WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dialoga Servicios Interactivos S.A. v. dialoga.com s.a.s and Mr. Jheferson Edgar Saldivar Flores
Case No. D2017-0435
1. The Parties
1.1 The Complainant is Dialoga Servicios Interactivos S.A. of Bilbao, Spain, represented by internal counsel.
1.2 The Respondent is dialoga.com s.a.s and Mr. Jheferson Edgar Saldivar Flores of Milan, Italy.
2. The Domain Name and Registrar
2.1 The disputed domain name <dialoga.com> ("Domain Name") is registered with OVH (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 2, 2017. On March 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 20, 2017, 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 Complainant filed an amended Complaint on March 23, 2017.
3.2 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").
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 20, 2017.
3.4 The Complainant also submitted a supplemental filing to the Center by email on April 12, 2017, which primarily addressed correspondence that the Complainant had received on March 31, 2017. As this material would not have been available to the Complainant at the time that the Complaint was filed, the Panel has decided to consider this material in rendering its decision.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on April 28, 2017. 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
4.1 The Complainant is a company based in Spain and is a provider of cloud based telephony systems. It was founded in 2007 and currently operates in most EU countries, as well as in the United States and Mexico.
4.2 The Complainant is the owner of various registered trade marks that incorporate the term "Dialoga". These include:
(i) Spanish trade mark no M2754569 registered on February 9, 2007 in class 38, which takes the following form:
(ii) EU trade mark no 8917155 registered on August 24, 2010 in class 38, which takes the following form:
4.3 The Domain Name was initially registered on October 16, 1998. According to information from the publically available WhoIs database, the Domain Name is currently registered in the name of "dialoga.com s.a.s". This would appear to be a company that was incorporated in Italy. Mr. Saldivar is recorded as the administrative and technical contact for the Domain Name.
4.4 Shortly prior to the filing of the Complaint in these proceedings the Domain Name was used to display a web page that appeared to promote the services of "JS Design". "JS Design" appears to be a business that is operated by Mr. Saldivar. According to his LinkedIn profile, Mr. Saldivar works in the software field and used to work at "Dialoga.com".
4.5 After the Complaint was filed, the webpage operating from the Domain Name changed to one which was in Italian and purported to promote the services of "Dialoga.com". According to the text on that page "Dialoga.com", has provided "Information Technology Solutions since 1990".
4.6 Further, on March 23, 2017 lawyers acting on behalf of "Dialoga.com sas" and Mr. Saldivar sent a letter to the Complainant, denying any allegation of trade mark infringement, but offering to sell the Domain Name to the Complainant for EUR 50,000. This was followed up a few days later by a letter that appears to carry the logo for "Dialoga.com s.a.s" and which was signed by Mr. Saldivar and Mr. Sartori and which, inter alia, repeated this offer of sale.
5. Parties' Contentions
5.1 The Complainant refers to its business and to its various marks including the two trade marks identified in the Factual Background section of this decision. None of the marks relied upon would appear to be word marks. The Complainant claims that "there is no question that [the Complainant's marks and the Domain Name] are identical".
5.2 So far as rights and legitimate interests are concerned, the Complainant claims that "dialoaga.com S.A.S" is "currently a defunct company" and evidences that claim with a report from Dun & Bradstreet that suggested that the company was dissolved on December 30, 2016. The Complainant in its Complaint also makes reference to the fact that the webpage operating from that Domain Name at that time promoted the activities of "JS Design", which appears to be the name of a business operated by Mr. Saldivar. The Complainant also provides a translation of the text appearing on that website, which is said to suggest that Mr. Saldivar / JS Design is offering web design and possibly search engine optimisation services. It is claimed that Mr. Saldivar has no right or legitimate interest in the Domain Name and that his real intention is to profit from the Complainant's rights and reputation in its marks.
5.3 So far as bad faith registration and use is concerned, the Complainant claims that the Domain Name was previously used by dialoga.com S.A.S "whose line of business was related with computer programming, software services and electronic equipment wholesale". This is claimed to have been a "dubious use of the [Domain Name] considering that [this entity] was taking advantage of the reputation of the Complainant considering the nature of its commercial activity".
5.4 It is further alleged that Mr. Saldivar has taken over control of the Domain Name with "no legitimate right over it" with a view either to transferring it to the Complainant or a competitor in return for payment and/or in order to attract people to his own website by creating a likelihood of confusion with the Complainant's marks. This is also claimed to be contrary to European trade mark law.
