WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facele SPA v. Jason Owens
Case No. D2019-0140
1. The Parties
The Complainant is Facele SPA, Chile, internally represented.
The Respondent is Jason Owens, United States of America (“United States”), self-represented.
2. The Domain Name and Registrar
The disputed domain name, <facele.com> (the “Domain Name”), is registered with 1&1 Internet AG (the “Registrar”).
3. Procedural History
The Complaint in Spanish was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2019. On January 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 25, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint.
On February 7, 2019, the Center received the Complainant’s request to suspend the proceeding for settlement discussions concerning the Domain Name. On February 7, 2019, the Center confirmed to the Parties that the administrative proceeding was suspended until March 7, 2019 for the purpose of those discussions. On March 6, 2019 the Center received the Complainant’s request to extend the suspension for a further month. On April 5, 2019 the Center received the Complainant’s request to extend the suspension still further to May 5, 2019. On May 6, 2019, the Center received the Complainant’s request to reinstitute the proceeding and notified the Parties of the reinstitution on May 8, 2019.
The Complaint, which had been submitted in Spanish, recognized that the language of the registration agreement is English, but featured a request that the language of the proceeding be Spanish. The Center sent an email communication to the parties on February 1, 2019 inviting the parties to indicate their preferences as to the language of the proceeding. The Respondent submitted a request for English to be the language of the proceeding on February 3, 2019. On May 16, 2019, following reinstitution of the proceedings the Center sent an email to the Complainant and informing the Complainant as to what it needed to do if it wished to maintain its request that the language of the proceeding be Spanish. On May 20, 2019, the Complainant sent an email to the Center reiterating its request for Spanish to be the language of the proceeding and citing authority in support of its case. In response to a request by the Center to provide a translation of the Complaint, the Complainant resubmitted the Complaint translated into English on June 9, 2019.
The Center sent an email communication to the Complainant on June 17, 2019 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the translated Complaint. The Complainant filed an amendment to the translated Complaint on June 23, 2019.
The Center verified that the translated Complaint, together with the amendment to the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2019. The Response was filed with the Center on July 15, 2019.
The Center appointed Tony Willoughby as the sole panelist in this matter on July 24, 2019. 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 amendment to the Complaint stemmed from the fact that when the Complainant conducted a search of the Registrar’s WhoIs database, the name of the registrant had been “redacted for privacy”. The name of the Respondent was disclosed by the Registrar in response to the Center’s registrar verification request and the amendment to the Complaint dealt with that issue.
Language of the Proceeding
As indicated above, the Complainant has requested that the language of the proceeding be Spanish.
Paragraph 11(a) of the Rules provides that “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Complainant based its request on the fact that it is a Chilean organization based in Chile and that the language in which it corresponds is Spanish.
The Complainant has cited five previous UDRP decisions in support of its request. In three of them, the Registration Agreement was Spanish, the complainant (the same complainant in all three cases) was based in the United States and requested that the language of the proceeding be English. The panel (the same panel in all three cases) accepted the complaint in both Spanish and English, but issued the decisions in Spanish (HID Global Corporation v. Jorge Rosel Ramirez, ID Smart Tech WIPO Case No. D2014-1025, HID Global Corporation v. Juan Miguel Perez, WIPO Case No. D2014-1026 and HID Global Corporation v. idsecureworld, Id Secure World S.A. de C.V., WIPO Case No. D2014-1027).
The fourth case cited by the Complainant is Columbia Viajes S.A.C.I.A.I. y F v. Luis Albertazzo, WIPO Case No. D2017-0667, a case in which the language of the registration agreement was English and where the panel accepted the complainant’s request that the language of the proceeding be Spanish because the respondent had not opposed the request and the respondent was based in Argentina and had a Spanish name. The fifth case cited by the Complainant is MOU Limited v. WhoisGuard Protected, WhoisGuard, Inc./Alvaro Sanchez Garcia WIPO Case No. D2017-2502, a case in which the language of the registration agreement was English, the complainant asked that the language of the proceeding be Spanish, the respondent did not object to the complainant’s request and had sent emails to the Center in Spanish. The panel decided that since both parties could communicate in Spanish, the language of the proceeding should be Spanish. Neither of these cases is on point because, unlike this case, in neither of them did the respondent object to the complainant’s request and in both of them, the parties could communicate in the Spanish language.
On February 1, 2019, the Center put to the Respondent the Complainant’s request regarding the language of the proceeding. The Respondent replied on February 3, 2019 stating: “Hello, apologies but unfortunately I do not speak Spanish. Please provide all materials in English…”
Paragraph 10 of the Rules provides inter alia that the Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules and that in all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
On May 24, 2019 the Center emailed the Complainant with regard to the latter’s request that the language of the proceeding be Spanish stating: “While any final determination as to the appropriate language of proceeding remains in the sole discretion of the Panel, in the present circumstances the Center finds insufficient basis in the arguments and material provided to accept the Complaint solely in Spanish.” The email went on to request that the Complainant file an English translation of the Complaint, which it did on June 9, 2019.
