WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Missano S.p.A. v. Domain Administrator, NameFind LLC
Case No. D2018-1439
1. The Parties
The Complainant is Missano S.p.A., of Lustra, Italy, represented by Società Italiana Brevetti S.p.A., Italy.
The Respondent is Domain Administrator, NameFind LLC of Cambridge, Massachusetts, United States of America (“USA”), represented by Levine Samuel, LLP, USA.
2. The Domain Name and Registrar
The disputed domain name <h-zone.org> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2018. On June 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 2018, 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 the Respondent of the Complaint, and the proceedings commenced on July 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2018. On July 17, 2018, the Respondent requested to extend the due date for Response for four days. Accordingly, the Center notified the Parties that the due date for Response was extended to July 30, 2018. The Response was filed with the Center on July 26, 2018.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on August 3, 2018. 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 an Italian company providing a wide range of cosmetic, toiletry and hair care products. The Complainant’s products are sold in Italy, and internationally through e-commerce platforms such as Amazon and E-Bay. It has promoted its line of hair care and cosmetic products through various international events and exhibitions. In 2017 the Complainant was among the exhibitors in the 2017 edition of Cosmoprof event in Las Vegas, United States of America (“US”). It is also a regular attendee at Cosmoprof exhibitions in Bologna, which is a leading event for the professional beauty sector.
The Complainant has used the trademark H.ZONE in Italy and elsewhere since 2010, through the website “www.reneeblanche.it”, which is managed by Renée Blanche S.r.l., an Italian company related to the Complainant.
The Complainant owns several trademark registrations for the mark H.ZONE, as follows:
Canadian Trademark Registration No. TMA 764489 for H.ZONE HAIRZONE Design, registered on April 20, 2010;
Italian Trademark Registration No. 0001592982 for H.ZONE Design, registered on May 14, 2014;
International Trademark Registration No. 1212861 for H.ZONE Design, registered on May 14, 2014;
Libyian Trademark Registration No. 18765 for H.ZONE HAIRZONE Design, registered on June 1, 2017;
Lebanese Trademark Registration No. 118426 for H.ZONE HAIRZONE Design, registered on September 17, 2008.
The Respondent claims that the disputed domain name was acquired by the Respondent on April 1, 2016, together with other three and four letter domain names. At the time the Complaint was filed, the disputed domain name reverted to a parking page which featured links to unrelated websites of third parties, commonly known as a click through sites. The parking page also provided a link to a page which indicated the disputed domain name was for sale.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its registered trademark H.ZONE. The Complainant has registered rights in the H.ZONE Design trademarks dating back to April 20, 2010 (listed in paragraph 4 of this Decision), which predate the acquisition of the disputed domain name by the Respondent. The disputed domain name <h-zone.org> contains the Complainant’s trademark almost in its entirety except for the punctuation mark “.” which has been replaced with the “-” symbol.
The Complainant submits that the Respondent is not sponsored by or affiliated with the Complainant in any way, and has not been given permission by the Complainant to create, register or use the disputed domain name. The Respondent is not commonly known by the name or mark H-ZONE or H.ZONE. The Complainant further contends that the Respondent is not making a legitimate or bona fide use of the disputed domain name. The Respondent is using the disputed domain name to redirect Internet users to websites of third parties, and interfering with the Complainant’s rights to the disputed domain name.
The Complainant also submits that the Respondent has registered and used the disputed domain name in bad faith. The Respondent has registered and used a confusingly similar domain name for the purposes of monetary gain by redirecting Internet users to third party sites and is thereby interfering with the Complainant’s business. The Respondent registered the confusingly similar domain name for the purpose of selling it to the Complainant for an amount greater than the cost of registering the disputed domain name.
The Respondent submits that it acquired the disputed domain name as part of a bulk purchase of domain names on April 1, 2016. At the time the disputed domain name was purchased, the disputed domain name <h-zone.org> reverted to a website which the “h” element served as an abbreviation for “homework”.
