WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ercros S.A. v. Jalindar Pawar, Indigo Valley Information Technology Solutions PVT. Ltd.

Case No. D2016-1015

1. The Parties

Complainant is Ercros S.A. of Barcelona, Spain, represented by Sugrañes, S.L., Spain.

Respondent is Jalindar Pawar, Indigo Valley Information Technology Solutions PVT. Ltd. of Pune, India, self-represented.

2. The Domain Name and Registrar

The Disputed Domain Name <ercros.com> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2016. On May 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 20, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s contact details.

The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on May 30, 2016. In accordance with the Rules, paragraph 5, the due date for the Response was June 19, 2016. On June 13, 2016, Respondent requested an automatic 4-day extension of the deadline to file a Response. The Center granted the requested extension and confirmed that the new due date for the Response was June 23, 2016. The Response was filed with the Center on June 22, 2016.

The Center appointed Richard W. Page as the sole panelist in this matter on June 27, 2016. 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.

On June 23, 2016, Complainant filed a Supplemental Filing presenting additional evidence. On July 8, 2016, Respondent objected to the Supplemental Filing and requested an opportunity to respond. On July 11, 2016, the Panel issued an Administrative Panel Procedural Order allowing Respondent four calendar days to respond to Complainant’s Supplemental Filing. On July 15, 2016, Respondent filed a response to Complainant’s Supplemental Filing (“Response to Supplemental Filing”). The Panel has accepted and considered both of these submissions.

4. Factual Background

Complainant is a leading Spanish company in the production of among other things, raw materials, plastics and chemicals for different economic sectors such as the automotive, or pharmaceutical sectors. It is the second largest Spanish producer of P.V.C. and the ninth largest in Europe.

The Disputed Domain Name was registered on January 14, 2000.

Complainant is the owner of numerous trademark registrations for “Ercros” in Spain and the European Union (the “ERCROS Mark”). The Spanish registrations are prior to the registration of the Disputed Domain Name, the earliest having been registered on July 5, 1991. The registrations cover Class 1 (chemicals used in industry), Class 5 (pharmaceutical and veterinary preparations) and Class 40 (treatment of materials).

In addition, Complainant is also the owner of several domain names including the “ercros” identifier. One of the domain names was registered prior to the registration of the Disputed Domain Name.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Name is verbally, phonetically and visually identical to the ERCROS Mark. Complainant further contends that the Disputed Domain Name will lead consumers and Internet users to confusion, which includes a likelihood of association.

Complainant contends that the Disputed Domain Name contains the entirety of the ERCROS Mark and should be considered confusingly similar to the ERCROS Mark.

Complainant alleges that Respondent has no rights or legitimate interest in the Disputed Domain Name. Complainant further alleges that: (1) Respondent has no legitimate registered trademarks containing the element “Ercros”, (2) there is no evidence that Respondent has been commonly known by the name “Ercros”, nor sells any goods or services under the name “Ercros”, (3) Respondent has never been licensed by Complainant to use the ERCROS Mark and (4) there is no evidence of any legitimate use or a reason why Respondent would register the Disputed Domain Name.

Complainant argues that Respondent registers trademarks and corresponding domain names in India belonging to third parties under the “.com” domain with the purpose of obtaining economic compensation from the legitimate owners. This conduct is a disruptive practice preventing the legitimate trademark owner’s use of the registration. Hence the purpose of the domain name registration is to circumvent the application of the UDRP and is not a legitimate use.

Complainant argues that Respondent sells no products or services under the “Ercros” name. For all the years since its date of registration, the Disputed Domain Name has not been used for the offering of any products or services. Only after Complainant contracted Respondent on February 2, 2016 and Respondent failed to obtain the amount of money he sought, did Respondent start to put content on the website to which the Disputed Domain Name resolves. Respondent only contacted Complainant by phone and indicated that he would sell the Disputed Domain Name for EUR 50,000. Complainant further argues that some panels have found that passive holding, sporadic use or parking of a domain name constitute a non-legitimate intent at registration and cannot support a finding of rights or legitimate interest.

Complainant alleges that Respondent has registered and used the Disputed Domain Name in bad faith because: (1) Respondent sought compensation from Complainant far in excess of the out-of-pocket costs for registering the Disputed Domain Name and (2) Respondent has engaged in a pattern of such activity.

B. Respondent

Respondent states that Complainant’s European Union trademark is not a “word” mark, rather a “figurative” mark using pictures, graphic or images. The earlier Spanish marks also appear to be figurative marks designed to protect Complainant’s logo. Respondent argues that such marks provide narrower protection to their owners.

Respondent does not contest the ownership of the ERCROS Mark by Complainant and does not contest that the Disputed Domain Name is confusingly similar to the ERCROS Mark.

Respondent alleges that he owns the trademark in India for ERCROS for which he applied on May 05, 2009 and received on February 10, 2011. The trademark number is 1814528. Respondent further alleges that issuance of an Indian trademark requires documented proof of prior use in commerce, which proves that Respondent has enjoyed rights in the Ercros name long before notice of this dispute.

Respondent asserts that he is a leading provider of diversified information technology services in India. He offers multiple services under different brand names for different market segments. As the information technology business has boomed in India, Respondent has entered several new areas of business over the last ten years. Respondent operates multiple websites and files for trademarks based on legal advice received. Respondent further asserts that he files for trademarks because he has a legitimate interest in protecting his intellectual property in India where he is located – and never to interfere with anybody else’s economic interests.

