WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lasian Tecnología del Calor, S.L. v. Jorge Aguiar
Case No. D2015-0935
1. The Parties
The Complainant is Lasian Tecnología del Calor, S.L. of Zaragoza, Spain, represented by Azagra Patentes y Marcas, S.L., Spain.
The Respondent is Jorge Aguiar of Viseu, Portugal, represented by Cuatrecasas, Gonçalves Pereira, Portugal.
2. The Domain Name and Registrar
The disputed domain name <lasian.com> is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint, in Spanish, was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2015. On June 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 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. In response to a notification by the Center that the Complaint was submitted in a language that differed from the language of the registration agreement, (namely English, as advised by the Registrar), the Complainant filed a request in order for Spanish to be the language of proceedings on June 8, 2015.
Without prejudice to the Panel’s authority to decide on the Complainant’s request, the Center verified that the Complaint, as filed in Spanish, 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, in both Spanish and English, the Complaint to the Respondent, and the proceedings commenced on June 18, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2015. The Response, in English, was filed with the Center on July 8, 2015.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on July 17, 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.
On August 5, 2015, the Panel issued Procedural Order No. 1 directing:
the Complainant to:
a) provide evidence that the Complainant’s predecessor FATECA, S.L. was a licensee from 1989 until the time of acquisition by assignment, of the LASIAN Spanish trademark registrations Nos. 956088 and 1125498, as asserted in the Complaint; and
b) provide a translation into English of the communications in Portuguese found in Annexes 11, 13, 15, and 17 of the Complaint by August 18, 2015;
the Respondent to:
a) provide evidence that the Complainant, and/or any prior owner of the trademark registrations relied on the Complaint, consented to the Respondent’s registration or use of the disputed domain name, as asserted in the Response; and
b) provide evidence of the legal incorporation, duration, and equity composition of LASIAN – MATERIAL PARA CLIMATIZACAO, S.A. by August 18, 2015.
The Panel also invited Complainant and Respondent to provide comments on each other’s supplementary submissions, by email to the Center, by August 22, 2015.
On August 7, 2015, the Respondent requested a fifteen-day extension to provide comments on the Complainant’s supplementary submission, which had yet to be filed.
On August 18, 2015, the Complainant, and the Respondent, filed supplementary submissions by the deadline set in the Procedural Order No. 1.
On August 19, 2015, the Panel issued Procedural Order No. 2 refusing Complainant’s request as unwarranted, and granting instead an extension through August 27, 2015.
The Complainant and the Respondent filed rebuttal arguments on each other’s supplementary submissions by the extended deadline.
The Panel is unpersuaded by the evidence and argument submitted by the Complainant to support its request for Spanish to be the language of the proceeding instead of English, which in turn governs the disputed domain name’s registration agreement, as already noted.
The Complainant’s native language is Spanish while the Respondent’s is Portuguese. The case file shows that the communications originating from each party were made in their respective native languages. Moreover, the Panel notes that the Response was filed in English, which evidences Respondent’s opposition to the Complainant’s change of language request. In the interests of procedural efficiency, the Panel decides to accept the Complaint, as filed in Spanish, without requesting its translation into English, but to render the Decision in English being the language of the proceeding.
4. Factual Background
The Complainant manufactures and markets heating products throughout Spain. The Complainant was previously known as FATECA, S.L. until December 13, 2004. The Complainant’s website is located at “www.lasian.es”.
The Complainant’s LASIAN marks are registered in Spain since 19801 , the European Community since 2006, and internationally since 20002 , covering Portugal, among other countries designated under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.
The Complainant’s LASIAN marks are registered in international classes 7 (machines and machine tools; motors and engines, except for land vehicles; machine coupling and transmission components, except for land vehicles; steam engine boilers), and 11 (heating boilers, central heating radiators, boiler pipes for heating installations, heat and steam accumulators, air heaters, feeding apparatus for heating boilers, heating installations, apparatus for heating, steam generating, refrigerating, drying, ventilating, water supply and sanitary purposes), and in some cases 35 (advertising, business and industrial management, supply and sales for third parties, import-export, business administration, office work, issuing of franchises).
For its part, the Respondent registered the disputed domain name on June 15, 2000.