In this case the Registration Agreement is in English, thus the normal rule is that English should be the language of the proceeding. The Respondent states that he does not speak Spanish and there is nothing before the Panel to suggest that he does. For the Panel to conclude that some other language should be the language of the proceeding, there has to be a powerful indicator that the normal rule should be set aside. The Complainant simply states that it is in a Spanish speaking country and that Spanish is the language in which it conducts business. The Panel agrees with the Center that that is not a sufficient basis for granting the Complainant’s request and that to have acceded to the Complainant’s request would have unfairly disadvantaged the Respondent.
The Panel declares that English is the language of this administrative proceeding.
4. Factual Background
The Complainant was originally incorporated in Chile on September 4, 2007 under the name Factura Electronica Integración S.A. In December 2016, the Complainant was converted into a joint stock corporation under its current name, Facele SpA. The Complainant was formed “mainly in order to advise taxpayers in the adoption of electronic invoicing and other electronic tax documents, facilitating compliance with their tax obligations”.
The Complainant is the registered proprietor of Chilean Trade Mark Registration No. 1259473 registered September 20, 2017 (application filed June 8, 2017) in class 42 for software services. The translated description in Annex 15 to the Complaint reads:
“Label consisting of a logo incorporating sensation typography in bold and at the bottom uses pantone desert blue and black (70%) for the central word FACELE. It also includes at the bottom the text in Arial font: ELECTRONIC TAX DOCUMENTS and a vectorized origami bird. (No protection for the words ELECTRONIC TAX DOCUMENTS contained in the label).”
The Domain Name was registered on May 29, 2010 and is connected to a webpage inviting the visitor to click on a label reading “DOMAIN FOR SALE”. Below there is text reading: “This Domain for Sale – serious inquiries only please”. At the foot of the page is a message reading “were you looking for http://www.facele.cl/ and below that message is featured a prominent image of the Complainant’s trade mark.
Annexed to the Complaint are emails dated February 2016 and November/December 2017, which appear to indicate that on two separate occasions previously the Complainant attempted to purchase the Domain Name, but the strings are incomplete and the Complainant does not explain their context. The Respondent states that he was unaware of them.
As indicated in section 3 above, at the Complainant’s request the Center suspended the proceeding on February 7, 2019 for settlement discussions to take place. The request followed from an email sent to the Center by the Respondent on February 3, 2019, which concluded: “I do not understand why the Company did not just offer to buy the domain. I have owned it since 2010 and it was intended for an art/satirical Facebook project. I would be willing to sell it for a fair price via Sedo.com.” That extension was then extended on two further occasions at the Complainant’s request, but over the period of suspension, little seems to have happened until March 22, 2019 when the Complainant sent an email to the Respondent stating that it was “ready to listen to [the Respondent’s] proposal”. The Respondent replied stating that the price would be USD 25,000, the Complainant stated that the price was too high and asked for a reduction leading to an email from the Respondent inviting a counter-offer, to which the Complainant did not reply.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s registered trade mark (see section 4 above). The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. Finally, the Complainant contends that the Domain Name has been registered and is being used in bad faith. The Complainant bases its claims in this regard primarily under sub-paragraphs 4(b)(i), (ii) and (iv) of the Policy.
The Respondent contends that when he registered the Domain Name on May 29, 2010 he had never heard of the Complainant; moreover, the Domain Name was not his first choice. He was seeking to register a domain name featuring the French words “Le Face”, but the 1and1 registration tool notified the Respondent that the domain name was not available and offered as an available alternative <facele.com>, the Domain Name. He contends that his purpose was not to target anybody, but “to create a satirical site focused on the surrealism of Rene Magritte and social media”.
He states that in the course of October 2014 he noticed that he was receiving a significant volume of spam emails all written in Spanish, which he eventually discovered were intended for the Complainant at its website connected to the domain name, <facele.cl>. He set up an auto-responder for the domain automatically to notify senders of their error and to direct them to the correct location. In November 2014, the site was updated to indicate that the Domain Name was for sale and information included directing users to the Complainant’s website, highlighted by the representation of the Complainant’s trade mark. The Respondent produces evidence showing that the website connected to the Domain Name has been active since 2010 and that he set up the auto-responder. The auto-responder generated the message referred to in the February 8, 2016 email exchange described in section 4 above.
The Respondent refers to the Complainant’s apparent reluctance to negotiate during the extended periods of suspension of the proceeding requested by the Complainant for the purpose of settlement discussions (see sections 3 and 4 above).