Respondent contends that he has been operating a website at “ercros.com” since 2009. To establish his Indian trademark, Respondent had to prove that the name had been used in commerce. Before he could receive his trademark, Respondent provided exactly such proof including a link the fully developed website running at “ercros.com”.

Respondent asserts that Complainant has failed to prove its case against Respondent and should be denied any relief. Respondent further requests a finding that Complainant is acting in bad faith by being untruthful in its Complaint and seeks a determination of reverse domain name hijacking.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,

ii) that 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. Identical or Confusingly Similar

Complainant appears to be the owner of the ERCROS Mark. Respondent has not contested Complainant’s registrations. Therefore, the Panel finds that Complainant has protectable trademark rights for purposes of this proceeding.

Complainant contends that the Disputed Domain Name is verbally, phonetically and visually identical to the ERCROS Mark. Complainant further contends that the Disputed Domain Name contains the entirety of the ERCROS Mark and should be considered confusingly similar to the ERCROS Mark.

Respondent has not contested these contentions by Complainant.

The Panel finds that the Disputed Domain Name is confusingly similar to the ERCROS Mark pursuant to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii). Complainant alleges that: (1) Respondent has no legitimate registered trademarks containing the element “Ercros”, (2) there is no evidence that Respondent has been commonly known by the name “Ercros”, nor sells any goods or services under the name “Ercros”, (3) Respondent has never been licensed by Complainant to use the ERCROS Mark and (4) there is no evidence of any legitimate use or a reason why Respondent would register the Disputed Domain Name.

The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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.

Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights or legitimate interests in the Disputed Domain Name. Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating he has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Panel finds that Complainant has made sufficient allegations to make a prima facie case that Respondent lacks rights to or legitimate interests in the Disputed Domain Name.

Respondent alleges that he owns the trademark in India for “Ercros” which he applied for on May 5, 2009 and received on February 10, 2011. The trademark number is 1814528. Respondent further alleges that this proves that Respondent has enjoyed rights in the Ercros name long before notice of this dispute.

The Disputed Domain Name was registered on January 14, 2000. Respondent claims to have been operating a website at “ercros.com” since before 2009. Respondent alleges that to establish his Indian trademark, Respondent had to supply documentation that the name “Ercros” had been used in commerce. Respondent asserts that he provided such proof in the form of a link the fully developed website running at “ercros.com”.

In its Supplemental Filing, Complainant shows the result of a search done by “waybackmachine.org” (which locates websites being operated at earlier points in time). In 2009 and 2010, no content was identified for the “ercros.com” website. In 2011-2014, the “ercros.com” website displayed an “under construction” marker of a female model with no goods or services offered. This evidence calls into question the legitimacy of Respondent’s claim that the Disputed Domain Name resolved to an active “ercros.com” website since 2009 (or thereafter).

Respondent counters that he is not in control of the Wayback Machine and inferentially should not be held accountable for information which it generates concerning historical content posted on the “ercros.com” website. Respondent explains that he changed Internet providers in 2015 and that the new provider has had numerous glitches in pointing the Disputed Domain Name to incorrect websites.

The Panel finds that Respondent has not adequately rebutted the showing by Complainant that no content was posted on <www.ercros.com> historically. The assertion that an Internet provider might have misdirected the Disputed Domain Name to an unrelated website is too speculative to be probative. In addition, Respondent has chosen not to provide copies of historical screenshots showing content on the “ercros.com” website or of the actual Indian trademark application to show his documented proof of prior use in commerce. Such evidence should be readily available to Respondent. The Panel accepts the Indian trademark registration, but finds that the proof of use upon which it was issued is insufficient to support Respondent’s claims for purposes of this proceeding.

As further discussed below, while Respondent may own a trademark registration in India corresponding to “Ercros”, Complainant has satisfactorily called into question the supporting evidence and has provided evidence that Respondent engages in a pattern of registering in India trademarks of third parties and their corresponding domain names. Against this backdrop, Respondent has failed to show sufficient rights or legitimate interests under the Policy.

Therefore, the Panel finds Respondent has failed to rebut Complainant’s prima facie case.

Therefore, the Panel accepts the assertion of Complainant that Respondent lacks rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

(i) circumstances indicating that you have registered or you [Respondent] have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to 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 Disputed Domain Name; or

(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Disputed Domain Name, provided that you [Respondent] have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [Respondent’s] website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your [Respondent’s] website or location or of a product

In its Supplemental Filing, Complainant argues that Respondent engages in a pattern of registering in India trademarks belonging to third parties, and registering as well the corresponding domain names using the “.com” domain with the purpose of obtaining economic compensation from the legitimate owners. Complainant further argues that this conduct should be considered as being a disruptive practice preventing the legitimate trademark owner’s use of the registration. In its Complaint, Complainant has provided (1) in Annex 5, the web search results of Respondent’s marks matching those of German, Spanish and Belgian companies, among others, (2) domain name registrations corresponding to those marks, and (3) EU company web pages matching these marks.

The Panel finds that these assertions are sufficient to prove bad faith pursuant to paragraphs 4(b)(i) and (ii), namely that Respondent has engaged in a pattern of registering domain names comprising third-party trademarks which are offered for sale to such mark owners.

Therefore, Complainant has satisfied paragraph 4(a)(iii) of the Policy.

D. Reverse Domain Name Hijacking.

The Panel finds that the allegations of Complainant have prevailed and were made in good faith. The Panel makes no finding of reverse domain name hijacking.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <ercros.com> be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: July 16, 2016