On January 16, 2001, the Respondent, whose full name is Jorge Manuel Fonseca Aguiar, incorporated a company in Portugal by the name of LASIAN – MATERIAL PARA CLIMATIZACAO – (first incorporated as a limited liability company and then transformed into a joint stock company). The company changed its name on December 12, 2007, to ZANTIA –CLIMATIZACAO S.A. and continues to operate under that name until now.
Sometime in or after 1999, the Respondent became a distributor of the Complainant’s LASIAN products in Portugal, and still operates as such.
The website at the disputed domain name was used to offer and market LASIAN products. Currently, the disputed domain name redirects the visitor to “www.zantia.com”, where products of the same type as those manufactured by the Complainant, are offered for sale to consumers in Portugal, France, and Spain. The marks associated with the products advertised on Respondent’s website are not clearly indicated.
After exchanging some communications with the Respondent on the subject of entitlement to the disputed domain name, the Complainant commenced the instant proceeding.
5. Parties’ Contentions
In summary, the Complainant contends as follows:
(i) The disputed domain name is totally identical to the Complainant’s registered marks despite the addition of the “.com” generic Top-Level Domain (“gTLD”), which is irrelevant for the purposes of comparison between the signs;
(ii) The Respondent has not been granted a license or authorization to use the Complainant’s LASIAN marks;
(iii) Since 2007, the Respondent is no longer a distributor of the Complainant’s LASIAN products in Portugal;
(iv) The Complainant’s mere tolerance to the Respondent’s conduct does not give rise to rights and legitimate interests in the disputed domain name, all the more so since the Policy does not establish a limitation period for the institution of proceedings;
(v) The Complainant’s holds prior trademark rights dating back to October 25, 1980, while the Respondent registered the disputed domain name on June 15, 2000;
(vi) The Respondent registered the disputed domain name in bad faith given its knowledge of the LASIAN trademark in 1999, when it was seeking to become Complainant’s distributor in Portugal;
(vii) The Respondent’s redirection of the disputed domain name to “www.zantia.com” is evidence of bad faith use per the Policy.
In summary, the Respondent submits that:
(i) The allegations made in the Complaint are either false, incorrect, out of context, or unknown to the Respondent;
(ii) It is false that the Complainant is claiming transfer of the disputed domain name since 2007;
(iii) Although the disputed domain name is identical to the LASIAN trademark, the Complainant is not the owner of the Spanish trademark registrations 956088 and 1125498 since the trademark certificates annexed to the Complaint show Ms. María del Carmen Laguna Díaz, Mr. Angel Laguna Mateo, and Ms. Carmen Díaz González as co-owners of the said trademark registrations;
(iv) The other trademark registrations referred to in the Complaint were registered at a later date than that of registration of the disputed domain name;
(v) At the time Respondent acquired and registered the disputed domain name, there were negotiations with the Complainant, whose business name was until December 2004, FATECA S.L., regarding a business collaboration where the Respondent would sell LASIAN products in Portugal;
(vi) The initial owners of the Spanish trademark registrations gave express consent to the Respondent to use the LASIAN trademark in connection with the Respondent’s distributorship of LASIAN products in Portugal;
(vii) The interconnection between the name/brand of the products, the name of the company and the domain name was always known by the Complainant and the trademark owners, for it was expressly discussed and never contested during 16 years of business relationship;
(viii) At the beginning, LASIAN was a very small and unknown mark and its owners wanted the brand to grow in order to increase sales, which was exactly what happened once the Respondent started to use the mark as part of a common strategy that opened other markets for the Complainant;
(ix) Annex 14 of the Complaint actually refers to the Respondent as “Lasian Portugal”;
(x) Contrary to the Complainant’s assertion, the Respondent continues to sell and distribute LASIAN products;
(xi) When designing the layout of its new website at “www.zantia.com”, the Respondent was extremely careful to avoid any confusion with the Complainant’s website at “www.lasian.es”.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:
i. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii. the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
As explained in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the test for confusing similarity under the UDRP involves a straightforward visual or aural comparison between the trademark at issue and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent Internet user confusion.