The Respondent contends that the disputed domain name is a generic term, in that the letter “h” has been used by other businesses, trades and individuals to designate subject matter different from “hair”. For example, the letter “h” has been used to refer to “homework”, “high”, “health”, “heretic”, “holistic”, and “horse” in other commercial applications. The Respondent also claims that the combination “h-zone” itself is a biological definition for a functional unit of the muscle and that this forms the basis for health-related uses.
The disputed domain name <h-zone.org> reverts to a website which contains links to mathematical websites. The Respondent claims that there is no evidence that the disputed domain name has ever reverted to any website that offers hair-related products and services, and no reference to hair has ever been made in connection with the associated websites.
The Respondent submits that the purchase and ownership of a domain name for the purpose of resale is not in of itself evidence of bad faith, and can in fact give rise to rights and/or legitimate interests in a domain name. The Respondent is in the business of purchasing domain names which contain generic terms for resale, and many UDRP panelists have found that such a business is evidence of bona fide use of offering of goods and services.
The Respondent was not aware of the Complainant and the Complainant’s trademark H.ZONE when it acquired the disputed domain name. The disputed domain name <h-zone.org> was registered because it is made up of generic terms, which are inherently attractive in the commercial world. The Respondent submits that it did not target the Complainant for resale of the disputed domain name. Further, the Respondent claims that the Complainant does not own exclusive rights to a generic term, beyond the scope of its specific wares and services, which the Respondent has made no reference to, and has never featured any links to third party websites which offer those goods and services.
6. 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant does have recognizable trademark rights in the mark H.ZONE by virtue of its trademark registrations, notably the Italian Trademark Registration No. 0001592982 for H.ZONE Design and Canadian Trademark Registration No. TMA 764489 for H.ZONE HAIRZONE Design. The H.ZONE element itself is a prominent feature in all the noted registrations.
The Panel finds that the disputed domain name <h-zone.org> is confusingly similar to the Complainant’s registered trademark H.ZONE, as the disputed domain name replicates the entirety of the Complainant’s registered mark except for the substitution of the “-” for the “.” symbol.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In view of the findings under paragraph 6C, the Panel will not make a finding with respect to rights or legitimate interests.
C. Registered and Used in Bad Faith
Bad faith registration and use of a domain name involves intentional interference with trademark rights of a complainant; that is the essence of an abusive registration under the Policy. Paragraph 4(b) of the Policy summarizes the criteria under which bad faith may be proven.
“(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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.”
For the Complainant to succeed in this element of a Complaint, it must prove the Respondent was or must have been aware of the Complainant’s registered trademark at the time it acquired the disputed domain name, and then used the disputed domain name to trade on the reputation of the Complainant or otherwise interfere with the Complainant’s business. Aside from conclusory allegations the Complainant has not provided any evidence to this effect.
On the other hand, the Respondent has put forward evidence in support of its arguments on these points. The Complainant is located in Italy and primarily does its business in Italy and other countries in Europe. The Respondent is situated in the US and has stated that it was not aware of the Complainant and the Complainant’s trademark. Based on the evidentiary record as filed, the Panel does not have any reason to doubt that assertion, although the Panel notes that prior UDRP panels have held that bulk purchasing of domain names comes with affirmative obligations to avoid registering trademark-abusing domain names.
The Respondent has also submitted that the disputed domain name never reverted to a website which made reference to the Complainant or the Complainant’s industry, products or services. The disputed domain name reverts to a current website which features links to third party sites which relate to mathematical products and services, which are not related to hair products.
The evidentiary record also does not show that the Respondent targeted the Complainant for resale of the disputed domain name. The disputed domain name is advertised as available for purchase, but no communication from the Respondent to the Complainant, or other evidence of the targeting, was submitted in the record.
The Panel also notes the Respondent’s evidence that the term H-ZONE has a number of different applications and is not singularly associated with the Complainant or its products. For example, “h-zone” is a biological term for the functional unit of a muscle and is often used in relation to health-related services. This context is also consistent with the absence of bath faith.
Accordingly, as the Panel finds no evidence that the Respondent intentionally targeted the Complainant’s mark, the Panel finds that the Complainant has failed to satisfy the requirement under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Date: August 14, 2018