WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ebel International Limited v. Alan Brashear

Case No. D2017-0001

1. The Parties

The Complainant is Ebel International Limited of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Pacón - Schiantarelli (P&S), Germany.

The Respondent is Alan Brashear of Belle Plaine, Kansas, United States of America, represented by Estudio Jurídico “Abril” Abogados Asociados, Peru.

2. The Domain Names and Registrar

The disputed domain names <cyzoneperu.com> and <esikaperu.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2017. On January 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 3, 2017, 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.

The Center sent an email communication in English and Spanish to the parties on January 10, 2017 regarding the language of the proceeding, as the Complaint has been submitted in Spanish and the language of the registration agreement for the disputed domain names is English. The Complainant submitted a request for Spanish to be the language of the proceeding on January 11, 2017. The Respondent submitted a request for English to be the language of the proceeding on January 13, 18, and 27, 2017 and February 5, 2017.

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 the Respondent in English and in Spanish of the Complaint, and the proceedings commenced on January 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2017. The Center notified the Parties on February 8, 2017 that it will proceed to Panel Appointment process.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on February 15, 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.

On February 17, 2017, the Panel issued Procedural Order No.1, stating that the language of the registration agreement related to the disputed domain names was English. The Panel further developed that, pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified contrarily in the registration agreement, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise

The Panel noted that the Complainant had requested that the language of the proceeding be Spanish, and that the Respondent had expressed his opposition to the Complainant’s request to conduct this proceeding in Spanish.

Under the circumstances of this case, and in accordance with paragraph 11 of the Rules, the Panel determined that the language for this proceeding would be English. Consequently, the Panel required the Complainant to submit a Complaint in English. The deadline to file the Complaint in English was February 23, 2017. The Panel granted the Respondent a term of twenty (20) calendar days following the date of notification of the English Complaint in English to file a Response.

On February 23, 2017, the Complainant submitted the translated version of its Complaint. Following Procedural Order No. 1, the Center notified the English version of the Complaint to the Respondent, informing the Parties that the Respondent could file a Response by March 16, 2017. The Respondent did not file a timely Response.

The Respondent sent email communications to the Center on March 23, 2017 and March 24, 2017 submitting its Response and explanation of the Respondent’s late submission.

On March 24, 2017, the Complainant sent an email communication to the Center.

The original deadline for sending the Panel Decision to the Center was March 23, 2017. Considering that the parties sent communications to the Center on March 23 and 24, 2017, the Center extended the deadline granted to the Panel to issue a Decision to April 4, 2017.

4. Factual Background

The Complainant is Ebel International Limited, a company based in Bermuda. The Complainant’s primary occupation is the direct sale of beauty products, for body and skin care, and cosmetics. The Complainant’s parent office is located in Peru.

The Complainant owns several trademark registrations for CY°ZONE and ESIKA, among which, are the following:

The Complainant owns the following domain names:

The Respondent registered the disputed domain name <cyzoneperu.com> on August 22, 2014 and the disputed domain name <esikaperu.com> on August 21, 2014. According to the evidence provided by the Complainant the disputed domain names resolved to websites containing catalogs of the Complainant’s products. At the time of issuing the decision, the disputed domain names resolved to a website advertising services such as “web design”, “repair & updating”, “add-on features”, “hosting”, “translations” and “domain registration”.

5. Parties’ Contentions

A. Complainant

The Complainant argues the following:

I) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights

That the Complainant owns trademark registrations for CY°ZONE and ESIKA in Peru and other Latin American countries since before the date of registration of the disputed domain names.

That the Complainant owns the domain name registrations for <cyzone.com> and <esika.com>.

That the Peruvian Trademark Office has recognized the distinctive character of the trademark CY°ZONE. That said trademark office has stated that a family of trademarks has been constituted in relation to the trademark CY°ZONE.

That the Peruvian Trademark Office has also recognized the existence of a family of trademarks surrounding the trademark ESIKA.

That the trademarks CY°ZONE and ESIKA have an active presence in social networks, such as Facebook, Twitter, Instagram and Youtube. That these social network profiles have a considerable number of followers.

