WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
COLAS v. Domain Administrator, Daruna, LLC
Case No. D2020-0560
1. The Parties
The Complainant is COLAS, France, represented internally.
The Respondent is Domain Administrator, Daruna, LLC, Costa Rica.
2. The Domain Name and Registrar
The disputed domain name <colas.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2020. On March 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 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 March 9, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 10, 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 of the Complaint, and the proceedings commenced on April 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 22, 2020. Accordingly, the Center notified the Respondent’s default on April 23, 2020.
On April 29, 2020, the Respondent requested an extension of time to file a Response. On April 30, 2020, the Center granted the extension of time until May 10, 2020. The Response was filed with the Center on May 10, 2020.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on May 18, 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 Complainant is a joint stock company established under the laws of France. It specializes in construction and maintenance of transport infrastructure, and offers its services, projects and products worldwide under the COLAS trademark. It employs around 57,000 people globally and undertakes about 72,000 projects every year via a network of 800 construction units and 3,000 material production and recycling sites in 50 countries on five different continents. In 2018, the most recent year for which figures are available, the Complainant’s consolidated revenue totaled EUR 13 billion, with international markets accounting for 52% of this figure.
The Complainant is the owner of a variety of registered trademarks for the COLAS word mark, the earliest of which is Irish registered trademark no. 53093, registered on February 12, 1924 in international use class 1 (bituminous emulsions). The Complainant’s principal company website is found at “www.colas.com”, the related domain name for which was registered on March 10, 1997. The Complainant originally created its COLAS mark as a combination of the words “cold” and “asphalt”.
The disputed domain name was created on November 15, 2001. The Respondent is an entity with an address in Costa Rica. The website associated with the disputed domain name points to a pay-per-click (“PPC”) parking page. A screenshot of such website produced by the Complainant dated March 3, 2020, which appears to have been taken on a mobile device and is therefore in a narrow portrait format, shows four advertisements relating to recruitment, online dating and group hotel bookings, namely “Free Chatting Online Dating Sites”, “Group Hotel Rooms”, “Recrutement” [sic], and “Meet Dating Site Free” together with two links entitled “Colas Recrutement” [sic] and “Colas” respectively. No evidence has been provided showing examples of further pages, if any, to which these links might point. A statement at the foot of said website indicates that the links provided are automated in nature.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or at least confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant describes the background to its COLAS trademark, asserting that “colas” is not a dictionary term but is fanciful, unique and distinctive, and was created by the Complainant decades ago. The Complainant asserts that the disputed domain name has no distinctive element other than the term "colas", which it contends is identical to the Complainant's trademark. The Complainant asserts that its trademark is well known and is entitled to a broad scope of protection, under reference to Colas v. Benjamin Bouillot, WIPO Case No. D2015-0925 (“Bouillot”).
The Complainant asserts that to the best of its knowledge, the Respondent has never operated any business activity under the name “colas”, has no prior registered rights to the name “colas”, has not been authorized by the Complainant to use the name “colas” in course of its activities, has no business relationship or link of any nature with the Complainant, and is neither using the disputed domain name in connection with a bona fide offering of goods or services nor is making a legitimate noncommercial or fair use thereof, bearing in mind that said website is a parking page.
The Complainant asserts that its COLAS trademark has become a globally renowned indication of quality and reliability to its customers and has gained considerable recognition in the market. The Complainant contends that this strong public presence and the uniqueness and distinctiveness of its COLAS mark further supports a finding that registration of the disputed domain name is not mere coincidence but a deliberate attempt to take advantage of the reputation of the Complainant's name and trademark, adding that it seems very unlikely and implausible that the Respondent was unaware of the Complainant's activity at the time of the registration of the disputed domain name.
The Complainant submits that there is no genuine business activity at the disputed domain name and that this further raises suspicions as to the honest intent of the Respondent, adding that the parking page at the Respondent’s website contains automatically generated PPC links to third party websites. The Complainant states that these links further redirect to online dating and chatting websites, and to recruitment pages, disrupting users searching for the Complainant's website, harming the reputation and renown of the Complainant’s trademark, associating such mark with negative content, and deceiving consumers who arrive at “a wrong and (to some) extent offensive website which has no connection with the Complainant's business”.
