WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Prontopro srl v. Erik Stadler, Pronto
Case No. D2017-2465
1. The Parties
Complainant is Prontopro srl of Milano, Italy, represented by SCF Studio Legale, Italy.
Respondent is Erik Stadler, Pronto of Atlanta, Georgia, United States of America (“United States”), represented by John Berryhill Ph.d., Esq, United States.
2. The Domain Name and Registrar
The disputed domain name <prontopro.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2017. On December 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 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 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2018. On December 26, 2017, Respondent requested an extension of the Response due date. In accordance with the Rules, paragraph 5(b), the due date for Response was extended to January 12, 2018. The Response was filed with the Center January 12, 2018. On February 20, 2018, Complainant filed a “Supplemental Document” and later that same day, Respondent filed a “Provisional Reply”. Neither of these supplemental filings was requested or authorized by the Panel.
The Center appointed Christopher J. Pibus, Nicoletta Colombo and Douglas M. Isenberg as panelists in this matter on February 19, 2018. The Panel finds that it was properly constituted. Each member of 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. Preliminary Issue
Complainant and Respondent have submitted unsolicited additional materials in this proceeding. As set forth in section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel.” Accordingly, the Panel rejects the supplemental filings in this case as the Panel itself did not request additional information, and no extraordinary circumstances were identified which would otherwise justify these additional submissions.
5. Factual Background
Complainant is a company organized under the laws of Italy, where it was incorporated on March 6, 2015. Complainant carries on business as an online portal for professional services, connecting customers in need of services to professionals in a wide range of fields. Complainant registered a number of domain names which are principally comprised of the mark “prontopro”, including:
All of these domain names were registered on September 14, 2014.
Complainant actually began using the trademark PRONTOPRO through its related website “www.prontopro.it” in March 2015.
Complainant owns registered rights to a design version of the PRONTOPRO mark, namely: European Union Trademark Registration No. 13846621 for PRONTOPRO (figurative) which was filed on March 18, 2015, and registered on July 1, 2015. Complainant also holds pending trademark applications for other PRONTOPRO figurative marks in Brazil and Chile, all of which were filed in December 2016.
Respondent Erik Stadler, Pronto, is an individual located in Atlanta, Georgia, United States who is one of the principals and founders of Pronto Technologies LLC. Respondent incorporated his business on February 7, 2015, to develop a professional referral service in the Atlanta area. Initially Respondent purchased (from a reseller) the domain name <prontoapp.com> on February 9, 2015, and used it in association with a mobile application for professional home services. Subsequently, Respondent purchased from resellers the domain name <prontopro.com> (on December 29, 2015). Respondent then migrated his website from <prontoapp.com> to the disputed domain name and continued his referral business in association with that domain name in the Atlanta area.
6. Parties’ Contentions
Complainant submits that it holds rights in the trademark PRONTOPRO by virtue of its European Union Trademark Registration No. 13846621. The disputed domain name is noted to be identical to Complainant’s trademark in its principal aspects. The confusion is said to be enhanced because of the similarity of the home referral services offered by both parties. With respect to the absence of rights or legitimate interests on the part of Respondent, Complainant submits that Respondent has never been granted any license or authorization to use the PRONTOPRO mark. Complainant relies on the fact that Respondent operates its business in a similar field to that of Complainant and exploits a marketplace referral system which is also the same as that of Complainant. Respondent is alleged not to be making a bona fide offering of services because he is using an identical and confusingly similar name to direct users to his website to generate traffic and commercial revenue.
Finally, Complainant submits that Respondent has registered and used the disputed domain name in bad faith. Complainant notes that although the domain was first registered in 2003, the relevant date for determining bad faith is the date that Complainant alleges the domain name was acquired by Respondent, namely January 17, 2016.
Complainant relies on the fact that it holds trademark and domain name registrations which predate the Respondent’s acquisition of the disputed domain name in January 2016. Complainant submits that Respondent’s awareness of Complainant’s rights can be inferred from his choice of a virtually identical domain name which he uses for a website featuring identical home services and a similar marketplace portal system used on Complainant’s website.
Complainant also points to cease-and-desist correspondence which was sent to Respondent by e-mail, which was left unanswered.