5.5 The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
A. Identical or Confusingly Similar
6.3 The Panel does not agree with the Complainant that the Complainant's marks and the Domain Name are identical, let alone unquestionably so. In the view of the Panel the comparison to be made is between the entirety of the Domain Name and the entirety of the mark or marks relied upon. That includes so far as the Domain Name is concerned, the ".com" generic Top-Level Domain ("gTLD") element and in the case of the mark any design or figurative elements. In this respect the Panel disagrees with a number of panelists in earlier cases that design elements and the gTLD can be ignored. A further explanation of the Panel's position in this respect is set out in Philip Morris USA Inc. v. Marlboro Beverages / Vivek Singh, WIPO Case No. D2014-1398.
6.4 However, as is often the case, the fact that the Domain Name and relevant marks are not "identical" does not matter. The Domain Name comprises nothing more than the entirety of the textual element of the Complainant's marks together with the ".com" gTLD. Further, although the Panel understands that the word "dialoga" may be an ordinary word or a variant of an ordinary word in Spanish or Italian, it has not been claimed or demonstrated that this word is so "devoid of distinctive character that it is incapable of distinguishing the Complainant's goods and services" (see, for example Souq.com FZ LLC v. Benny Bertelsen, Advanced Digital Solutions, WIPO Case No. D2015-2261).
6.5 In the circumstances, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.6 Given the Panel's conclusions when it comes to bad faith, it is not necessary to consider the issue of rights or legitimate interests any further.
C. Registered and Used in Bad Faith
6.7 At first sight the Complainant has a fundamental problem in these proceedings. It is the fact that although the Complainant does not expressly mention it, the Domain Name was first registered in 1998, which is many years before the Complainant's business was founded.
6.8 For a complainant to succeed under the Policy, it must show both bad faith registration and use. If the complainant's business and marks postdate the registration of the domain name, then a complainant is likely to have difficulty in demonstrating that the domain name was registered to take unfair advantage of the complainant's marks. Further there have been numerous cases under the Policy in which a complainant pursing UDRP proceedings where the domain name pre-dated the complainant's business, has been held to be engaged in Reverse Domain Name Hijacking.
6.9 However, it does not follow that because the initial registration of the domain name pre-dates a complainant's business, that the complaint is bound to fail. First, where a domain name pre-dates a complainant's business and if the complainant can show that the domain name was registered in anticipation of that specific business and associated marks, there can still be bad faith registration; see paragraph 3.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the "WIPO Overview 2.0") and Baruti Investments Ltd v. DPStream, WIPO Case No. DCC2015-0001.
6.10 Second, if a domain name is transferred from one entity to another that is generally considered to be a fresh registration for the purposes of the assessment of bad faith (see paragraph 3.7 of the WIPO Overview 2.0). In ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., WIPO Case No. D2009-0785, this Panel took the view that for these purposes the appropriate test was whether there was a change in registration details for the domain name from one legal entity to another. So, for example, in that case even though the domain name effectively remained under the control of the same individual both before and after the transfer into the name of a company, this was still a fresh registration for the purposes of the Policy.
6.11 This is not a case where it is alleged that the Domain Name was registered in anticipation of a future trade mark right of the Complainant in the term "dialoga". Further, there has been no allegation in this case that the Domain Name was transferred into the name of "dialoga.com s.a.s" after the Doman Name was first registered in 1998 and that bad faith registration should instead be assessed from that transfer date.
6.12 The Complainant does contend that the use by "dialoga.com s.a.s" was "dubious" and in order to take advantage of the Complainant's trade mark rights. However, there is no real attempt by the Complainant to substantiate that allegation. Further, the fact that the Domain Name appears to have been used for a number of years by that company, and yet as far as the Panel is aware, the Complainant made no complaint and commenced no proceedings in this respect, speaks volumes. Given this the Panel proceeds on the assumption in the absence of any real argument to the contrary, that "dialoga.com s.a.s"'s use of the Domain Name was legitimate.
6.13 It is perhaps because of this that the real focus of the Complaint is not the activities of "dialoga.com s.a.s", but the activities of Mr. Saldivar, and in particular the use by Mr. Saldivar in recent months, to promote another business. The difficulty with this is that there appears to have been no change in registration details in this case and the Domain Name remains in the name of "dialoga.com s.a.s". Therefore, even if Mr. Saldivar's use was in bad faith, there does not appear to have been any fresh registration that might have been said to be in bad faith.