The Respondent requests that the Complaint be denied.
The Respondent asserts that it registered the disputed domain name in 2001 because it consists of a common word in Spanish, “colas” meaning “tails”. The Respondent adds that it is also the plural of “cola” in English, being a commonly used dictionary term meaning a category of carbonated beverage. The Respondent points to pages on the Spanish and English language websites at “www.wikipedia.com” providing the respective meanings for these two examples, noting that the words concerned are subject to substantial third party use. The Respondent contends that a dictionary word, by itself, cannot function as a trademark because it is not a unique source identifier for a product or service, adding that it did not use such word to target the Complainant.
The Respondent notes that it has been registering hundreds of common word domain names since 1999 and that these are commercially valuable online identities, adding that its ultimate goal is the development of such domain names into content-rich websites featuring options for related products and services. The Respondent states that it hosts undeveloped domain names with parking pages and shares the revenue generated, which it asserts is an industry-standard practice and a genuine business activity. The Respondent provides other examples from its portfolio, including <aeroplanes.net> and <trilogy.org>, together with various non-English language dictionary word domain names, such as <camerata.org> (Italian), <chienne.org> (French), and torero.org (Spanish). The Respondent submits that the inference to be drawn is that it does not target trademarks.
The Respondent denies that it had any knowledge of the Complainant or its COLAS mark or intent to target the same when it registered the disputed domain name. The Respondent notes that the Complainant’s business is in any event not consumer-facing, as it focuses on transport infrastructure such as highways and airport runways and its typical customers are governments. The Respondent asserts that the Complainant was virtually unknown in the Respondent’s home country of Costa Rica and its geographic region of Central America in 2001, adding that, even today, the Complainant has no presence or registered trademarks in the Respondent’s said home country, and has no offices or operations anywhere in the Respondent’s said geographic region. The Respondent notes that the Complainant cannot infer because it has a trademark in its home country that such mark is well known in another country, adding that the Policy does not require a registrant to perform trademark searches before registering a domain name and that respondents generally are not charged with constructive notice of a trademark.
The Respondent notes that the PPC links on the website associated with the disputed domain name are automatically generated and contends that these do not relate in any way to the Complainant, adding that recent visits to said website have arisen from general interest keyword links for “cola”, “credit cards”, “flowers”, “groceries”, “Hulu packages”, “life insurance”, “mis fotos”, and “mobile software apps”. The Respondent notes that the Complainant does not allege that any of the links on said website relate to the Complainant or its business.
The Respondent states that the disputed domain name was registered more than 18 years ago and calls for the “doctrine of laches” to be applied to the case, in particular because the Complainant was aware of domain names in its own business for many years and yet took no action against the Respondent. The Respondent adds that this rises to the level of prejudicial and unreasonable delay. The Respondent contends that, if said doctrine is not applied by the Panel, it is nevertheless accepted in cases under the Policy that a long delay in taking action typically makes it more difficult for a complainant to establish its case on the merits.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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
Under this element of the Policy, the Complainant must demonstrate that it has rights in a trademark and that the disputed domain name is identical or confusingly similar to such trademark. The Complainant has demonstrated to the Panel’s satisfaction that it has rights in its COLAS trademark by virtue of its portfolio of corresponding registered trademarks, including that noted in the factual background section above. The Respondent’s case on this aspect is that the Complainant cannot use its registered trademark to block the use of the word “colas” in a dictionary word context. That is not a relevant consideration for the first element assessment under the Policy, which focuses on the Complainant’s rights in its trademark, followed by considerations of identity with or confusing similarity to the disputed domain name. It is however a matter which will be factored into the third element assessment under the Policy discussed below.
