WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Immobiliare Defra Di fruscalzo M. E C. S.A.S. and Isoplam S.R.L. v. HongShuiYou (洪水友)
Case No. D2020-0214
1. The Parties
The Complainants are Immobiliare Defra Di fruscalzo M. E C. S.A.S. (“First Complainant”), Italy, and Isoplam S.R.L. (“Second Complainant”), Italy, both represented by Studio Torta S.p.A., Italy.
The Respondent is HongShuiYou (洪水友), China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <isoplam.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2020. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 4, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 7, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On February 7, 2020, the Center also transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on February 10, 2020. The Respondent did not comment on the language of the proceeding. The Complainant filed an amended Complaint in English on February 12, 2020.
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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on February 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 4, 2020. Although the Respondent requested under paragraph 5(b) of the Rules an additional four calendar days in which to respond to the Complaint, the Response was filed in Chinese with the Center on March 4, 2020.
The Center appointed Matthew Kennedy as the sole panelist in this matter on March 16, 2020. 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 First Complainant is an Italian company established in 1993 engaged in the renting and operating of real estate and licensing intellectual property rights. It has a share capital of EUR 100,000. The Second Complainant is an Italian company established in 1992 that manufactures premixed hardeners and systems for the realization of floors and decorative surfaces. It has a share capital of EUR 12,000.
The First Complainant is the registered proprietor of Italian trademark registration number 0001375977, registered on November 23, 2010 (and applied for on May 27, 2009) for a semi-figurative mark consisting of ISO PLAM written on two lines in gray and placed in an orange rectangle decorated with spots (the “ISO PLAM semi-figurative mark”). The registration specifies paint, varnish, lacquer and other goods in class 2 and it remains current. The Second Complainant acquired this trademark registration from the First Complainant as part of a partial demerger completed on August 1, 2014. The First Complainant granted an exclusive licence to the Second Complainant to use that registered trademark for one year in a licence agreement dated December 16, 2014, that is renewed tacitly each year.
The First Complainant obtained registration of Italian trademark registration number 0001654896 on November 11, 2015, also for the ISO PLAM semi-figurative mark, specifying paint, varnish, lacquer and other goods in class 2, non-metallic construction materials and other goods in class 19, and carpets, mats and other goods in class 27. The First Complainant also obtained registration of International trademark registration number 1250243 for the ISO PLAM semi-figurative mark, registered on February 24, 2015, specifying goods in classes 2, 19, and 27 and initially designating two jurisdictions. The First Complainant subsequently designated China on May 12, 2017, where protection was refused for all of the goods in class 2 and some of the goods in class 19. These trademark registrations remain current.
The Second Complainant is the registrant of the domain name <isoplam.it>, registered on November 29, 2001, that it uses in connection with a website where it provides information about its products. The website homepage displays an ISO PLAM logo that is different from the registered ISO PLAM semi-figurative mark but the Second Complainant’s catalogue displays the ISO PLAM semi-figurative mark on its cover. The text on the website and in the catalogue refers at times to “Isoplam” accompanied by the ® symbol. Many of the Complainant’s product types include the word “Plam” such as “Plam Hardening” and “Plam Overlay”. The Second Complainant registered other domain names containing the name “isoplam” in various country code Top-Level Domains (“ccTLDs”) in 2014 that it uses in connection with different language versions of its website.
The Respondent is an individual resident in China.
The disputed domain name was registered on October 31, 2008. It does not resolve to any website. There is no evidence that the disputed domain name has ever resolved to an active website.
Prior to the filing of the Complaint, an agent acting on behalf of the Second Complainant sent a series of email communications to the Respondent, some via the Registrar. Evidence provided by the Respondent shows that these included email communications dated December 18 and 31, 2019, in which the agent offered USD 1,500 and EUR 1,500, respectively, for a transfer of the disputed domain name. The Respondent did not reply.
5. Parties’ Contentions
The disputed domain name is identical to the First Complainant’s trademark registrations for ISOPLAM and the Second Complainant’s corporate name and domain names. Founded in 1979, the Second Complainant is now the top company in Italy in the sector of premixes for floors and decorative coverings. In the last 25 years, ISOPLAM has become a widely recognized trademark both in Italy and abroad in many countries of the world for cement premixes and decorative surfaces. Most of the Complainants’ proprietary rights over ISOPLAM were established well before the registration of the disputed domain name, including the corporate name “Isoplam”, registered in 1992, and the domain name <isoplam.it>, registered in 2001.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name is not in use and does not seem to have ever been used. The Wayback Machine has not archived any pages from a website in connection with the disputed domain name. It does not seem conceivable that the Respondent has legitimate plans to use the disputed domain name in future when it has been dormant for such an extended period of time. Google search results show that the term “Isoplam” is always associated with the Second Complainant.