With respect to trademark rights, Respondent submits that the Complainant’s registered European Trademark has effectively been abandoned in its original form, and that Complainant’s other trademark rights only came into existence after the registration of the disputed domain name.
Respondent asserts that he holds rights and legitimate interests in various PRONTO-formative trademarks, by virtue of the business he operates in the Atlanta area. Respondent relies on a chronology which traces his rights back to February 7, 2015, when he incorporated his business under the name Pronto Technologies LLC, noting that this occurred one month before Complainant’s business was formed.
Respondent relies on its use of a mobile app under the domain name <prontoapp.com>, which then evolved into a conventional website-based business in late 2016 under the disputed domain name itself. Since that time, Respondent has carried on an active home services referral business which is entirely dedicated to customers in the Atlanta area. Respondent has garnered a number of awards and industry accolades for the quality of his service in that local region.
Respondent submits that he holds rights in the PRONTO trademark that predate any use by Complainant of its marks and that the combination of “pronto” with the suffix “pro” constitutes a natural combination of the Respondent’s distinctive business name PRONTO with the common term PRO which is descriptive of his services. Respondent submits that he is fully entitled to engage in the use of the PRONTOPRO name in the Atlanta area, where the Complainant has never carried on business.
Finally, Respondent denies that it registered or used the disputed domain name in bad faith. The principal argument is that there is no proof of any intention on the part of the Respondent to mislead consumers. Respondent relies on the fact that his business is entirely directed to local consumers in the area of a single American city, namely Atlanta, Georgia, which has no connection to the Italian market where Complainant operates. Respondent submits that this is a situation where the parties happened to develop their respective businesses at the same time coincidentally, but in mutual ignorance of each other. In these circumstances, no inferences of bad faith should be drawn.
7. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has established trademark rights in the mark PRONTOPRO by virtue of its registration and filings in Europe and internationally. The disputed domain name is virtually identical and is confusingly similar to Complainant’s PRONTOPRO marks.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Respondent has provided a detailed explanation for the origins of his business, his choice of corporate name, and ultimately his decision to register and use the disputed domain name. The explanation as a whole is consistent and well-documented, beginning with the incorporation of Respondent’s company under the name Pronto Technologies LLC on February 7, 2015.
A fair reading of Complainant’s evidence indicates that it only adopted the trademark in question PRONTOPRO for commercial purposes on March 15, 2015. Complainant’s registration of its various PRONTOPRO formative domain names in September 2014 do not − on their own, in the absence of use – establish trademark rights. So the sequence of events tends to confirm Respondent’s arguments to the effect that he independently began to use a PRONTO mark before the Complainant actually adopted its mark.
Complainant’s position is strengthened by the fact that Respondent did not actually begin using PRONTOPRO as a mark or as the corresponding domain name until 2016. However, Respondent has put forward a reasonable explanation, showing how his initial plans for an app-based referral platform did not perform satisfactorily in the Atlanta residential market he was targeting. This led the Respondent to adopt a website platform which was built on the disputed domain name <prontopro.com>, combining his root name “pronto” with the suffix “pro”, which in turn is explained by Respondent’s deployment of “professionals” to provide the referral services in question. The legitimacy of the disputed domain name is ultimately founded on Respondent’s early adoption of PRONTO itself as the principal element of his business name, for a portal-based referral service.
The Panel has considered this evidence in the context of paragraph 4(c) of the Policy, which provides that Respondents may demonstrate rights or legitimate interests in a domain name by showing: “before any notice to [Respondent] of the dispute, [Respondent’s] 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”. Under section 2.2 of WIPO Overview 3.0, examples of prior use include:
“As expressed in UDRP decisions, non-exhaustive examples of prior use, or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services may include: (i) evidence of business formation-related due diligence/legal advice/correspondence, (ii) evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards (iii) proof of a genuine (i.e., not pretextual) business plan utilizing the domain name, and credible signs of pursuit of the business plan, (iv) bona fide registration and use of related domain names, and (v) other evidence generally pointing to a lack of indicia of cybersquatting intent. While such indicia are assessed pragmatically in light of the case circumstances, clear contemporaneous evidence of bona fide pre-complaint preparations is required.”
