WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Industria de Alimentos Zenú S.A.S. v. Privacy Guardian, PrivacyGuardian / Frederick Ordway, Uniqco Inc
Case No. D2017-2024
1. The Parties
The Complainant is Industria de Alimentos Zenú S.A.S. of Medellín, Colombia, represented by OlarteMoure, Colombia.
The Respondent is Privacy Guardian, PrivacyGuardian of Phoenix, Arizona, United States of America (“United States”) / Frederick Ordway, Uniqco Inc of Huntsville, Alabama, United States.
2. The Domain Name and Registrar
The disputed domain name, <zenu.com> (the “Domain Name”), is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2017. On October 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 19, 2017, 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. The Center sent an email communication to the Complainant on October 27, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On October 27, 2017, the Complainant filed an amended Complaint.
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 November 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 2017.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 29, 2017. 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 invitation to the Complainant to amend the Complaint stemmed from the fact that the second above named Respondent registered the Domain Name in the name of a privacy service, the first above named Respondent. For the purposes of this decision the Panel treats them as one. Henceforth the term “Respondent” is used to refer to them both.
4. Factual Background
The Complainant is a large and well-established Colombian-based trader in processed foods, which has traded for at least the last 60 years under the “Zenú” name.
The Complainant is the proprietor of a number of trade mark registrations of or including the “Zenú” name, some of them dating back to the 1990s. Most of the registrations are Colombian, but some are also for other Central and South American countries and there is one European Union registration dating back to 1998.
In the United States, the jurisdiction in which the Respondent resides, the Complainant has no registrations of the “Zenú” name, just two pending applications.
The Domain Name was registered on March 7, 2001, and is not connected to an active website. The Domain Name resolves to a webpage featuring the message: “We’re sorry, but we were unable to process the redirection request for the site you are attempting to access. If you feel that you are receiving this message in error, please check the URL and try your request again.”
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights, that the Respondent has no rights in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
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, 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.
In coming to a decision the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
B. Identical or Confusingly Similar
The Panel finds that the Domain Name, which features the Complainant’s ZENÚ trade mark (albeit absent the acute accent) is identical or confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
In light of the Panel’s finding under section 6.D below it is unnecessary for the Panel to address this issue. That said, there is nothing before the Panel to suggest that the Respondent might have any rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Complainant contends that the Domain Name has been registered and is being used in bad faith on the basis that the Respondent registered the Domain Name with knowledge of the Complainant’s trade mark and with a view to selling the Domain Name to the Complainant at a significant profit (paragraph 4(b)(i) of the Policy). The Complainant complains that in consequence the Complainant is prevented from registering its trade mark as a domain name in the “.com” generic Top-Level Domain (“gTLD”).
Necessarily, the Complainant’s contention in this regard is somewhat speculative given that it appears to know nothing about the Respondent, the Respondent has made no active use of the Domain Name and the Respondent has not participated in this proceeding.
To succeed in a complaint under the Policy a complainant must at the very least be able to demonstrate that it is more likely than not that the respondent registered the disputed domain name with knowledge of the complainant, but without justification, and with a view to targeting the complainant.
Thus, the Panel has to assess as best it can on the evidence before it what the Respondent’s state of mind was when he registered the Domain Name over 16 years ago back in March 2001.
Factors that may be relevant are the geographical locations of the parties, the behaviour of the Respondent, the fame of the Complainant’s trade mark back in 2001, the nature of the trade mark (is it a made-up word? Is it exclusive to the Complainant? Does it have a descriptive or generic flavor?).
The Complainant is Colombian-based, whereas the Respondent’s address is in Alabama, United States. On the face of it therefore they appear to be in different geographical locations.
The Respondent has made no active use of the Domain Name, but has used a privacy service, which may in certain circumstances support a bad faith claim and has failed to respond to the Complaint, from which the Panel may infer that the Respondent has no answer to the Complainant’s contentions. The Complainant has also produced evidence to suggest that the Domain Name is for sale at a price of in excess of USD 50,000.
While it is true that the use of privacy and proxy services can sometimes support a finding of bad faith, the current widespread use of such services for legitimate reasons renders it less likely nowadays that their use will be regarded as an indication of bad faith in the absence of some other evidence to show bad faith intent. In this case the underlying Respondent’s name and contact details were disclosed promptly by the Registrar. True, the use of the service has made it a bit more difficult for the Complainant to check on the Respondent and his track record, but there is nothing before the Panel to show that the Complainant has been inconvenienced. There is nothing to show that the Complainant has even attempted to investigate further with knowledge of the identity of the underlying registrant. The Panel will address this issue in greater detail in section 6.E below.
The Respondent has not responded to the Complainant’s contentions. The Rules give the Panel the discretion to draw such inferences from the failure to respond as it deems appropriate. Again, failure to respond is not, of itself, an indication of bad faith. It is certainly not, of itself, an admission that the Complainant’s contentions are well-made. It may tip the balance in a marginal case, but in the view of the Panel this is not such a case.
As to the fame of the Complainant’s trade mark, the body of the Complaint contains no details as to the Complainant’s sales figures in 2001 or indeed at any time since; nor does the Complaint contain any details of the geographical extent of the Complainant’s usage of its ZENÚ trade mark. The Panel has trawled through the Complainant’s Annex 7, which details the history of the Complainant, but it covers a plethora of brands and no useful evidence as to the volume or geographical scope of the Complainant’s trade under the “Zenú” name outside Colombia.
As to the nature of the Complainant’s trade mark, the Complainant’s history as described in Annex 7 was informative. The name “Zenú” is not a made-up word and is not exclusive to the Complainant. As the document points out, the Complainant selected the name, “an indigenous word”, to pay tribute to inter alia an indigenous people “grouped near a river called “Zenú” in their indigenous voice.”