Comparing such mark to the disputed domain name, the Panel finds that the second level of the disputed domain name is alphanumerically identical thereto. The applicable top-level suffix in a domain name, in the present case “.org”, is typically disregarded in the exercise of the comparison for the purposes of this element of the Policy (see section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
In all of the above circumstances, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding in connection with registration and use in bad faith, discussed below, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
This element of the Policy requires the Complainant to prove each of the two conjunctive components of registration in bad faith and use in bad faith on the balance of probabilities. If the Complainant fails to prove either or both components, the Complaint will fail. In respect of registration in bad faith in particular, the Complainant typically must show that the Respondent had the Complainant’s rights in mind when it registered the disputed domain name and that it proceeded with bad faith intent to target such rights.
Dealing first with the Respondent’s submissions regarding the Complainant’s delay in bringing the Complaint, contrary to the Respondent’s primary submission, panels under the Policy do not typically subscribe to the notion that mere delay acts as any bar either to the bringing of a complaint or to the complainant succeeding on the merits (see section 4.17 of the WIPO Overview 3.0). As a general observation, however, the longer the period between creation of a domain name by a respondent and the filing of a corresponding complaint under the Policy, the harder it may be for the complainant to prevail on the merits. The circumstances at the point when a domain name is registered are often very important to the topic of registration in bad faith under the Policy and there can be an increased challenge for a complainant in evidencing these where a registration has occurred in the more distant past, such as some 18 years ago in the present case.
The Complainant asserts that it is a significant global business and that its COLAS trademark is well known and is a distinctive non-dictionary term coined from "cold" and "asphalt". The Complainant therefore submits that it is reasonable to infer on balance that the Respondent must have had knowledge of and intent to target it when the disputed domain name was registered in 2001. For its part, the Respondent submits that “colas” is the plural form of a dictionary word in two different languages and insists that it had no knowledge of the Complainant or its rights and had no intent to target the same but rather was investing in a domain name consisting of such dictionary word. The Respondent explains that it is in the business of investing in such domain names and states that it parks these with a PPC revenue share, providing various examples from its portfolio.
In line with the Respondent’s submissions, the Panel accepts that the word “colas” is a dictionary word, contrary to the Complainant’s specific assertion. The Respondent did not provide actual supporting evidence, for example, in the form of dictionary extracts but the Panel is content to rely upon its own knowledge of English for the English language meaning of “colas” (indicating the plural of a particular type of carbonated drink). The Panel has further consulted an online Spanish to English dictionary with regard to the alleged Spanish meaning (the plural of “tail”) and notes additional alternative meanings/translations such as “queues” and “glues” as well as “tails”. Finally, the Panel has visited the corresponding links at “www.wikipedia.com” provided by the Respondent, which show such words in use. In this modest sense, the Panel has undertaken limited factual research into matters of public record (see section 4.8 of the WIPO Overview 3.0). The fact that the disputed domain name consists of a dictionary word and that the Respondent appears to invest in such domain names lends some credibility to the Respondent’s insistence that this was the reason for its registration of the disputed domain name rather than any bad faith intent to target the Complainant’s mark.
The Complainant shows that its trademark is of a longstanding nature, that it engages in activities across the globe, and that its mark is well known within its particular field of activity. However, on their own, those facts do not necessarily translate to a finding that the Complainant and its rights were probably known to the Respondent when it created the disputed domain name in 2001. For example, there is no evidence before the Panel that the Complainant undertakes or has ever undertaken any activities in the Respondent’s home country or the wider geographical area of Central America. The Respondent specifically asserts that the Complainant is not present in its locality and this is not contradicted by anything in the Complainant’s case. The Respondent adds that the Complainant’s customers are less likely to be typical consumers or Internet users but rather bodies responsible for developing large infrastructure projects, such as governments, and this likewise makes it less likely that the Respondent would have heard of the Complainant. Finally, there is no evidence that, although the Parties are based in different jurisdictions, the Complainant’s web presence as at 2001 would more probably than not have come to the Respondent’s notice (see, for example, the discussion on that topic in Fakir Elektrikli EV Aletleri Diş Ticaret Anonim Şirketi v. Development Services, Telepathy, Inc., WIPO Case No. D2016-0535).
