WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barium AB v. CDN Properties Incorporated
Case No. D2014-1541
1. The Parties
The Complainant is Barium AB of Göteborg, Sweden, represented by Domain and Intellectual Property Consultants, DIPCON AB, Sweden.
The Respondent is CDN Properties Incorporated of Panama City, Panama, represented by WEBLEGAL, Italy.
2. The Domain Name and Registrar
The disputed domain name <barium.com> is registered with Internet.bs Corp. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 9, 2014. On September 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 15, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2014. The Response was filed with the Center on October 6, 2014.
The Center appointed Alfred Meijboom as the sole panelist in this matter on October 13, 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 Swedish company that provides tools and services for creating value-adding and sustainable business process solutions. It owns a trademark registration for the Community word mark BARIUM, applied for on December 20, 2011 and registered under number 010508513 for various goods and services in classes 9, 35, and 41 on May 3, 2012 (the "Trademark"). The Complainant is also the holder of the domain name <barium.se>.
The Respondent is a domain name trading company, holding a large number of domain name registrations, including the disputed domain name. According to the information provided in the publicly available WhoIs information, the disputed domain name was created on November 5, 2001. Parties disagree regarding the date on which Respondent became the holder of the disputed domain name. The disputed domain name directs to a website that hosts advertising links.
5. Parties' Contentions
The Complainant puts forward that the disputed domain name is identical to the Trademark as it is reproduced in the disputed domain name in its entirety.
Further, the Complainant claims that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not have trademark rights for BARIUM, is not a licensee of the Complainant, nor has it obtained permission of the Complainant to register the disputed domain name. There is also no evidence that the Respondent is commonly known under or is making a legitimate noncommercial or fair use of the disputed domain name. The Respondent only uses the disputed domain name for hosting of advertising links, while according to the Complainant it has the exclusive right to use the Trademark for advertising.
Third, the Complainant argues that the disputed domain name has been registered and is being used in bad faith. The Trademark was registered before the Respondent became the owner of the disputed domain name in 2012. The Respondent was well aware of the Trademark when registering the disputed domain name and tries to take advantage of the Trademark in order to draw traffic to its website. The Respondent wants to commercially profit from the likelihood of confusion between the Trademark and the disputed domain name.
The Respondent does not challenge the Trademark as such, but refers to the generic character of the word "Barium" being a chemical element of the Mendeleev Periodic Table of Elements No. 56 with the "Ba" code as well as the Latin name for the southern Italian city Bari.
The Respondent contends that it does have rights or legitimate interests in the disputed domain name. The legitimacy of its business, trading generic and descriptive domain names, is perfectly acknowledged nowadays, also in several UDRP decisions. The advertising links on the website accessible through the disputed domain name do not relate to Complainant's services. The Respondent alleges to have registered the disputed domain name because of the intrinsic meaning of "Barium", in the sense of the ancient Roman name of the Italian city Bari. The Respondent also owns the domain name <bari.com> and, through an affiliated company, <puglia.com>, which refers to the southern Italian region of the same name. The domain name <puglia.com> is used for a website that promotes that region. The ownership of the domain names <bari.com> and <puglia.com> demonstrates "the purported and almost actual use of the disputed domain name in connection with a travel-related business". Using ancient Latin geographic names as domain names related to tourism is also common practice according to the Respondent.
The Respondent refers to riposa AG v. CDN Properties Incorporated, WIPO Case No. D2012-2331, in which the Respondent was also the respondent. In that case the panel held that the Complainant's burden of proof with regard to the absence of rights or legitimate interests is "more crucial" in cases in which the Complainant's trademark consists of a "common generic word".
The Respondent contests that it has registered and is using the disputed domain name in bad faith. The Respondent considers the Complainant's allegations that the Respondent was well aware of the Trademark and the Complainant's ".se" domain name, and that Respondent takes unfair advantage of the Trademark, as groundless. The Respondent did not acquire the disputed domain name only in 2012. With reference to paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), the Respondent argues that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate. The Respondent asserts that the disputed domain name has always been in the same hands since 2003, as the previous owner of the disputed domain name is the sole shareholder of the Respondent. In support of this, the Respondent has submitted a statement of its director and treasurer to that effect and an extract of the Respondent's registration in the Panamanian company register.