That the presence of a figurative element in the middle of the trademark CY°ZONE, does not prevent it from being read in a cursory fashion. That consumers identify the Complainant’s trademark as “CYZONE”.

That the disputed domain name <cyzoneperu.com> includes the trademark CY°ZONE in its entirety.

That the addition of the geographic term “peru” in the disputed domain name <cyzoneperu.com>, does not differentiate it from the trademark CY°ZONE, but reinforces the possibility of confusion. That the term “peru” refers to the country where the Complainant’s parent office is located.

That the generic Top-Level Domain (“gTLD”) “.com” does not grant the disputed domain name <cyzoneperu.com> distinctiveness regarding the trademark CY°ZONE.

That the disputed domain name <esikaperu.com> includes the trademark ESIKA in its entirety.

That the addition of the geographic term “peru” in the disputed domain name <esikaperu.com> does not differentiate it from the trademark ESIKA, but reinforces the risk of confusion. That the term “peru” refers to the country where the Complainant’s parent office is located.

That the generic Top-Level Domain (“gTLD)” “.com” does not grant the disputed domain name <esikaperu.com> distinctiveness regarding the trademark ESIKA.

II) The Respondent has no rights or legitimate interest in respect of the disputed domain names

That the Respondent has not used or made preparations to use the disputed domain names in connection with a bona fide offering of goods or services.

That the disputed domain names resolve to a website which contains a catalog of the Complainant’s products.

That the website to which the disputed domain names resolve displays a Peruvian Flag, which contains a link to the domain name <catalogos.pe>, where several third-party trademarks are marketed.

That the Respondent does not own trademarks, trade names or commercial slogans which cover the brands CY°ZONE or ESIKA.

That the Respondent is not known by the disputed domain names.

That the name or the activities of the Respondent do not have any connection with trademarks CY°ZONE or ESIKA.

That the Complainant has no commercial, economic, social, or legal relationship with the Respondent. That the Complainant has not granted the Respondent any license to use the trademarks CY°ZONE or ESIKA. That the Complainant has not authorized the Respondent to register the disputed domain names.

III) The disputed domain names have been registered and are being used in bad faith

That the Respondent has registered the disputed domain names in bad faith.

That the Respondent is not making any legitimate use of the disputed domain names.

That the disputed domain names resolve to websites in an attempt to emulate the Complainant’s websites. That the website at the disputed domain names contains a link to the domain name <catalogos.pe>.

That the Respondent was aware of the existence of the Complainant’s trademarks in Peru and other Latin American countries at the time of requesting the registration of the disputed domain names.

That terms “cyzone” and “esika” are not common or usual terms or names in the Spanish language.

That the addition of the geographical term “peru” in the disputed domain names, denotes that the Respondent knew that the Complainant’s main office has its domicile in Peru.

That the disputed domain names contain links that redirect Internet users to a website that contains advertisements and links to competing companies.

That the Respondent’s intention upon registration of the disputed domain names was to profit from their sale at a cost higher than his out-of-pocket expenses.

B. Respondent

The Respondent did not submit a Response within the deadline set forth in this proceeding.

C. Further Communications by the Respondent

On March 23, 2017, the Respondent sent an email communication to the Center, informing that his representative in Peru had been affected by a national disaster.

Subsequently, on March 23, 2017, the Respondent sent another communication to the Center, in which the Respondent argued the following:

I) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights

That the disputed domain names are not identical to the Complainant’s trademarks CY°ZONE and ESIKA.

That the registration of the disputed domain name <cyzoneperu.com> is a shortening for “Cyber Zone Peru”.

That the Complainant does not own a trademark registration for “Cyber Zone Peru”, “CyZonePeru” or “www.CyZonePeru.com”.

That the registration of the disputed domain name <esikaperu.com> corresponds to a misspelling of geographical term “Ica”, referring to the city of Ica, Peru.

That the disputed domain names are not related to the Complainant’s products under trademarks CY°ZONE or ESIKA.