The disputed domain name was registered and is being used in bad faith. The disputed domain name is passively held, which is evidence of bad faith. The Respondent has retained the disputed domain name for many years without attempting to develop any business which proves that his intention was to block the Complainants’ registration of the disputed domain name. The use of a domain name for purposes other than to host a website may constitute bad faith. The Respondent’s bad faith is also demonstrated by his failure to reply to several emails. He also kept his identity hidden in the Registrar’s WhoIs database.
The Complainants do not enjoy prior trademark rights. The First Complainant’s claim is based on Italian trademark registration number 1375977, which did not grant exclusive rights until 2010, after the registration of the disputed domain name in 2008. All the First Complainant’s trademark rights were registered after the disputed domain name. The First Complainant did not obtain a trademark registration in China until 2017. The First Complainant’s rights fall outside the scope of the Policy. The Second Complainant is only a licensee and does not have any rights that predate the registration of the disputed domain name. Only one of the Second Complainant’s domain names was registered before the disputed domain name and a prior domain name registration does not create rights for the purposes of the Policy.
The disputed domain name was lawfully registered in 2008. At that time, no one had registered a trademark for ISOPLAM in China. The Respondent is entitled to continue to hold, use, profit from and dispose of the disputed domain name. The Respondent has never sold, rented or otherwise transferred the disputed domain name registration to anyone to obtain unjustified benefits. The Respondent did not reply to the emails from the Complainants’ agent offering to pay for a transfer of the disputed domain name in December 2019. Nor did the Respondent reply to other enquiries received years earlier asking him to sell the disputed domain name. The disputed domain name has never been registered for malicious use.
The Respondent is in mainland China and has never been to Italy and did not know of the existence of the Complainants until this proceeding. The Complainants have not established any Chinese registered company and, at best, may attempt to enter the Chinese market through local agents. The Complainants did not register a trademark in China until 2017 and few people in China know of them even now. Google search results are not accessible in China. The Respondent’s use of the disputed domain name for so many years is not intended to prevent others from using their mark or name in a domain name. The Respondent has the right to use the disputed domain name legally. In all the years since registration, he has never attempted to damage the reputation of the Complainants or damage their normal business activities. The Respondent did not know of the existence of the Complainants. The registration causes no confusion because the public in China has not heard of the Complainants.
6. Discussion and Findings
6.1 Procedural Issues
A. Multiple Complainants
The Complaint was filed by two Complainants against a single Respondent. The Complainants have the same majority shareholder and form part of the same corporate group. The First Complainant owns trademark registrations for the ISO PLAM semi-figurative mark and the Second Complainant is an exclusive licensee of one of them. The Panel finds that the Complainants have a common grievance against the Respondent and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as “the Complainant” except as otherwise indicated.
B. Language of the Proceeding
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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that it is not familiar with the Chinese language at all whereas English is an international language that both Parties should be familiar with.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the Parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.
The Panel observes that in this proceeding the Complaint and amended Complaint were filed in English whereas the Response was filed in Chinese. The Respondent did not request that the language of the proceeding be Chinese and the detailed contents of the Response demonstrate that the Respondent has in fact understood the Complaint and the amended Complaint in English. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay, while accepting all documents as filed will not cause unfairness to either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that the Panel will accept all documents as filed in their original language without translation.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:
(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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the ISO PLAM semi-figurative mark. For technical reasons, the disputed domain name cannot include the figurative elements of that trademark, hence these elements can be disregarded in the comparison between the disputed domain name and that mark. See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031.
The only distinctive element of the disputed domain name is “isoplam”, which is almost identical to the non-figurative elements of the ISO PLAM semi-figurative mark, but for the placement of the two elements “iso” and “plam” on the same line. The disputed domain name also includes a generic Top-Level Domain (“gTLD”) suffix, i.e. “.com”. However, as a mere technical requirement of registration, that is disregarded in the comparison between a domain name and a trademark for the purposes of the first element of the Policy, unless it has some impact beyond its technical function, which is not the case here.
The Respondent points out that the registration of the ISO PLAM semi-figurative mark post-dates the registration of the disputed domain name. However, the Panel considers that, for the purposes of the first element of paragraph 4(a) of the Policy, it suffices for a complainant to have rights in a trademark at the time of the Complaint, which the Complainant does in the present case. The timing of the trademark registration is considered in relation to the third element of paragraph 4(a) of the Policy in section 6.2C below.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the ISO PLAM
semi-figurative trademark in which the Complainant has rights.