6.14 The Panel acknowledges that there is a complication here in that "dialoga.com s.a.s", appears to have been dissolved in late 2016 and that lawyers purporting to act on behalf of "dialoga.com s.a.s" and Mr. Salvidar subsequently offered to sell the Domain Name to the Complaint. Notwithstanding the protestation of those lawyers that "dialoga.com s.a.s" is "not a defunct company", that claim is not further substantiated and the Panel therefore accepts the Complainant's contentions and evidence in this respect. That in turn raises the possibility that the company may no longer own the Domain Name. However, the Panel is not sure this makes a difference.
6.15 First, the Complainant has not argued that somehow the dissolution of "dialoga.com s.a.s" triggers a fresh registration. Second, the Panel is far from convinced that even had this been argued, this would be right.
6.16 Third, there is no real evidence before the Panel as to what has or ought to have happened to the Domain Name in this case. The Complainant has not claimed that ownership of the Domain Name has in fact passed to Mr. Saldivar. There is also no evidence or explanation before the Panel as to what happens in Italian law to the assets of a "S.a.s" (which the Panel understands, although there is no evidence before it on this point, stands for "Società in accomandita semplice" and constitutes a limited partnership business entity) . Does the domain name become bona vacantia (which is what, for example, will happen to the unclaimed assets of a dissolved limited company in the United Kingdom of Great Britain and Northern Ireland) and/or are undistributed assets still held for the benefit of the creditors or owners of the company?
6.17 The Panel accepts that it seems reasonably clear that (a) Mr. Saldivar for a while took control of the Domain Name to promote his business; and that (b) Mr. Saldivar has subsequently offered to sell it to the Complainant. However, it does not follow from the fact that Mr. Saldivar might have taken control of the Domain Name and even offered it to sale that he has any legal right in the Domain Name, let alone that the Domain Name has been re-registered as a result.
6.18 For these reasons the Complainant has failed to show that the Domain Name has been registered in bad faith.
C. Reverse Domain Name Hijacking
6.19 Notwithstanding that the Respondent has put in no Response and has made no request that there be a finding of reverse domain name hijacking, the Panel has also considered whether it should make such a finding in this case. The fact that a Panel is able to make a finding in this respect "of its own motion", is now a well-established feature of the UDRP (see paragraph 4.17 of the WIPO Overview 2.0).
6.20 The reason why the Panel has considered this question is that the Complainant has failed to address in any meaningful sense the issue of bad faith registration. As the Panel has already stated, the need to show bad faith registration is a basic requirement of the UDRP. Therefore, where, as here, the domain name at first sight appears to predate a complainant's business and marks, a Panel is entitled to expect a complainant to acknowledge and address that issue head on (see for example Emazing B.V. v. Joe Pierce, WIPO Case No. D2015-1252). A complainant that fails to do so should not be surprised if a panel then turns its mind to whether a finding of reverse domain name hijacking is appropriate.
6.21 It would appear that the Complainant was not represented by external or specialist counsel. However, the Panel does not consider this to be an excuse, particularly given that the Complainant is clearly a substantial company that could have taken such advice. Further, the Complainant also appears to have the benefit of an in-house legal team, which prepared and filed this Complaint.
6.22 However, ultimately the Panel has decided not to make a finding of reverse domain name hi-jacking. The reason is that the Panel accepts that the status and use made of the Domain Name following the dissolution of dialogia s.a.s is something that calls out for an explanation. Notwithstanding that Mr. Saldivar was named as a Respondent in these proceedings and appears to have engaged lawyers to correspond with the Complainant after the Complaint was filed, he has offered no coherent explanation as to what has occurred. In particular, Mr. Saldivar has also offered no explanation as to why a Domain Name that incorporates the term "dialoga" has been used for website to promote a business under the different name of "JS Design" or on what basis he has offered the Domain Name for sale. Further, the recent change of the webpage operating from the Domain Name back to one that appears to promote the activities of "dialoga.com" is also strange and suspicous.
6.23 In short, the Panel is left in a position where it does not believe that it has all the relevant facts before it. It has, therefore, decided in the absence of all these facts, that it would be inappropriate to make a reverse domain name hijacking finding against the Complainant.
7.1 For the foregoing reasons, the Complaint is denied.
Matthew S. Harris
Date: May 12, 2017