30th Nov 2011
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Converse Trading, Ltd. v. Vertical Axis Inc.
Case No. D2011-1616
1. The Parties
The Complainant is Converse Trading, Ltd. of London, United Kingdom of Great Britain and Northern Ireland, represented by Lehmann y Fernandez S.L., Spain.
The Respondent is Vertical Axis Inc. of Christ Church, Barbados, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <trucco.com> is registered with Nameview Inc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2011. On September 23, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 2011, 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 for the disputed domain name. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 3, 2011. The Center verified that the Complaint together with the amendment to the Complaint/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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced October 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2011. The Response was filed with the Center on October 24, 2011.
Based on the Respondent’s designation of a three-member Panel, the Center appointed Petter Rindforth, Alberto De Elzaburu and The Hon Neil Brown QC as panelists in this matter on November 18, 2011. The Panel finds that it was properly constituted. Each member of 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 Panel shall issue its Decision based on the Complaint, the Response, the Policy, the Rules and the Supplemental Rules. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant is the owner of the trademark TRUCCO, filed and registered as:
Community Trademark Registration No. 001246776 TRUCCO (word); filed on July 20, 1999; registered on January 22, 2004; in respect of goods and services in International Classes 9, 18, 25 and 39. (Copy of the OHIM Trademark database was attached as Annex 7 of the Complaint).
The disputed domain name <trucco.com> was created on May 3, 2001 and registered subsequently by the Respondent on February 21, 2002. .
5. Parties’ Contentions
The Complainant states that the disputed domain name <trucco.com> is identical to the Complainant’s trademark TRUCCO.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not found any Spanish or Community trademark rights related to the Respondent, and the Complainant has not authorized the Respondent to use the TRUCCO trademark. Finally, the Complainant argues that the disputed domain name was registered and is being used in bad faith.
Here, the Complainant initially states that the TRUCCO trademark is licensed for world-wide use to the Spanish company IN SITU, SA. According to the Complainant, the TRUCCO trademark has been in use since the 1980s. IN SITU, SA. registered the domain name <trucco.es> on January 22, 1998, and has since then marketed the TRUCCO products online. The Complainant submits that IN SITU, SA operates shops in Europe, Asia and America, with more than 70 international franchises of the trademark provided. (Annex 15 - 18 to the Complaint show examples of advertising, marketing and use of the trademark TRUCCO). The Complainant states that the TRUCCO trademark’s reputation has been accredited and that the Respondent could therefore not have registered or used the disputed domain name without knowledge of the trademark.
According to the Complainant, the Respondent registered the disputed domain name <trucco.com> with the main intention to sell the disputed domain name, having a specific “Click here to make an offer on this domain name” at the corresponding web site. The Complainant contacted the Respondent on December 30, 2010, making an offer to buy the disputed domain name. The Respondent replied, via DomainBrokers, that the holders of the disputed domain name <trucco.com> were “looking for offers in the six-figure price”. The Complainant replied with an offer of EUR 3,000 to EUR 4,000, however they received no further reply. The Complainant refers to this, as well as to the fact that the publicly available WhoIs information for the disputed domain name was subsequently changed to a protected identity, as evidence of bad faith registration and use.
The Complainant argues that the use of the disputed domain name <trucco.com> is not “real”, but rather resolves only to a parked web site for the purpose of selling the disputed domain name.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant.
The Respondent argues that there is absolutely no basis for transferring the disputed domain name to the Complainant, pointing out that the Complainant has waited almost ten years to initiate the claim and that the Complainant has failed to meet its burden of proof under each prong of the Policy.
The Respondent asserts that the Respondent did not register the disputed domain name <trucco.com> with the Complainant in mind, and had no knowledge of the Complainant, its web site, its business name or trademark when it registered the disputed domain name almost ten years ago.
Referring to the Doctrine of Laches, the Respondent claims that the Complaint should be barred as the Complainant has waited almost ten years to initiate this Proceeding.
According to the Respondent, the Complainant is not well-known in Canada, where the Respondent states that it is domiciled and operates.
Further, the disputed domain name <trucco.com> is not identical or confusingly similar to a trade mark in which the Complainant alleges enforceable rights, as the disputed domain name was registered almost two years before the Complainant’s Community Trademark No. 001246776 for TRUCCO was registered. The Respondent concludes that, for the purpose of this proceeding, the Complainant does not hold a relevant enforceable trademark which pre-dates the Respondents registration of the disputed domain name.
The Respondent claims to have registered the disputed domain name because it is a common Italian dictionary word, meaning “make-up” or “cosmetic trick”.
The Respondent points out that an online search for the word “trucco” produce 18,500,000 third party results, including registered domain names, unrelated to the Complainant.
The Respondent states that it has registered hundreds of common word domain names for investment and development since 1997, long before the advent of pay-per-click advertising and domain name parking services. Respondent registers common word domain names because they best fulfil the purpose of a domain name which is to be easy to remember, serve well as online identities and, as a result, are commercially valuable.
The Respondent states that the disputed domain name <trucco.com> is used to provide users of the corresponding web site the opportunity to locate general topics of interest and that this is a legitimate use.
As to the link with a general offer to sell the domain name, the Respondent – noting that the disputed domain name <trucco.com> consists of a generic word – states that this is legitimate business practice.
Finally, the Respondent claims that there is no evidence of bad faith registration or use.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Registrar Conduct
The Complainant has made comments on the conducts of the Registrar. As the Panel finds that the Registrar is not part of this case as a Respondent, the Panel has not considered any of these comments in its decision.