The Respondent admits that the disputed domain name is identical to the Complainant’s mark. The Respondent contests however that the Complainant is not the owner of the Spanish trademark registrations relied on in the Complaint. As verified by the Panel, the Complainant is shown in the official trademark portals as the current owner of record for the Spanish trademark registrations, the community trademark registrations, and the international trademark registrations asserted in the Complaint.
Accordingly, the Panel finds that the Complainant has satisfied the threshold of Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
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 Complainant asserts that the Respondent is not a licensee of its LASIAN marks. The Respondent counters that the initial owners of the Spanish LASIAN trademarks gave him express consent, though orally, to use the LASIAN marks in Portugal with a view to opening up the market for LASIAN products outside of Spain.
The Respondent claims that the Complainant’s predecessor FATECA, S.L. endorsed the Respondent’s incorporation of LASIAN – MATERIAL PARA CLIMATIZACAO, LTDA, to operate as the Complainant’s distributor in Portugal. The Complainant acknowledges these facts as true, but states that the Respondent is no longer its distributor since 2007, a statement that is vigorously contested by the Respondent.
On the facts of this case, the Panel lends credibility to the Respondent’s contention that the incorporation in Portugal of LASIAN – MATERIAL PARA CLIMATIZACAO, LTDA was approved, either expressly or impliedly, by FATECA, S.L. and/or the former owners of the LASIAN Spanish trademark registrations. A green-light authorization to the Respondent’s carrying out of business activities to promote the LASIAN brand outside of Spain, may well have encompassed the registration and use of the disputed domain name as part of the promotion and marketing of LASIAN products in countries other than Spain, for the economic benefit of both Respondent and Complainant..
The Complainant failed to produce evidence showing that it promptly objected to the Respondent’s registration of the disputed domain name back in 2000 or to its continuing use since. To the contrary, the Panel notes the email communication of July 18, 2012, whereby the Complainant conveys its interest to get the disputed domain name from the Respondent, by reasons of international expansion (as opposed to legal entitlement), in the belief that the disputed domain name was no longer of use to the Respondent, who was already known as “Zantia”, and expressly approving that the Respondent take hold of the disputed domain name <lasian.pt> for the purposes of linking it to its “www.zantia.com” website.
The Complainant also failed to show that whatever authorization it gave to Respondent to use the LASIAN trademark in Portugal did not entail the registration and use of the disputed domain name. In the circumstances of this case, the Panel finds that the Complainant’s bare denial of having ever consented to the Respondent’s registration of the disputed domain name does not suffice in order for the Complainant to carry its burden under the instant element. See BRB Brandenburger Vermarktungs und Dienstleistungsgesellschaft MBH v. Helds Discount Knives, WIPO Case No. D2009-1337 (whilst the convention under paragraph 4(a)(ii) of the Policy is for the complainant to state a prima facie case that the respondent may answer in the terms of paragraph 4(c) of the Policy, nevertheless the onus of proving that the respondent does not have a right or legitimate interest remains with the complainant). The Panel takes note that the Respondent’s distributorship of LASIAN products did not terminate in 2007, as alleged by the Complainant. Two pieces of evidence tendered by the Respondent are noteworthy in this regard.
In an email (in Spanish3 ) dated November 6, 2009, the Complainant’s CEO Santiago Andrés wrote to the Respondent in the following terms:
In these times of crisis, you have been able to gain market share since you are growing this year, at least with us, and on top of that you are doing charities, you are the best […]
On the other hand, I have not forgotten about the solar plaques. I will give you price and options shortly.
Further, the Respondent produces a letter received from the Complainant (in the Complainant’s letterhead) on October 16, 2014, whereby the Complainant invoices the Respondent’s company ZANTIA –CLIMATIZACAO S.A for a number of products, totaling EUR 57,081.66, with a due date for payment being January 27, 2015.
In the Panel’s view, the above circumstances justify rights or legitimate interests under paragraphs 4(c)(i) and 4(c)(ii) of the Policy during all the years that the Respondent operated under the LASIAN – MATERIAL PARA CLIMATIZACAO, LTDA company name. See Stella IP Pty Ltd. v. Paul Klerck, Info Link, Info-link, WIPO Case No. D2008-1149 (the totality of the evidence provided by the respondent, and the weaknesses in the evidence provided by the complainant, strongly indicates that the respondent has established rights and legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy, since the respondent registered and used the disputed domain names in connection with its business carried out for the complainant and, previously, for other entities).
