith according to paragraph 4(b)(iv) of the Policy.
The Complainant also contends that the continued existence of the disputed domain name in the name of the Respondent will erode the goodwill in the name and create confusion, as people accessing the Internet would associate the disputed domain name with the Complainant.
The Respondent did not reply to the Complainant's contentions.
However, in an exchange of correspondence with the Complainant prior to the notification of the Complaint, the Respondent stated that it had registered and used the disputed domain name for its previous company ELZ Inc. held in Canada and that it had kept using the disputed domain name in connection with its personal email to communicate with its prior customers. The Respondent also stated that it had been using the disputed domain name for more than 9 years (maybe 10, as it does not remember when it registered it), that it was not aware and did not know the Complainant from the first day it started to use the disputed domain name, and that it chose the disputed domain name since it matched with the named of its previous company Elz Inc.
The Respondent indicated to be available to reach an amicable settlement with the Complainant and stated that it would have transferred the disputed domain name to the Complainant upon receipt of a compensation of USD 5,000.
In accordance with paragraph 10 of the Rules and in the exercise of its general powers, the Panel has determined that it is appropriate to take into account what has been alleged by the Respondent in the above-described communications in rendering its decision.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant demonstrate that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has provided evidence of ownership of several trademark registrations for ELZINC together with generic terms or device elements.
The Panel notes that the core of the Complainant's trademarks is the sign ELZINC.
Since both the disputed domain name and the Complainant's marks contain the same word "elzinc" and the word or device elements comprised therein, as well as the gTLD ".com", can be disregarded in the assessment of confusing similarity, the Panel is satisfied that the disputed domain name is confusingly similar to the Complainant's trademarks according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
With respect to this requirement, a complainant is generally required to make a prima facie case that a respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1). The Panel notes that the Respondent has not submitted a formal Response and that, according to the evidence on records, there has never been any relationship between the parties and the Respondent has not been authorized to use the Complainant's trademarks. Nevertheless, in light of the contents of the Respondent's communications prior to the notification of the Complaint, mentioned in section 5.B, it appears that the Respondent registered the disputed domain name since its former company was named ELZ Inc. and, after the cease of said company, the Respondent continued to use the disputed domain name in connection with one of its email addresses.
The Panel notes that the correspondence of the disputed domain name with the Respondent's alleged company name, should it have actually been "ELZ Inc.", could give rise to a legitimate interest, although no documental evidence has been submitted by the Respondent to demonstrate that it actually operated a so called company and that it was commonly known by such a name.
The Respondent has not submitted any evidence to show that the disputed domain name, which is currently not resolving to an active web site, was, and still is, used in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose. As indicated above, the Respondent claimed to be still using the disputed domain name as a basis for an email address used to communicate with its prior customers, but did not submit any document, such as copy of email communications sent from such address, to substantiate its claim.
Based on the lack of any evidence apt to substantiate the Respondent's allegations contained in the exchange of correspondence with the Complainant prior to the notification of the Complaint, the Panel is inclined to conclude that the Respondent has not produced sufficient elements to demonstrate its rights or legitimate interest in the disputed domain name. However, the Panel also notes that, in view of the findings under the next section, the Panel's determination under paragraph 4(b)(ii) of the Policy is not decisive for the outcome of the dispute.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant demonstrate that the disputed domain name has been registered and is being used in bad faith.
The Complainant stated that the Respondent registered the disputed domain name in bad faith as its trademark registrations predate the registration date of the disputed domain name and alleges that the Respondent's registration is infringing the Complainant's well-known trademark.
However, the Panel notes that, according to the concerned registrar's WhoIs records, the disputed domain name was registered on April 2, 2002, and that such a date predates of several years the Complainant's registration of the domain name <elzinc.es> (April 11, 2007) and the filing of the registered trademarks on which the Complainant has relied upon in the present case, the most dated of which were filed, according to the Complainant's submissions, in October 2006.
In addition, the Complainant has not shown that it had acquired unregistered trademark rights on ELZINC before the registration of the disputed domain name.
Therefore, based on the evidence on records, the Panel finds that the Complainant has failed to demonstrate that the Respondent was or could have been aware of the Complainant's trademark at the time of the registration of the disputed domain name.
As to the use of the disputed domain name, the Panel notes that it is not pointed to an active web site. However, the Respondent stated that it has been using the disputed domain name in connection with an email address used to communicate with its clients and, indeed, the Panel's verifications on the technical configuration of the disputed domain name as made available through a public query on the Domain Name Servers, highlighted the presence of MX records, a type of record that specifies a mail server responsible for accepting email messages on behalf of a recipient's domain. Therefore, it is likely that the disputed domain name has actually been used in connection with at list one email address.1
In light of the circumstances of the case and in the absence of any evidence showing that the Respondent might have intended to target the Complainant and its trademarks or might have been using the disputed domain name in a misleading manner, apt to confuse Internet users as to the source of the email communications sent from the email address based on the disputed domain name, the Panel finds that the Complainant has also failed to prove that the Respondent has been using the disputed domain name in bad faith.
For the foregoing reasons, the Complaint is denied.
Date: November 5, 2014