Moreover, when going through the schedule of the Complainant’s trade mark registrations, the Panel found a somewhat ambiguous reference to a United States Trade Mark Registration. On checking the online record at the United States Patent and Trade Mark Office, the Panel found that it was not for the “Zenú” name. However, there are two pending United States applications for the name in the name of the Complainant. There is also a registration of the same name in the name of a United States company in class 29 for processed meat and fish with a 2011 first use claim and another pending application in the name of yet another company.
The Panel concludes that the Complainant’s rights to the name “Zenú” are not exclusive. There is a legitimate descriptive use available to the world at large and there appear to be others with a trade mark interest in the name.
The Complainant contends that the Respondent is willing to sell the Domain Name for a figure in excess of USD 50,000. The evidence to support the claim is a screenshot of a Spanish language webpage indicating that the Domain Name is available for purchase for a sum in Colombian currency equivalent by the Complainant’s calculation to USD 50,031.016313.
The Panel is uncertain as to the provenance of the exhibited webpage which appears to have been derived from a Google website. The Complainant does not explain the approach, which led to its receipt. An oddity is that in neither currency (the Colombian currency or its conversion by the Complainant into United States dollars) is it a round figure. It looks to the Panel to have been an automated figure. It is a high figure, but the height of the figure cannot sensibly on its own lead to a finding of bad faith registration and use without something to indicate that the Respondent’s motives 16 years ago were mala fide.
It is possible that, despite the lack of any relevant evidence from the Complainant, the Respondent did in fact register the Domain Name in bad faith targeting the Complainant, but from the Panel’s perspective it is just as likely, on the evidence before the Panel, that the Respondent registered the Domain Name for its descriptive value at a time when the Respondent was totally unaware of the Complainant and its “Zenú” trade mark. The key point is that there is absolutely no evidence before the Panel enabling the Panel to conclude/infer that when the Respondent registered the Domain Name over 16 years ago he had any reason to be aware of the existence of the Complainant or its ZENÚ trade mark.
The Complainant cites the case of Kabushiki Kaisha Hitachi Seisakusho v. APT Co., WIPO Case No. DIR2008-0004 (<hitachi.ir>), but that case was very different in one major respect. In that case the Panel found that the complainant’s trade mark, HITACHI, was meaningless and served only to identify the complainant in that case. Here, as indicated above, the Complainant’s evidence demonstrates that the name, “Zenú”, is also the name of a Colombian river and the indigenous tribe that lived in the area. Furthermore, it is apparent from the Panel’s visit to the website of the United States Patent and Trade Mark Office that others have an interest in the name.
The burden of proof being on the Complainant and the standard of proof being “on the balance of probabilities” or “more likely than not”, the Complaint fails. The Complainant has failed to prove that the Domain Name was registered and is being used in bad faith.
E. Reverse Domain Name Hijacking (“RDNH”)
As can be seen from section 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”):
“Panels have consistently found that the mere lack of success of a complaint is not itself sufficient for a finding of RDNH. At the same time, the mere fact of a respondent default would not by itself preclude an RDNH finding as this ultimately turns on the complainant’s conduct. In either event, following some early cases to the contrary, panels have more recently clarified that, for an RDNH finding to be made, it is not necessary for a respondent to seek an RDNH finding or prove the presence of conduct constituting RDNH.
Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument, (iv) the provision of false evidence, or otherwise attempting to mislead the panel, (v) the provision of intentionally incomplete material evidence – often clarified by the respondent, (vi) the complainant’s failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence.”
There are two factors, which have given the Panel cause for concern. First, for a complainant complaining that in registering the Domain Name in bad faith the registrant had prevented the complainant from registering the Domain Name, it seems astonishing to the Panel that 16 years were allowed to pass by before the Complainant took any action. If it is the case that it was only recently that the Domain Name came to the attention of the Complainant, the Complainant’s desire for the Domain Name cannot have been great. Commonly, commercial entities wishing to register their trade marks as domain names will look at availability in the “.com” domain before they look anywhere else. When did the Domain Name first come to the attention of the Complainant? That question is not addressed in the Complaint. If it was several years ago, was the view then taken that a complaint was not justified? The failure to address the issue at all gives rise to a concern that the Complainant knew that to have addressed it would have dealt its basis for complaint a fatal blow. Whether that is a fair inference to draw, the Panel does not know, but manifestly the extensive delay in taking action called for an explanation.
A second concern is the Complainant’s behaviour on notification by the Center of the identity of the underlying registrant. That notification was made to the Complainant by email on October 27, 2017 and the Complainant was given five days to file an amended complaint if it wished to do so. The amended complaint was lodged with the Center on October 30, 2017. The Panel queries what the Complainant did on receipt of the notification. Would it have done what the Panel has done, namely conduct a search engine search against the Respondent and his company? Had it done so, it would have discovered in a matter of seconds that the Respondent runs (or purports to run) a wine business in Huntsville, Alabama from the address notified by the Registrar in response to the Center’s registrar verification request. With that information the Respondent could have been contacted. There is nothing before the Panel to suggest that the Complainant made any attempt to contact the Respondent. Why not? Was it because the Complainant thought that its bad faith contentions might be undermined? There was no obligation upon the Complainant to make contact with the Respondent, but to have done so might well have added substance to the Complainant’s bad faith claims, depending of course on the nature of the Respondent’s response.
If the Panel had been satisfied that when the Complainant filed the Complaint (or the amended Complaint) the Complainant knew that its case did not deserve to succeed, the Panel would have had no hesitation in making a finding of RDNH. As it is, for the Panel, on balance, there are too many unanswered questions to justify such a finding.
For the foregoing reasons, the Complaint is denied.
Date: December 2, 2017