The Complainant is Técnica Industrial Oswaldo Filizola Ltda., Brazil, represented by Peduti Advogados, Brazil.
The Respondent is Whois Agent (804833973), Whois Privacy Protection Service, Inc., United States of America / Raphael Barduche, Brazil, self-represented.
The disputed domain name <filizolabalancas.com> is registered with eNom, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2020. On July 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name and the <balancasfilizola.com> domain name. On July 30, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name and the <balancasfilizola.com> domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 3, 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 August 6, 2020, removing the <balancasfilizola.com> domain name from the dispute.
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 August 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2020. The Response was filed with the Center on September 13, 2020.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on September 30, 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.
The Complainant is a Brazilian company founded in 1966 initially manufacturing dynamometers and testing machines. It is the registrant of the domain names <oswaldofilizola.com.br>, registered on September 24, 2001, and <oswaldofilizola.com>, registered on April 15, 2009 as well as of the following Brazilian trademark registrations:
- No. 914416863 for TÉCNICA INDUSTRIAL OSWALDO FILIZOLA filed on March 28, 2018, and registered on September 17, 2019, in class NCL(11) 9 to sign “scales, precision scales; dynamometers”; and
- No. 914416901 for TÉCNICA INDUSTRIAL OSWALDO FILIZOLA filed on March 28, 2018, and registered on September 17, 2019, in class NCL(11) 35 to sign “trade (by any means) of measuring devices and instruments; trade (by any means) of weighting apparatus and instruments”.
The disputed domain name <filizolabalancas.com> was registered on October 2, 2018, and resolves to an online shop identified as “FILIZOLA SHOP” selling scales and related products.
The Complainant states that it has been using the FILIZOLA trademark (which is the family name of its founder) since its incorporation in 1966 in spite of only having applied for its trademark in 2018. The Complainant further affirms that it has developed substantial goodwill and recognition due to its long and exclusive use of the FILIZOLA trademark to identify scales.
According to the Complainant, the disputed domain name is confusingly similar to the Complainant’s trademark given that “balancas” is the Portuguese word for “scales”, products that the Complainant has been selling since its incorporation under the FILIZOLA trademark and “Técnica Industria Oswaldo Filizola Ltda” trade name.
In the Complainant’s view, the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name given that (i) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services; (ii) the disputed domain name is being used to attract, for commercial gain, Internet users due to confusion created with the Complainant’s trademark; and (iii) the Respondent’s choice to retain a privacy protection service indicates a lack of legitimate interest.
Furthermore, the Complainant argues that by registering the disputed domain name the Respondent had the clear intention of creating confusion and practicing unfair competition, being the Respondent’s choice to retain a privacy protection service a further indicative of the Respondent’s bad faith so as to conceal its true identity.
The Complainant states that the Brazilian Court of first instance has published a preliminary injunction prohibiting the Respondent to use the disputed domain name. The Respondent filed an appeal, which was rejected by the Court. The case is pending final decision.
The Respondent contends that the Complainant is using the proceeding to harass it so as to unlawfully obtain the disputed domain name, not disclosing essential facts and information in the Complaint.
According to the Respondent, the FILIZOLA trademark was originally coined and used by Filizola S/A (Brazilian Tax Payer Id Number 43.225.192/0001-47 – Annex 1 to the Response) a company that was declared bankrupt in 2014.
In view of that, the Respondent contends that the Complainant has never been entitled to use FILIZOLA exclusively but rather only its full corporate name “TÉCNICA INDUSTRIAL OSWALDO FILIZOLA”, what explains the 60-year delay in the Complainant’s acting to register its trademark.
In the Respondent’s view, the Complainant does not have exclusive rights over the FILIZOLA or BALANÇAS FILIZOLA trademarks and it is not therefore entitled to claim the disputed domain name.
The Respondent further indicates that Filizola is a family name that has been registered by other parties who own FILIZOLA composed trademarks such as FERNANDO FILIZOLA, registered under No. 908487630, also to sign measuring devices and scales in class 09.
Furthermore, the Respondent states that it has been selling scales online since 2016 and that the disputed domain name was registered in 2018 when the Complainant did not have any trademark rights in place, what characterizes a bona fide offering of goods and services under the Policy.
In addition to that the Respondent rebuts the Complainant’s inference that the privacy service would indicate bad faith since such service is not forbidden and is commonly used.