II) The Respondent has no rights or legitimate interest in respect of the disputed domain names

That the disputed domain name <cyzoneperu.com> is directly related to the Respondent’s plans for a cybernetics company in Peru, called “Cyber Zone Peru”.

That the Complainant did not submit evidence of using the geographical term “Peru” for any of its products or services.

That the Respondent is willing to transfer the disputed domain name <esikaperu.com> in exchange for the reimbursement of paid registration fees.

III) The disputed domain names have been registered and are being used in bad faith

That the Respondent does not wish to be associated with the Complainant.

That the Respondent is not a competitor of the Complainant.

That the Complainant ought to use the country code Top-Level Domain (“ccTLD”) “.pe” to appeal to Peruvian consumers.

That the website to which the disputed domain names used to resolve, was made in error and has been solved. That the Respondent did not benefit or profited from this error.

That the Respondent is not in the business of selling domain names. That the Respondent does not have the intention of selling, renting or transferring his domain names.

That the Respondent offers to sell his domain names at USD 1,000 as part of a service offered by the Registrar of the disputed domain names.

On March 24, 2017, the Respondent sent an email communication to the Center, accusing the Complainant of engaging in Reverse Domain Name Hijacking, based on, inter alia, the allegation that the Complainant had submitted the Annexes to its Complaint in Spanish.

D. Further Communications by the Complainant

On March 24, 2017, the Complainant replied to the Respondent’s email communications by submitting an additional submission. In said document, the Complainant argued the following:

That the Respondent has shown additional proof of bad faith use and registration, through the request to transfer the disputed domain names for USD 843.44.

That the Respondent has, in several communications, insisted that the Complainant acquired the disputed domain names for USD 843.44.

That the Respondent has modified the content of the website to which the domain name <catalogos.pe> resolves, to eliminate the references to the Complainant’s trademarks that were comprised in said website.

6. Discussion and Findings

According to the Policy, to qualify for a cancellation or transfer, a complainant must prove each of the elements listed below:

(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.

Pursuant to Paragraph 11 of the Rules, the Panel ruled that the language of the proceedings is English, and requested the Complainant to re-submit its Complaint in said language (see Fondation Le Corbusier v. Monsieur Bernard Weber, Madame Heidi Weber, WIPO Case No. D2003-0251; and Advanced Magazine Publishers Inc. v. Computer Dazhong, WIPO Case No. D2003-0668).

In his email communications sent to the Center on March 23, 2017, and March 24, 2017, the Respondent expressed his disagreement regarding the Annexes to the Complaint remaining in Spanish, arguing that this fact had made it difficult for him to file a Response within the deadline set forth in this proceeding.

The Panel notes the Respondent’s assertion that it plans to operate a cybernetics company in Peru and is represented by a Peruvian counsel. The Panel also notes that the websites to which the disputed domain names currently resolve, contain an offering of translation services, expressly stating: “We create an accurately translated duplicate of your entire website with navigation from your homepage. Document Translations. English-Spanish / Spanish-English.”

Given the circumstances of the case and the evidence provided, the Panel is satisfied that there is no need for the Complainant to translate the Annexes of the Complaint, since the Respondent is able to comprehend them. In such circumstances, requesting the Complainant to translate the Annexes would render this proceeding more onerous and lengthy than what the spirit of the Policy intended (see, mutatis mutanda, WIPO Overview 2.0, paragraph 4.3, second subparagraph; see also Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679; and SWX Swiss Exchange v. SWX Financial LTD, WIPO Case No. D2008-0400).

On the other hand, even if the Respondent has not submitted a timely Response in this proceeding, in order to ensure that the parties have an equal opportunity to present their case, the Panel will analyze the content of the parties’ email communications of March 23, 2017 and March 24, 2017.

A. Identical or Confusingly Similar

The Complainant is the owner of trademark registrations for CY°ZONE and ESIKA.

The disputed domain name <cyzoneperu.com> is confusingly similar to the Complainant’s trademark CY°ZONE, as the textual portion of the trademark is included in its entirety in said disputed domain name.