In support of its position that its rights are so extensive that the Respondent must have known of these, the Complainant relies upon Bouillot, a case in which it was also the complainant. However, that case is substantially different on its facts from the present case, first, regarding the geographic locations of the parties, secondly, regarding the use to which the domain name concerned had been put, and thirdly, regarding the proximity in time between the registration of the domain name and the filing of the corresponding complaint.
The respondent in Bouillot was based in France, the same country in which the Complainant has its principal place of business. In the present case, by contrast, the Respondent is based in Costa Rica and asserts that the Complainant has no presence in that country nor even in the wider region of Central America. The domain name in Bouillot had been used in connection with a false email address, which purported to be a genuine email address of the Complainant. It also featured an acronym which was close to that used by one of the complainant’s subsidiary companies. In the present case, the disputed domain name has been used for PPC advertising, and, as further discussed on the topic of use of the disputed domain name, the extent to which the PPC links target the Complainant or its rights is unclear based on the present record. Finally, the domain name in Bouillot was registered around five and a half months before the complaint was filed. In the present case, the corresponding period is some 18 years and, more importantly, no evidence has been placed on the record as to how the disputed domain name has been used over the intervening period.
Turning to the present use of the disputed domain name, the Panel notes the Respondent’s assertion that it parks its dictionary word domain names, including the disputed domain name, in order to share PPC revenue pending further development. The Respondent cites other examples of domain names, which it has put to the same use, and the Panel accepts that these are similar dictionary word domain names in a variety of languages. The Panel also notes the findings of the panel in the Respondent’s favor in a similar case, namely Rusta AB v. Daruna, LLC, WIPO Case No. D2011-1887 which concerned the Respondent’s use of the domain name <rusta.com>, “rusta” being a common Swedish word, also used for generalized PPC links.
As the panel noted in Burger King Corporation v. Burger King S.R.L., WIPO Case No. DRO2008-0012, “The generation of revenue from domain name parking activities is not necessarily activity in bad faith. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant chose the domain name in question because of its similarity to a mark or name of another person in the hope and expectation that that similarity will result in an increased number of Internet users being drawn to that page (see for example Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).” Here, there is insufficient evidence to show that this is the more probable reason as to why the Respondent selected the term “colas” as the second level of the disputed domain name.
Where PPC links directly target a complainant’s rights, this may lead to a reasonable inference, in and of itself, that the domain name used for the corresponding website was registered in the knowledge of such rights, and with intent to target them. However, it is not clear from the evidence in the present case that the PPC links do target the Complainant’s mark. The only evidence of use of the disputed domain name available to the Panel is a single screenshot of the landing page, dated March 3, 2020, taken on a mobile device. Although this shows that the PPC links feature “Colas Recrutement” in a single entry and ”Colas” in another, the Complainant has not produced any evidence showing where these links point and, more importantly, whether they reference the Complainant’s business or its competitors directly. The Complainant merely notes that the links on said website point to online dating and chatting websites, and to recruitment pages.
In all of the above circumstances, the Panel concludes that the Complainant has failed to prove registration in bad faith on the balance of probabilities. The Complaint therefore fails. The question of whether the disputed domain name is being used in bad faith is slightly more opaque. As noted above, it is unclear as to whether or how the PPC advertising on the Respondent’s website is necessarily targeting the Complainant’s rights based on the limited evidence presented here. Nevertheless, it does appear that the advertising links concerned are not based on the dictionary word meanings contended by the Respondent either. Now that the Respondent is on notice of the Complainant’s existence and the potential for future confusion via the appearance of related advertising links, the Respondent would do well to take active steps to suppress any future PPC advertising associated with the disputed domain name which might point in the direction of the Complainant’s line of business. Its failure to do so may open the Respondent up to trademark infringement or other claims before a court.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: June 1, 2020