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
While the Complainant’s Chilean registered trade mark is a device mark the most prominent element by far is the name FACELE (in lower case). Given that the principal element of the Complainant’s trade mark is readily recognizable in the Domain Name, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trade mark (see section 1.7, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
C. Rights or Legitimate Interests
In light of the Panel’s finding under section D, below it is unnecessary for the Panel to come to a concluded view on whether or not the Respondent has rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
To summarise the factual background (section 4 above), the Complainant was incorporated in Chile in 2007 operating in the specialist area of electronic tax documents; the Domain Name was registered in 2010 by the Respondent, who is resident in the United States; the Domain Name is connected to a webpage indicating that it is for sale and featuring a reference to the Complainant’s website and a prominent representation of the Complainant’s trade mark; the Complainant made a seemingly abortive attempt to purchase the Domain Name in February 2016; the Complainant applied for (and obtained) a Chilean trade mark registration of its FACELE device mark in 2017; the Complainant made another seemingly abortive attempt to purchase the Domain Name in November/December 2017; and, following the filing of the Complaint and in the course of a suspension period to enable settlement discussions to take place, the Complainant indicated that it was ready to listen to the Respondent’s proposal regarding sale of the Domain Name, the Respondent named a price of USD 25,000, the Complainant asked for a reduction, the Respondent invited a counter offer, which was not forthcoming, and the Complaint was reinstituted.
To have succeeded under this head, the Complainant would have had to prove that the Respondent registered the Domain Name with the Complainant’s trade mark in mind. While it is the case that the Complainant was founded in Chile in 2007, at that time the name of the Complainant was not FACELE SpA, but Factura Electronica Integración S.A. It did not adopt its current name until December 2016 when it was converted into a joint stock company, by which time the Domain Name had been registered for over six and a half years. The Chilean FACELE trade mark registration described in section 4 above did not follow until 2017.
Accordingly, for the Complainant to prove that the Respondent registered the Domain Name with knowledge of the existence of the Complainant’s trade mark, the Complainant would at the very least have had to produce evidence to show that the FACELE name or trade mark was in use prior to May 2010 when the Respondent registered the Domain Name. The Complaint features 18 annexes, but not one of them shows any use by the Complainant of its trade mark, let alone any use pre-dating May 2010. The only section of the Complaint dealing with the fact that the Complainant’s trade mark registration post-dates registration of the Domain Name reads as follows:
“However, it is pertinent to reiterate that our company was born in 2007 in Chile as specialists in the implementation of electronic tax documents such as invoices, export invoices, accounting books, factoring, among others and we have more than 14 years of experience in the market. All of the foregoing determines the national and international transcendence made in favor of the “FACELE and logo” trademark, generating great recognition among the Chilean and Latin American public of the trademark in favor of the Complainant”.
Ironically, the only evidence that the Complainant was using that trade mark prior to 2010 comes in the Response where the Respondent discloses that the Complainant’s domain name, <facele.cl>, was registered in 2008.
However, even if one is to accept that the Complainant has been using that trade mark since 2007/8, to what extent has it been used? There is no relevant information before the Panel. For all that the Panel knows, the pre-2010 use of the trade mark could have been trivial. The sort of information that would have been helpful would have been some of the information of the kind required to establish unregistered or common law rights as set out in WIPO Overview 3.0, section 1.3:
“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”
Even if the Complaint had only included details of the Complainant’s pre-2010 sales and advertising figures accompanied by examples of how the mark has been used, that would have been helpful.
This is of particular significance given the narrowness of the Complainant’s speciality area (electronic tax documents and the like) and the acknowledgment in the above quote from the Complaint that the reputation is limited primarily to Chile and Latin America. The Respondent is resident in the northern part of the United States and denies any knowledge of the existence of the Complainant at the relevant time. To have concluded on the evidence before the Panel that on the balance of probabilities the Respondent’s denial of any knowledge of the Complainant in May 2010 should be disbelieved would, in the view of the Panel, have been a stretch too far.
Two points that will have encouraged the Complainant to believe that the Respondent’s registration of the Domain Name was in bad faith are (i) the nature of the Complainant’s name and trade mark, which is a made-up word and not one that anyone would select without a particular reason and (b) the presence on the Respondent’s webpage of a representation of the Complainant’s distinctive trade mark.
The Respondent states that the Domain Name was not his first choice. He says that he was looking to register <leface.com>, but it was not available and <facele.com> was offered as an available alternative. His reason given for wanting <leface.com> was “to create a satirical site focused on the surrealism of Rene Magritte and social media”, but he does not explain the connection. The presence of the Complainant’s trade mark is explained in section 5B above. It appeared along with redirection information sometime after October 2014 when the Respondent realised that much of the Spanish language email traffic that he was receiving was intended for the Complainant.
While the Respondent has not sought to explain why Le Face is a relevant name for his purpose, it is for the Complainant to prove its case, not for the Respondent to prove his defence. The Panel is unable to conclude on the evidence before him that the Respondent’s explanation, while not entirely straightforward, is so implausible as not to be believed. As to the appearance of the Complainant’s trade mark on the Respondent’s webpage, this arrived after registration of the Domain Name and the explanation appears plausible to the Panel. If true, it is not an indication that the Respondent was seeking in any way to profit from the Complainant’s trade mark when registering the Domain Name or subsequently.
The Complainant has failed to satisfy the Panel that the Domain Name has been registered and is being used in bad faith.
For the foregoing reasons, the Complaint is denied.
Date: July 28, 2019