The disputed domain name <esikaperu.com> is confusingly similar to the Complainant’s trademark ESIKA, as it is included in its entirety in the disputed domain name.

The addition of the generic Top-Level Domain (“gTLD”) “.com” to the disputed domain names is irrelevant and immaterial for purposes of assessing confusing similarity with the Complainant’s trademarks (see Diageo p.l.c. v. John Zuccarini, WIPO Case No. D2000-0541).

In addition, the Panel considers that the inclusion of a trademark in its entirety, together with the incorporation of a specific geographic term in a disputed domain name, does not diminish the confusing similarity (see Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; and Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale, WIPO Case No. D2005-0755). In this particular case, the inclusion of the geographical term “peru” constitutes a reference to the country of the Complainant’s parent company. Hence, Internet users looking for the Complainant could be misled as to the origin of the disputed domain names and their content, as well as their possible association to the Complainant’s parent office.

In the case of trademark CY°ZONE, its similarity to the disputed domain name <cyzoneperu.com> is not diminished by the absence of the symbol “°” in the alphanumeric string that constitutes the disputed domain name, because the symbol “°” cannot be reproduced in such string (see mutatis mutandi McDonald’s Corporation v. Lei Wang, WIPO Case No. D2012-0624; and L’OREAL v. Lewis Cheng, WIPO Case No. D2008-0437).

The first element of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:

I. before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

II. the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

III. the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence in the case file that could indicate that the Respondent has been commonly known by the disputed domain names <cyzoneperu.com> or <esikaperu.com>.

Moreover, as evidenced by Annex 4 to the Complaint, the disputed domain names are being used to impersonate the Complainant. The websites to which the disputed domain names resolve may literally generate confusion among Internet users as to the source of said websites, and their relationship with the Complainant. The websites at the time included no information which indicated the relationship between the Respondent and the Complainant. The evidence comprised in the case file shows that these websites prominently display the trademarks CY°ZONE and ESIKA. This conduct cannot be considered as a bona fide offering of goods or services, or as a legitimate noncommercial or fair use of the disputed domain names (see MasterCard International Incorporated v. Dhe Jonathan Firm, WIPO Case No. D2007-0831). The Respondent’s explanation that the use was “in error” and that it thereafter removed the forwarding and masking is insufficient under the circumstances to establish any rights or legitimate interests.

According to the Respondent, the registration of the domain name <cyzoneperu.com> owes to a shortening of “Cyber Zone Peru”. Likewise, the Respondent argues that registration of disputed domain name <esikaperu.com> is due to a misspelling of the city of Ica, Peru. However, the Respondent did not submit any evidence to sustain his arguments. Considering this fact, and taking into account the content of the websites to which the disputed domain names resolved, these allegations are simply not credible (see SEUR ESPAÑA, S.A. v. Antonio Llanos Alonso, WIPO Case No. D2000-0691; Unibanco - União de Bancos Brasileiros S.A. v. Vendo Domain Sale, WIPO Case No. D2000-0671; and The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World, WIPO Case No. D2000-0474).

At the time of issuing the decision, the disputed domain names resolve to a website advertising commercial services such as “web design”, “repair & updating”, “add-on features”, “hosting”, “translations” and “domain registration”. The Panel finds that this change does nothing to alter the Panel’s assessment.

This Panel considers that the Complainant has established a prima facie case that the Respondent has no rights to, or legitimate interests in the disputed domain names. The burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain names (see Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467; and Cellular One Group v. COI Cellular One, Inc., WIPO Case No. D2000-1521)

In the opinion of the Panel, the Respondent has not provided arguments or evidence demonstrating rights in, or legitimate interests to the disputed domain names, and the Panel considers that the second element of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

I. circumstances indicating that the respondent has registered or the respondent has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain names 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 the respondent’s documented out-of-pocket costs directly related to the domain names; or

II. the respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

III. the respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or

IV. by using the domain names, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The Complainant owns several trademark registrations for CY°ZONE and ESIKA in Peru and other countries, including registrations for ESIKA in the United States of America, where the Respondent is domiciled.

