WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instalaciones De Domótica, Electricidad y Telecomunicaciones, S.L. v. Shen Zhe, 沈哲
Case No. D2017-2561
1. The Parties
The Complainant is Instalaciones De Domótica, Electricidad y Telecomunicaciones, S.L. of Seville, Spain, represented by Santiago Mediano Abogados, Spain.
The Respondent is Shen Zhe, 沈哲 of China.
2. The Domain Name and Registrar
The disputed domain name <ideltec.com> is registered with 1API GmbH (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 21, 2017. On December 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 27, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 the Respondent of the Complaint, and the proceedings commenced on January 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 25, 2018.
The Center appointed Richard G. Lyon as the sole panelist in this matter on February 5, 2018. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
There is little information about either party in the record in this case.
According to the Complaint, the Complainant "offers services to those companies that demand engineering and technological products as well as consulting and management services in the fields of efficiency energy, energy saving and renewable energy." The Complainant's principal website is accessed at <ideltec.es>, a domain name registered in 2007. The content of this website indicates that the Complainant currently offers such services. The Internet archive at "www.archive.org" reveals active content on this website since some time in 2015.
The Complainant owns a trademark, registration number M3659110 (6), duly registered with the Spanish Patent and Trademark Office ("SPTO") on September 14, 2017, for IDELTEC and design in Class 37.1
The Respondent registered the disputed domain name on November 20, 2017. On December 13, 2017, the disputed domain name resolved to a web page with pornographic content.
Also on December 13, 2017, the Complainant sent the Respondent a cease-and-desist letter by electronic mail, demanding transfer of the disputed domain name. No response was received. A screenshot of the page at the disputed domain name on December 18, 2017, shows an error message. That is the result the Panel received2 when attempting to access the disputed domain name.
5. Parties' Contentions
A. Complainant
The Complainant contends as follows:
1. Except for the generic Top-Level Domain ("gTLD") ".com", the disputed domain name is identical to the Complainant's SPTO-registered IDELTEC trademark and its principal domain name <ideltec.es>. Confusion is therefore likely.
2. The Complainant has not authorized the Respondent to use its mark and there is nothing to indicate that the Respondent has been commonly known by the word "ideltec" other than through its registration of the disputed domain name. Registration alone does not confer a right or legitimate interest. Use for pornography is not legitimate under the Policy.
3. Pornography by itself indicates bad faith. Other indicators of the Respondent's bad faith include:
a. Furnishing false contact information to the Registrar.
b. Refusal to comply with the Complainant's cease-and-desist demand.
c. Passive holding following receipt of the cease-and-desist letter under the Telstra doctrine. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.)
d. Identity of the disputed domain name with the Complainant's trademark
e. "The site was originally set up in order to achieve commercial gain through a pornographic content."
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
For the Panel to order transfer or cancellation of the disputed domain name, the Complainant must prove five matters by a preponderance of the evidence: rights in a trademark; identity of the disputed domain name to that mark or confusing similarity with it; the Respondent's lack of rights or a legitimate interest in the disputed domain name; registration of the disputed domain name in bad faith; and use of the disputed domain name in bad faith. Only one of these items warrants extended analysis in this proceeding.
The Respondent's failure to reply to the Complaint does not constitute an admission of any pleaded matter or automatically result in a decision for the Complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.3; PJS International SA v. Carl Johansson, WIPO Case No. D2013-0807.
A. Identical or Confusingly Similar
"Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case." WIPO Overview 3.0, section 1.2.1. Paragraph 4(a)(i) of the Policy is generally a standing requirement, with standing determined as of the date the Complaint is filed. The disputed domain name is identical to the Complainant's mark, as in making the comparison the gTLD is ordinarily disregarded. WIPO Overview 3.0, section 1.11.1. The Complainant has established both limbs of this Policy element.
B. Rights or Legitimate Interests
"While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of 'proving a negative', requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element." WIPO Overview 3.0, section 2.1. Here there is no evidence that the Complainant has authorized the Respondent to use the IDELTEC mark or that the Respondent has ever been known by that term independently of the registration of the disputed domain name. Nothing on the screenshot of the Respondent's website when active, or anything else, suggests that the term in any language relates to pornography. The Complainant has therefore established this Policy element.
C. Registered and Used in Bad Faith
As the Complainant argues, pornographic content is convincing proof of use in bad faith. Given no connection of the mark at issue with sex or pornography, that proof alone suffices to demonstrate use in bad faith.
Registration in bad faith is not so easily resolved. The Panel considers each of the Complainant's contentions on this subject.
i. False contact information. As the Complainant contends, the provision of false contact information has been found to be evidence of bad faith. Rarely has that alone been sufficient for a bad faith finding; rather it has been cited as additional evidence when more direct evidence was found, e.g., Chanel v. 1, WIPO Case No. D2003-0218 (false information an "additional circumstance"; case involved a world-famous trademark). The present Complainant has a more difficult hurdle to overcome on this argument, however – the Complaint contains no proof that the Respondent's contact information was false, merely an unsupported allegation of the Complainant's representative that "as a result of the investigation carried out, it has been identified that the address of the Respondent is false, the address above-mentioned does not lead to any real postal address." Such factual allegations, especially those accusing a party of fraudulent contact, require proof. What proof there is indicates either no false information or no harm to either party or to resolution of this proceeding. The Complainant pleads that the Respondent changed its website's content following the cease-and-desist letter, indicating receipt; the Center's records indicate email delivery of the Complaint.3 Regardless, an unsupported factual allegation of counsel carries no evidentiary weight under the Policy. The Panel takes no account of this claim, either on a standalone basis or cumulatively with the other evidence.