The Complainant also asserts rights in the name Isoplam. It asserts rights on the basis of the Second Complainant’s corporate name “Isoplam SRL” registered in 1992 and its domain name <isoplam.it> registered in 2001. The Panel considers that rights in a corporate name cannot, of themselves, in the absence of trademark rights, form the basis of a claim under the Policy. The Panel does not consider that rights in a domain name, as such, amount to rights “in a trademark” within the meaning of the first element of paragraph 4(a) of the Policy either. See Antico Cadore S.r.l. v. Keyword Marketing Inc., WIPO Case No. D2007-0402. Where a complainant asserts rights other than by virtue of trademark registration, UDRP panels have sometimes been willing to assume that unregistered trademark rights may also arise in a civil law jurisdiction for the purpose of the Policy, such as Italy. In order to provide evidence of such unregistered trademark rights, the Complainant would have to show that its corporate name has become a distinctive identifier associated with itself or its goods or services.
Relevant evidence of such acquired distinctiveness or secondary meaning includes a range of factors such as the duration and nature of use of the mark, the amount of sales under the mark, the nature and extent of advertising using the mark, the degree of actual public recognition and consumer surveys. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview3.0”), section 1.3. The record of the present proceeding contains little such evidence. There is a statement of the date of first use of the corporate name in Italy in 1993, the homepage on the Complainant’s website, a catalogue that contains assertions by the Complainant about its position in its industrial sector, the surface area of its facilities and the relative proportion of its foreign sales since 2012, and the Complainant’s self-introduction on an architecture and design online platform that provided a list and map of countries and territories where the Complainant claimed that it had applicators and distributors. This is not adequate to demonstrate acquired distinctiveness of the name Isoplam. Therefore, the Panel does not find, on the present record, that the Complainant has successfully established unregistered trademark rights in ISOPLAM for the purpose of the Policy.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the registered ISO PLAM semi-figurative trademark, in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As regards the first and third circumstances, the disputed domain name is passively held. The Panel finds that this is neither a bona fide offering of goods or services within the terms of paragraph 4(b)(i) of the Policy nor a legitimate noncommercial or fair use of the disputed domain name within the terms of paragraph 4(b)(iii) of the Policy.
As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “HongShuiYou (洪水友)”, not “Isoplam”. There is no evidence that the Respondent has been commonly known by the disputed domain name.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Turning to the Response, the Panel can discern no allegation of a right or legitimate interest in the disputed domain name. The Respondent submits that neither the Complainant nor any other party obtained a Chinese trademark registration for ISOPLAM prior to his registration of the disputed domain name. However, that does not evidence a right on the part of the Respondent for the purposes of the second element of paragraph 4(a) of the Policy, although it may be relevant to bad faith for the purposes of the third element, considered in section 6.2C below. Therefore, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case.
Accordingly, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The third element in paragraph 4(a) of the Policy requires a complainant to prove that the disputed domain name has been registered in bad faith and that it is being used in bad faith. Failure to prove either of these requirements will result in denial of the Complaint.
The disputed domain name was registered before the Complainant’s rights in the ISO PLAM mark accrued. UDRP panels will not normally find bad faith on the part of a respondent in this circumstance. See WIPO Overview 3.0, section 3.8.1. Further, the disputed domain name was registered before the Complainant even applied for the ISO PLAM mark and the record does not indicate the Respondent acted in anticipation of the Complainant’s eventual rights in that trademark. See WIPO Overview3.0, section 3.8.2. Therefore, the Panel does not find that the Complainant’s rights in the ISO PLAM mark support a finding of bad faith registration of the disputed domain name.
The Complainant also asserted rights in the name Isoplam. Even if the Panel assumes arguendo that the Complainant had unregistered trademark rights in Isoplam for the purpose of the Policy at the time of the Complaint sufficient to create standing under the first element of paragraph 4(a) of the Policy (an assertion that the Panel rejected in Section 6.2A above), this basis of claim would still fail, but under the third element due to insufficient evidence of reputation in Isoplam at the time of registration of the disputed domain name. The Complainant initiated this proceeding in 2020, eleven years after the registration of the disputed domain name in 2008, but the Complainant provides almost no evidence regarding its prior use of “Isoplam” that could show what the Respondent knew or should have known about “Isoplam” at the time that he registered the disputed domain name.
The Complainant alleges that the Respondent has registered the disputed domain name to block its registration by the Complainant. However, paragraph 4(b)(ii) of the Policy, which addresses bad faith blocking registrations, describes a circumstance in which a respondent has engaged in a pattern of such conduct. The Complainant provides no evidence that the Respondent has ever registered another domain name that could establish a pattern of conduct.
The Complainant alleges that the Respondent’s failure to reply to its pre-Complaint communications (offering to buy the disputed domain name) is evidence of bad faith. In the circumstances, the Panel does not consider that the Respondent’s failure to reply constitutes evidence of bad faith.
Therefore, based on the present record, the Panel does not find that the Complainant has met its burden of establishing that the disputed domain name was registered in bad faith. The Complainant has failed to satisfy the third element in paragraph 4(a) of the Policy.
For the foregoing reasons, the Complaint is denied.
Date: March 30, 2020