The websites to which the disputed domain names resolved emulate the look and feel of the websites of the Complainant. These sites displayed the trademarks CY°ZONE and ESIKA, feature products covered by the Complainant’s registrations, and according to the Complainant’s arguments, which have not been rebutted by the Respondent, also featured a link which leads Internet users to the domain name <catalogos.pe>, which in turn resolves to a website that displays advertisements of and links to competing products pertaining to competitors of the Complainant. According to the Complainant, this conduct has taken place without the knowledge, or authorization of the Complainant (see AB Gustaf Kähr v. Prasanth sp, inet, WIPO Case No. D2011-1455).

The Respondent claims that the resolution of the disputed domain names to the websites that were linked to such disputed domain names was attributable to a forwarding error. The fact is that said websites displayed a link to the Respondent’s domain name <catalogos.pe>, which made express references to the Complainant’s trademarks CY°ZONE and ESIKA.

Previous decisions rendered under the Policy state that there is bad faith where a respondent has created a website that is nearly identical to the website of the complainant (see, inter alia, The Dow Chemical Company v. dowaychemical eva_hwang@21cn.com +86.7508126859, WIPO Case No. D2008-1078; and Ctrader Limited v. Niko Wibisono, WIPO Case No. D2013-1906) or that creates a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on your web site or location.

The evidence contained in this case file leads the Panel to conclude that the Respondent was fully aware of the Complainant and had the Complainant’s trademarks CY°ZONE and ESIKA in mind at the moment of registering the disputed domain names, a requisite for a finding of registration of a domain name in bad faith (see WIPO Case No. D2011-1455 supra; Real Madrid Club De Futbol v. Michele Dinoia, WIPO Case No. D2010-0261; and Advance Magazine Publishers Inc. v. Pablo Palermao, WIPO Case No. D2008-0026).

Other Panels have generally recognized that bad faith may be evidenced where a respondent attempts to trade on the goodwill associated with a mark in which the complainant has rights (see Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; and Legacy Health System v. Nijat Hassanov, WIPO Case No. D2008-1708). Considering that the Respondent has associated the disputed domain names to his own websites which mimic the Complainant’s sites, and linked the content of his websites to the domain name <catalogos.pe>, and the website to which the latter in turn resolves, it is clear that the Respondent is free riding on the reputation of the trademarks of the Complainant, for commercial gain.

The Respondent has attempted to create the impression amongst Internet users that the websites to which the disputed domain names resolve are related to the Complainant and its trademarks, presumably with the purpose of generating income for the Respondent through illicit means (see LeSportsac, Inc. v. Yang Zhi, WIPO Case No. D2013-0482; and trivago GmbH v. Whois Agent, Whois Privacy Protection Service, Inc. / Alberto Lopez Fernandez, Alberto Lopez, WIPO Case No. D2014 0365). This is proof of a bad faith registration and use of the disputed domain names under the Policy.

In addition, the current use of the disputed domain names changes nothing in the Panel conclusions regarding registration and use of the disputed domain names in bad faith. The Panel notes that CY°ZONE and ESIKA are not common terms in neither Spanish nor English language, and the fact that the disputed domain names include Complainant’s trademarks respectively with the geographic term “peru” (which is the main location of the parent company of the Complainant). Hence, Internet users looking for the Complainant could be misled as to the origin of the disputed domain names and their content, as well as their possible association to the Complainant’s parent office.

The third element of the Policy is fulfilled.

The Respondent accused the Complainant of incurring in Reverse Domain Hijacking. To prevail on such a claim, a Respondent must show that the Complaint was filed, despite knowledge of the Respondent’s unassailable rights or legitimate interests in the disputed domain names or the clear lack of bad faith registration and use (see National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; and Sydney Opera House Trust v. Trilynx Pty. Limited, WIPO Case No. D2000-1224). This is not the case. The Respondent’s Reverse Domain Hijacking claim is denied..

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 names, <cyzoneperu.com> and <esikaperu.com>, be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: March 28, 2017