The Respondent asserts that the Complainant has filed its Complaint in bad faith and has requested the Panel to declare that the Complainant has committed an attempt of Reverse Domain Name Hijacking.
6. Discussion and Findings
A. Identical or Confusingly Similar
It is established case law that the top level domain ".com" may be disregarded in assessing whether the a trademark is identical or confusingly similar to a domain name (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762). The disputed domain name is identical to the Complainant's Trademark, which has also not been disputed by the Respondent. Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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. This condition is met if the Complainant makes a prima facie case that the Respondent has no such rights or interests, and the Respondent fails to rebut it (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and WIPO Overview 2.0, paragraph 2.1).
The Complainant has put forward that the Respondent is not known under the disputed domain name, does not have a trademark which is identical or similar to the disputed domain name, the registration of the disputed domain name has not been authorized by the Complainant and that the disputed domain name is being used for a website with advertising links. This means that the burden of production shifts to the Respondent to demonstrate rights or legitimate interests in the disputed domain name (e.g., Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011).
Although the Respondent has not submitted firm evidence that it has rights or legitimate interests in the disputed domain name, such rights or legitimate interests can also not be excluded either. Although the word "barium" as such does not necessarily have a descriptive or generic character, in certain ways it is descriptive (chemical element of the Mendeleev Periodic Table of Elements No. 56 with the "Ba" code) and also a dictionary word (Latin reference to the Italian city Bari). Furthermore, the Respondent also owns the domain name <bari.com> and it cannot be excluded that the Respondent in that context has also registered and intends to use the disputed domain name with the intention to use it in a way consistent with its "dictionary or descriptive" meaning.
In any event, given that the third requirement is not satisfied in this case (as further explained below), it is not necessary for the Panel to make a final determination on the question whether the Respondent has rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant has claimed that the Respondent registered the disputed domain name after the registration date of the Trademark. However, the Respondent asserts that the disputed domain name registration should be considered to predate the Trademark registration, as the Respondent can be equated with the previous disputed domain name holder who registered the disputed domain name long before 2012 and who is the sole shareholder of the Respondent. Although the documents submitted by the Respondent could have shed a better light in this respect, they, taken together with all the facts and circumstances relied on by the Respondent, make it seem probable that there has indeed been an unbroken chain of underlying ownership comprising the Respondent and the previous registrant of the disputed domain name. In the circumstances, the Complainant's claim that the Trademark registration predates the registration date of the disputed domain name and that the Respondent was well aware of the Trademark must fail.
In any event, even assuming that the Trademark predates the disputed domain name registration by the Respondent, under the following circumstances of this case the Panel finds that, on balance, there are still insufficient grounds to find that the Respondent registered and is using the disputed domain name in bad faith:
- the Complainant has not put forward, let alone substantiated, that the Trademark has a strong reputation outside Sweden, or that it is an internationally operating company whose business under the Trademark is known globally;
- the Respondent is a Panama based company that claims to own a large number of "generic" and descriptive domain name registrations;
- the disputed domain name has a descriptive and generic nature to certain extent;
- the Respondent does not use the disputed domain name to offer goods or services which are similar to or compete with the Complainant's services.
On the present record, and based in limited pleaded exchanges between the parties, the Panel is unable to find that the Respondent was aware of the Trademark and/or the Complainant's business when it registered the disputed domain name. This finding is not affected by the Complainant's argument that it has been using the Swedish domain name <barium.se> for almost 10 years. Moreover, the Panel is also unable to find that the Respondent is trying to take advantage of the Trademark in order to draw traffic to its website, especially considering the fact that the disputed domain name does not appear to have been used to offer goods or services which are similar to or compete with the Complainant's services.
The Panel finds that the requirement of bad faith registration and use of the disputed domain name pursuant to paragraph 4(a)(iii) of the Policy has not been met.
D. Reverse Domain Name Hijacking
It is not in dispute that the disputed domain name is identical to the Trademark owned by the Complainant, and the Panel has expressed doubts as to whether the Respondent has rights or legitimate interests in the disputed domain name. For these reasons the Panel finds that the present record does not support the Respondent's claim of Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
Date: October 24, 2014