B. Doctrine of Laches
The Respondent, referring to the fact that the Complainant has not initiated the dispute until now, almost ten years after the registration of the disputed domain name, claims that the Complaint should be barred by laches.
Many decisions in proceedings under the UDRP have expressed the view that the doctrine of laches, as such does, not generally apply under the UDRP; and that delay in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. The reasons advanced for that view have been that the remedies under the UDRP are injunctive rather than compensatory in nature and that a principal concern of UDRP proceedings is to avoid ongoing or future confusion as to the source of communications, goods, or services. On the other hand, that view is not universally held, and the contrary view has been expressed, as it was put in The New York Times Company v. Name Administration Inc. (BVI), NAF Claim No. FA1349045, that laches is "a valid defense in any domain dispute where the facts so warrant."
However, a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits; particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith. In that regard, the Panel notes with approval the remarks made in C. Brewer and Sons Limited. v. Vertical Axis, Inc. / wallpaperdirect.com c/o Nameview Inc. Whois Identity Shield, WIPO Case No. D2009-1759, and in Vanguard Trademark Holdings USA LLC v. Nett Corp., NAF Claim No. 1262162, that delay in bring complaints under the UDRP may raise the suggestion that a complainant did not really believe that the domain name had been registered in bad faith. The Panel will therefore approach this proceeding for decision in the light of these views.
C. Identical or Confusingly Similar
The Complainant is the owner of the TRUCCO trademark, registered in the European Union.
The relevant part of the disputed domain name is “trucco”, as it has been well established in previous UDRP cases that the added top-level domain – being a required element of every domain name – may be disregarded when assessing whether or not a mark is identical or confusingly similar.
As the disputed domain name consists of the Complainant’s trademark TRUCCO, the Panel finds that <trucco.com> is identical to the Complainant’s registered trademark TRUCCO and that the first element of the Policy has been met.
D. Rights or Legitimate Interests
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. (See Clerical Medical Investment Group Limited v. Clericalmedical.com (Clerical & Medical Services Agency), WIPO Case No. D2000-1228 (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of production to the respondent to demonstrate that such a right or legitimate interest does exist).
The Complainant contends that the Respondent is not an authorized agent or licensee of the Complainant’s products or services and has no other permission to apply for any domain name incorporating the trademark TRUCCO.
In reply, the Respondent submits that the disputed domain name <trucco.com> is a common Italian dictionary word, meaning “make-up” or “cosmetic trick” and that this fact gives rise to a right or legitimate interest in the domain name.
However, the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Generally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning. (See Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462).
Both the Respondent and the Complainant have referred to the fact that the disputed domain name <trucco.com> is more or less used for a parking page with a links to general sales offers of a variety of goods and services. The Panel has been able to verify this use by its own examination of the relevant website. As stated by panels in previous UDRP cases, such use may be permissible in some circumstances, but would not of itself confer rights or legitimate interests.
The Panel has therefore considered the specific details in this case, and notes that:
(i) the disputed domain name clearly consists of a common, dictionary, word;
(ii) the disputed domain name was registered two years before the Complainant’s Community Trademark, and there is nothing contained in the record that persuades the Panel that the Complainant’s trademark TRUCCO, at that time, was famous enough to be automatically assumed to be related to the common word “trucco”;
(iii) from information provided by both the Complainant and the Respondent, it seems that part of the business of the Respondent is to register dictionary words in order to take advantage of the commercial value of such words as domain names;
(iv) the Respondent does not seem to have used the disputed domain name specifically to take advantage of any possible likelihood of confusion with the Complainant;
Altogether, the Panel therefore finds that the Respondent may well have sufficient legitimate interests in the disputed domain name.
E. Registered and Used in Bad Faith
To establish the requirement under paragraph 4(a)(iii)of the Policy, the Complainant must prove that both registration and use of the disputed domain name are in bad faith.
The Panel cannot find any evidence of bad faith registration, as – considering the geographical separation between the Complainant and the Respondent, as well as the fact that at the relevant time the Complainant did not have a registered trademark for TRUCCO – there is nothing indicating that the Respondent should have been aware of the Complainant’s trademark already at the date of the registration of the disputed domain name <trucco.com>.
In addition, where a respondent registers a domain name consisting of a “dictionary” term because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, rather than its specific trademark value, the use of the domain name consistent with such good faith belief may be considered as evidence of use in good faith. (See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. See also Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964, indicating that the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark).
As to the Respondent’s reliance on the fact that the disputed domain name has been registered for almost ten years, without any action taken by the Complainant, the Panel agrees with the Respondent that this makes it more difficult to accept the Complainant’s arguments that the disputed domain name was both registered and used in bad faith. See Francine Drescher v. Stephen Gregory, WIPO Case No. D2008-1825 (“It is difficult to believe that the Complainant and her advisers only recently became aware of a domain name that comprises simply the Complainant's name combined with the .com. And yet the Complaint fails to explain why it is that it has taken the Complainant so long to bring these proceedings.”), see also HRB Royalty, Inc. v. Asif Vadaria, WIPO Case No. D2007-1658.
Therefore, the Panel concludes that the Complainant has failed to prove that the disputed domain name is registered and used in bad faith.
For all the foregoing reasons, the Complaint is denied.
Alberto De Elzaburu
The Hon Neil Brown QC
Dated: November 30, 2011