Lastly, the Respondent contends that it has no intention to deceive the Complainant’s consumers since it is using the disputed domain name in a legitimate manner, in a different segment and is not targeting the Complainant’s trademark, or unduly profiting from an association with it.
The Policy provides, at paragraph 4(a), that each of the following three findings must be made in order for the Complainant to prevail:
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.
The Complainant has established rights in the TÉCNICA INDUSTRIAL OSWALDO FILIZOLA trademark.
The disputed domain name can be found confusingly similar to the Complainant’s trademark, disregarding the generic Top-Level Domain (“gTLD”), given that part of the dominant feature of the trademark is recognizable in the disputed domain name. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
In view of the particulars of this case and also considering that the requirements of paragraph 4(a) of the Policy are conjunctive, the Panel will address the second and third elements jointly given that this is clearly not a case best suited for the UDRP since it involves matters that would be better dealt with at a Court with full jurisdiction to address the facts under discussion.
The Respondent has registered the <filizolabalancas.com> disputed domain name on October 2018, prior to the registration of the Complainant’s TÉCNICA INDUSTRIAL OSWALDO FILIZOLA trademark on September 2019, which in itself would pose a problem for the Complainant to overcome (there are, of course, exceptional circumstances in which a Complainant can show bad faith in the registration of a disputed domain name in spite of not yet having acquired trademark rights, such as in a merger of companies or largely advertised new trademarks1 but none of these circumstances appear to be present here).
The Complainant has stated that it “has developed substantial goodwill and name brand recognition in its FILIZOLA mark, based on its long and extensive use of FILIZOLA to identify scales”.
However, the facts brought by the Respondent indicate that the Complainant is not the only entity that has used the FILIZOLA trademark.
A cursory search conducted by the Panel corroborates the Respondent’s statements and shows that another company that used the FILIZOLA trademark was founded in 1886 by the Italian immigrant Vicente Filizola (“https://pt.wikipedia.org/wiki/Filizola”2 ), having that company become insolvent in 2012 (“http://www.ersadvocacia.com.br/conteudo.php?sid=44&cid=4824”3 ) and declared bankrupt in 2014 (“https://www.osul.com.br/quase-50-das-empresas-que-entram-em-recuperacao-judicial-no-pais-morre/”4 ).
Given that the Respondent, on the other hand, has not shown that it is related to the Filizola family or holds any rights over that family name, not aiding in its turn the section in its webpage named “Institutional” that might be read as an attempt to pass off as the successor of the original creator of the trademark (“Our customers have extended for generations across Brazil. It is an immense pride for Filizola, even with a small contribution, to be part of so many business and success stories”5), the Panel will have to analyze whether the Respondent’s conduct characterizes bad faith registration and use of the disputed domain name, in light of paragraph 4(b) of the Policy which provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Even though the Complainant stresses that the Respondent had the clear intention of creating confusion and practicing unfair competition, the Complainant has not proven that the Respondent was specifically targeting the Complainant.
The Panel notes that the Complainant has applied for the trademark FILIZOLA (application No. 919079709) on January 24, 2020, and the application is still pending analysis by the Brazilian Trademark Office (INPI) due to the existence of a previous trademark (FILIZOLA BEYOND TECHNOLOGY) in the same sector as the Complainant.
In order to succeed, the Complainant would be required to show that its specific clientele and trademark rights were being targeted or singled out by the Respondent at the time of registration of the disputed domain name. In other words, the Complainant would need to demonstrate (i) that the Respondent had been aware of the Complainant or its trademarks prior to registering the disputed domain name; and (ii) that the particulars of the case at hand indicate that the Respondent also had an intent to target the Complainant’s specific trademark rights, as opposed to merely benefitting from the presence and attractiveness of the wording in the disputed domain name, leading to likely profitable uses. In this Panel’s view, the Complainant has not.
In any event, as previously noted, this is clearly not a case best suited for the UDRP since it involves matters that would be better dealt with at a Court with full jurisdiction to address the facts under discussion.
For the foregoing reasons, the Complaint is denied.
Wilson Pinheiro Jabur
Sole Panelist
Date: October 14, 2020
1 Section 3.8.2 of the WIPO Overview 3.0 indicates that “Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application”.
2 Acessed October 14, 2020.
3 Acessed October 14, 2020.
4 Acessed October 14, 2020.
5 “Nossos clientes se arrastam por diversas gerações espalhadas pelo Brasil. É um imenso orgulho para a Filizola, mesmo que com uma pequena contribuição, fazer parte de tantos negócios e histórias de sucesso.”