In the Panel’s majority view, Respondent has provided credible evidence in connection with the factors (i), (ii), (iii), and (iv), all of which support a conclusion pointing to a lack of cybersquatting intent.
Based on the limited record filed in this proceeding, the Panel majority is not satisfied that the Complainant has proven that the Respondent does not have a right or legitimate interest in the disputed domain name. Accordingly, the Panel majority finds that the Complainant has not satisfied the requirement under paragraph 4(b) of the Policy.
The Panel notes that “the Policy was designed to deal with a certain limited category of abusive registration of domain names, but not as a means of litigating all disputes involving domain names.” General Motors LLC v. Chad Clegg, WIPO Case No. D2012 2196 (citing Jumblatt v. SlantMedia, WIPO Case No. D2012−1011). In another forum, “discovery, depositions, cross examination, [and] live hearings” could produce evidence that would lead to a different result. Quoteseek Corporation v. Internet Marketing Group, WIPO Case No. D2002 0511. “That is one of the reasons that this process is not a final process, but one where a disappointed party may take the issue to court.”
Accordingly, the Panel majority finds that the Complainant has not satisfied the requirement under paragraph 4(b) of the Policy.
C. Registered and Used in Bad Faith
In light of the findings on paragraph 4(a)(ii), it is not necessary for the majority Panel to consider bad faith under paragraph 4(a)(iii).
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Douglas M. Isenberg
Date: March 15, 2018
Dissenting Opinion (Nicoletta Colombo)
The Dissenting Panelist finds that the Respondent has failed to provide credible evidence in connection with a legitimate interest in the disputed domain name. The Respondent is the owner of the Company named Pronto Technologies LLC, but has declared that he used an app named “ProntoApp”, did not apply for any trademark application for PRONTO, or PRONTOPRO, or similar marks, started to advertise his business through the website “wwwprontoapp.com”, which corresponds to the name of his app and only after some time, decided to migrate his business to the disputed domain name <prontopro.com>, which was originally registered by a third party. The expression “prontopro” is not present in its website.
By way of contrast, the expression “prontopro” has been used and registered also as domain names with extensions “.info” and “.net” by the Complainant since 2014 for its business which is the same as that of the Respondent.
According to this circumstance, the Dissenting Panelist is of the opinion that the Respondent has registered the disputed domain name with the intent to profit from the reputation of the Complainant’s trademarks by choosing a domain name that is confusingly similar to the Complainant’s marks, company name and domain names, circumstance which was easy to check through Internet searches.
It is evident that the Respondent has not received any license or authorization from the Complainant to use the trademark owned by the Complainant, nor has he not been authorized to register and use the disputed domain name.
Under these circumstances, the Dissenting Panelist finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Dissenting Panelist notes that the Respondent has not filed any documents in his response to justify his real interests in the disputed domain name. It is undoubted that a mere declaration that the disputed domain name is a simple evolution from “Pronto Technology” and “ProntoApp” cannot justify this registration or establish use in good faith.
It is Dissenting Panelist’s opinion that at the moment of the registration of the disputed domain name, the Respondent must have been aware of the existence of the PRONTOPRO mark/domain names of the Complainant. It is quite predictable that only someone who was familiar with the Complainant’s mark/domain names and its activity would have registered a domain name including such mark. Furthermore, “pursuant to paragraph 2 of the Policy, it was the Respondent’s duty to verify in advance that registration of the disputed domain names would not infringe the rights of third parties. A quick trademark search would have revealed the existence of the Complainant’s […] marks” (Accor SA v. Jan Everno, The Management Group II, WIPO Case No. D2017-2212). This preliminary verification should be carried out with more attention with specific regard to the cases in which the third party is a competitor involved in the same field of the registrant, in order to avoid any risk of confusion and to ensure fair competition.
The Dissenting Panelist is of the opinion that the Respondent has registered the disputed domain name with the intent to profit from the reputation of the Complainant’s trademark by choosing a domain name that is confusingly similar to the Complainant’s mark.
Consequently, the Dissenting Panelist considers that the disputed domain name should have been transferred to the Complainant.