WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allglass Confort Systems, S.L. v. Semi, Arirang C&T
Case No. D2015-0423
1. The Parties
The Complainant is Allglass Confort Systems, S.L. of Alhaurin de la Torre, Malaga, Spain, represented by Falcón Abogados, Spain.
The Respondent is Semi, Arirang C&T of Daegu, Daegu, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <todocristal.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed in Spanish with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2015. On March 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 11, 2015, 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 and confirming that the language of the Registration Agreement was English. On April 27, 2015, the Center requested clarification concerning the registrant name and informed that the Complaint was administratively deficient. On the same date, the Center informed the Parties that the Complaint had been submitted in Spanish whereas the language of the registration agreement for the disputed domain name was English. The Center requested the Complainant to provide (1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in Spanish; or (2) submit the Complaint translated into English; or (3) submit a request for Spanish to be the language of the administrative proceedings. On April 30, 2015, the Complainant filed an amended Complaint and clarified the remedy requested. On May 5, 2015, the Complainant filed an amended Complaint translated into English.
The Center verified that the Complaint together with the amended and translated 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 May 18, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2015.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on June 22, 2015. 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.
The due date for the Decision in this matter was later extended to July 20, 2015.
4. Factual Background
Allglass Comfort Systems S.L. is a Spanish corporation dedicated to the manufacture, and commercialization of enclosure of spaces with glass systems.
The Complainant is the owner of the trademark TODO CRISTAL ALLGLASS (the “TODOCRISTAL ALLGLASS trademark”).
As filed in all jurisdictions, the mark consists of a square design with the wording “todocristal allglass”.
The TODOCRISTAL ALLGLASS trademark is registered in the following jurisdictions:
- Spain, Registration No. 2867583, granted on October 1, 2009 for classes 6, 19 and 35.
- Community Trademark Registration No. 010730968, granted on July 26, 2012 covering classes 6, 19, and 37.
- United States of America, Registration No. 4411883, granted on October 1, 2013, for class 6.
- Mexico, Registration No. 1189554, granted on November 8, 2011, for class 6.
- International Registration No. 1206029, granted on March 25, 2014 for class 6, covering China, India, Japan, the Republic of Korea, and Singapor, and has been extended to the Russian Federation and Morocco.
The Complainant is currently using the domain name <allglasstodocristal.com> to offer its products. This domain name is registered in the name of the director of the Complainant.
The website associated with the disputed domain name contains pay-per-click ads. The disputed domain name was registered on October 19, 2014.
5. Parties’ Contentions
The Complainant states that it has registered the TODOCRISTAL ALLGLASS trademark in several jurisdictions.
The Complainant argues that the disputed domain name registered by the Respondent is identical to the trademarks and domain name of the Complainant, in respect of the expression “todocristal”, differing only in that the distinctive trademarks of the Complainant include, apart from the expression “todocristal”, the expression “allglass”, which is precisely the translation into English of the term “todocristal”.
The Complainant submits that there is no evidence that suggests that the Respondent is engaged in activities related to the glass industry.
The disputed domain name contains a note stating that the domain is for sale and, if an Internet user clicks on “todocristal.com domain is for sale” redirects to another website where it is possible to place bids for that domain, which must be greater than the amount of sixty dollars (USD 60). The Complaint states that this fact indicates that the Respondent has no legitimate interest in the disputed domain name, and that there is only an economic interest, consisting in selling the disputed domain name to the highest bidder.
The Complainant states that the disputed domain name does not host its own content: the Respondent has parked the disputed domain name with a domain parking website known as “sedo.com” where there are advertising links of companies and individuals engaged in “activities related to the domain name”. The Complainant states that consumers are diverted to pages of various companies, including companies engaged in the enclosure of spaces with glass systems, which are competitors of the Complainant.
The Complainant also states that the Respondent does not own any trademark containing the term “todocristal”.
The Complainant argues that the disputed domain name has been registered and is being used in bad faith: the registration was carried out with the sole purpose of making a sale whether to the Complainant or to any competitor who is involved in the glass space enclosures industry for an amount superior to sixty dollars (USD 60).
Finally, the Complainant states that the Respondent has intentionally attempted to attract Internet users to its website for financial gain by creating a likelihood of confusion with the trademark of the Complainant, in terms of services and of the similarity in the name of both. The Complainant argues that the disputed domain name does not host any of its own content, the Respondent has parked the disputed domain name at a domain parking website known as “sedo.com”, which has links to websites of competitors of the Complainant. The Complainant concludes that the use of the domain name parking system by the Respondent serves a dual purpose: on the one hand, to earn money through the disputed domain name which is not used, and on the other hand, to sell the disputed domain name at the highest possible price.