The Panel is less convinced however about the continuity of those rights or legitimate interests from the time the Respondent changed its name to ZANTIA - CLIMATIZACAO S.A., and especially from the moment it began to redirect traffic to “www.zantia.com”, even if the Complainant had once approved the redirecting of the domain name <lasian.pt> to the Respondent’s “www.zantia.com” website.
Ultimately, the Panel need not decide this issue as it became clear to it that the Complaint fails under paragraph 4(a)(iii) of the Policy. See Hotel Plaza Limited, Parkroyal Hospitality Management Pte Ltd. (PHM) v. DomainWorks Inc./PARKROYAL.COM c/o Whois IDentity Shield/Vertical Axis, Inc., WIPO Case No. D2008-1760 (“In light of our finding under the next head in relation to the issue of bad faith registration and use, it is unnecessary for the Panel to address the topic of legitimate rights and interests”).
Consequently, the Panel declines to enter a finding on paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a complainant to show that the domain name has been registered and is being used in bad faith in order to be successful in its complaint. Paragraph 4(b) of the Policy sets forth a number of non-exclusive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have registered or…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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] 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 [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] website 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 [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”
The Complainant puts forward its prior trademark rights as a basis for inferring the Respondent’s bad faith. The Policy however is only concerned with disputes arising in a cybersquatting context, that is to say abusive registration and use of a disputed domain name.
Based on the submissions and evidence on file, the Panel is convinced that the dispute subjected to this proceeding is not one involving cybersquatting, but rather one arising from a commercial relationship (which dates back to 1999) between the parties. See Prevost Car Inc. and Volvo Group Canada Inc. v. Lori Cooper, WIPO Case No. D2011-1427 (under the circumstances of this case, which include over a decade of use of the domain name in connection with sales of legitimate PREVOST-branded vehicles, the panel views the question of the parties’ contractual rights and obligations, if any, relating to the consent “agreement”, to be well beyond the scope of these proceedings).
Further, as elaborated in section 6.B supra, the fact that the Complainant has presumably consented, or at the very least acquiesced, to the Respondent’s incorporation and continuing operation of a company carrying the name LASIAN suggests that the Respondent did not register the disputed domain name in bad faith. See F. Korbel & Bros. v. Richie Ann Anderson d/b/a Triple Ranch d/b/a TBR Quarter Horses, NAF Case No. 1080253 (it appears more probable than not that respondent believed that it was acting with the knowledge and consent of complainant. If complainant consented, or even impliedly consented to the at-issue domain name registrations, then respondent cannot be held to have registered the domain names in bad faith).
So even if the Panel does not endorse the Respondent’s redirection of traffic from the disputed domain name to “www.zantia.com”, since that might create confusion amongst Internet users, the Panel finds that the Respondent did not register the disputed domain name in bad faith.
Accordingly, having carefully weighed up all of the evidence from both parties, and mindful that the burden of proof always remains with the Complainant, the Panel concludes that the Complainant has not discharged its burden in connection with paragraph 4(a)(iii) of the Policy.
For the reasons set out above, the Complaint is denied.
Reynaldo Urtiaga Escobar
Date: September 14, 2015
1 Spanish trademark registrations 956088 and 1125498 for LASIAN were initially filed and jointly owned by Ms. María del Carmen Laguna Díaz, Mr. Angel Laguna Mateo, and Ms. Carmen Díaz González. These two trademarks are currently in the name of Complainant.
2 International trademark registration No. 733646 for LASIAN was originally filed and owned by Ms. María del Carmen Laguna Díaz. It is currently in the name of the Complainant.
3 The original wording is as follows: “Hola Jorge, En estos momentos de crisis, eres capaz de ganar cuota de mercado, ya que este año estas (sic) aumentando y creciendo, por lo menos con nosotros, y además haces obras de caridad, eres el mejor… Asimismo aprovecho para decirte que pronto te concreto más cosas de las placas solares, no me he olvidado, te daré precio y opciones. Saludos cordiales (logotipo de LASIAN) Santiago Andrés, Director General”.