The Complainant requests the transfer of the disputed domain name or alternatively the cancellation of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and 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 service mark 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.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g., by failing to file a response), as the Panel considers appropriate.
Preliminary issue: Language of the Proceeding
The Panel notes that the language of the Registrar Agreement as confirmed by the Registrar is English. The Complainant has requested Spanish to be the language of the proceeding but filed translation into English of the Complaint. In accordance with its general powers, paragraph 11 of the Rules, the Panel considers that it is fair equitable and procedural efficient to continue the present proceeding in English.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Panel finds that the Complainant owns trademark rights in the TODOCRISTAL ALLGLASS trademark, which predates the registration of the disputed domain name.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name contains the first part of the TODOCRISTAL ALLGLASS trademark. The fact that the Complainant's trademark contains an additional component (“all glass”) means that the disputed domain name is not identical to the whole of the Complainant’s trademark. However, the disputed domain name’s identity with the Spanish-language component of the Complainant’s trademark means that the disputed domain name is confusingly similar to the trademark. See Kabushiki Kaisha Tenga v. Ashantiplc Limited, WIPO Case No. D2009-0422.
The Panel therefore accepts that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights and that it has fulfilled the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
However, by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(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.”
If the Respondent demonstrates any of these elements or provides any other evidence that shows it has a right or legitimate interest in the disputed domain name, the Complainant will have failed to discharge its onus and the Complaint will fail with respect to the disputed domain name. Indeed, it is well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second edition (“WIPO Overview 2.0”), paragraph 2.1, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden production shifts to come forward with appropriate allegation or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
In the present case the Respondent failed to submit a Response. The Complainant has contended, and the Respondent has not denied, that the Respondent is not licensed or otherwise authorized by the Complainant to use the trademark TODOCRISTAL ALLGLASS. The Complainant also states that the Respondent does not own any trademark containing the term “todocristal”.
Furthermore, “todo cristal” means “all glass” in English. As such, it can be considered a generic descriptor of the Complainant's business.
Domain name registrants are generally recognized to have a right or legitimate interest on the registration of domain names incorporating common words and descriptive terms on a “first come, first served” basis if they were chosen by the registrant for their generic meaning. See Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, WIPO Case No. D2000-0161; EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096; and Asphalt Research Technology, Inc. v. National Press & Publishing, Inc., WIPO Case No. D2000-1005.
Thus, the Respondent could conceivably have legitimate interests in using the disputed domain name. Those possibilities are addressed below in connection with the “bad faith” element of the Complaint. In light of what is expressed below, and , in the absence of any Response from the Respondent, there is no need to have a conclusion.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, if the following circumstances, in particular but without limitation, are found by the Panel to be present, they shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from using the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent’s website or location.
The Complainant must demonstrate the conjunctive requirement that the Respondent registered the disputed domain name in bad faith and continues to use it in bad faith.
In this case, however, the Panel finds that the Complainant has not discharged its burden of establishing that the Respondent registered the disputed domain name in bad faith.
The Panel, after considering the totality of the circumstances in the record, does not find the evidence on balance sufficient to demonstrate that the Respondent registered the disputed domain name with the aim of profiting from and exploiting the Complainant’s rights in the TODOCRISTAL ALLGLASS trademark. A mere reference by the Complainant of paragraph 4(b)(iv) of the Policy is not sufficient. While the Complainant has established registration rights in its trademark sufficient to invoke the Policy, the part of the trademark used in the disputed domain name nonetheless consists of the terms “todo cristal” which is essentially a generic descriptor of the Complainant’s business.
The Complainant appears also to be relying on paragraph 4(b)(i) of the Policy, but that argument fails because there is no proof that the Respondent registered the domain name primarily for the purpose of selling it to the Complainant or to a competitor of the Complainant (as opposed to the more likely scenario for the Panel that the Respondent intended to sell the disputed domain name to an interested party on the basis of the descriptive meaning of the terms “todo cristal”). Neither mere registration, nor general offers to sell, a domain name which consists of generic, common, or descriptive terms can be considered acts of bad faith in the absence of evidence that the Respondent was targeting the Complainant. See Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016.
This is, in fact, the fundamental weakness of the Complainant’s arguments for bad faith. The record simply does not support an inference that the Respondent must have registered the disputed domain name in an effort to exploit the Complainant’s trademark.
There is no other basis on which the Panel could find that the disputed domain name has been registered, and is being used, in bad faith. As the Complainant must prove all of the three grounds set out in paragraph 4(a) of the Policy, the Complaint must therefore fail.
For all the foregoing reasons, the Complaint is denied.
Pablo A. Palazzi
Date: July 20, 2015