ii. Refusal to heed the cease-and-desist letter. As with providing false contact information, such a refusal has rarely if ever been sufficient by itself to establish bad faith. UDRP panels have cited it far more often as cumulative of other proven misconduct, e.g., Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (also involving a world-famous trademark). Other UDRP panels have ignored it entirely, finding no duty under the Policy or applicable law to reply. See, e.g, Patricks Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653 (panel gave no weight to complainant's claim that refusal to respond to cease-and-desist letter and telephone calls was bad faith). To this Panel the latter is the preferable approach, consistent with the Complainant's burden of proof under the Policy, applicable law, and common sense. The Panel will in any event take no account of this claim, either on a standalone basis or cumulatively with the other evidence.
iii. Passive holding. The Telstra warehousing or passive holding doctrine does not apply in the factual circumstances of this case. The mark in Telstra was found by the panel to be nationally famous in Australia, the location of both parties. Here by contrast the Complainant's mark has been registered for only a few months and there is very little evidence – none in the Complaint – of pre-registration use even in Spain, the Complainant's home country. The Complainant has supplied only the address of a website that has apparently been active for two or three years. There are no sales figures, verified or otherwise, and no other indication that the term "ideltec" is uniquely or specially associated with the Complainant.4 As discussed further below, unlike Telstra this is not a case in which "it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law."
iv. Identity of the mark with the disputed domain name. Sometimes a domain name identical to a complainant's mark supports an inference that the respondent was aware of the complainant and its mark. Such cases usually involve a highly distinctive mark (compare BzzAgent, Inc. v. bzzaget.com c/o Nameview Inc. Whois IDentity Shield and Vertical Axis, WIPO Case No. D2010-1187, with Virgin Enterprises Limited v. Domain Administrator, WIPO Case No. D2013-1678; see also Chanel v. 1, supra; Parfums Christian Dior v. 1 Netpower, Inc., supra; Telstra, supra), or analogous circumstance such as an imitation of a known competitor's mark or website or prior dealings between the parties. Though its mark is far from famous, this approach gives the Complainant some help. Its mark, an acronym derived from its corporate name, is not a common word. Nor is there an obvious alternative explanation for the Respondent's choosing it, as there was in Consorzio per la Tutela del Formaggio Gorgonzola v. Rob Monster / DigitalTown, Inc., WIPO Case No. D2017-0253, or The Institute of Electrical and Electronics Engineers, Incorporated v. IARAS / Administration IARAS, WIPO Case No. DAM2010-0001. This case falls somewhere between these two poles. It is certainly possible that the Respondent chose the disputed domain name intentionally because it was a recently issued trademark. It is also possible that it was selected for other reasons. Many companies in many fields incorporate "tec" or "tech" into their names or web addresses, often with everyday words, variants of everyday words, or easy-to-pronounce or catchy non-word phrases. The Panel analyzes these competing possibilities on the available evidence to determine if the Complainant has carried its burden of proof of demonstrating registration in bad faith.
In the Respondent's favor, nothing in the record or a quick search by the Panel reveals any other circumstance that the Respondent has engaged in similar conduct. It has not been a respondent in any other Policy proceeding, and, so far as the record reflects, it is not an aggregator of domain names. The ordinary rule of requiring proof of actual knowledge of the mark and targeting to establish bad faith registration should therefore apply. The Complainant's mark is new and relatively unknown (again so far as the record reflects). There is little in the record to suggest either actual knowledge or a reason why the Respondent, in China, should have been aware of a trademark only recently issued in Spain.5
What evidence that does exist is inconclusive. There is some support for the Complainant. The Respondent registered the disputed domain name two months after registration of the Complainant's mark. It certainly was possible that the Respondent selected it after trolling the SPTO's website or through other means. Such conduct is not unknown in UDRP jurisprudence. See, e.g., Nyolus Technologies, Inc. v. Shanshan Huang, This domain name is for sale, WIPO Case No. D2017-2100; X-GIL Group, X-GIL Company v. Ryan Yeh, WIPO Case No. D2017-0871.6 This timing might be suspicious enough at least to allow an inference of knowledge and targeting. A second factor, also ambiguous, is that the Respondent took down the pornographic content immediately after receipt of the cease-and-desist letter. This could be seen as a hand-in-the-cookie-jar admission. It could also be seen as protecting a now potentially valuable domain name from a Policy proceeding and entirely legitimate. See Industria de Diseño Textil, S.A. v. Sean Collins, WIPO Case No. D2011-2270 ("The Panel finds that the conduct of the Respondent in removing the links to the Complainant upon notification, is not sufficient, in all the circumstances, to constitute bad faith.")
Do these facts and circumstances suffice to prove bad faith in registration here? Though not without misgivings, the Panel believes they do not. At most they support intentionally selecting the disputed domain name to target the Complainant as a possibility. The Policy's placing the burden of proof on a complainant requires more than a possibility or supposition. Sun International (IP) Limited v. NameSentinel Admin and Sun Ventures Development Limited, Arthur Tsang, WIPO Case No. D2014-1190 ("It is of course possible that the Respondent only [...] after it became aware of the Complainant's [mark], but while there may be room for doubt there is nothing before the Panel to justify a finding to that effect.") That requires proof – more proof than offered here.
The dearth of evidence in the Complaint has complicated this Panel's task considerably. The Complainant certainly had other evidence available to it that might have aided its case. The Complainant could have furnished information about the extent of its business activities and consequent use of its trademark. F5 Networks, Inc. v. Registration Private, Domains By Proxy, LLC / Eddie Lau, F5 Works Ltd., WIPO Case No. D2017-2258 ("… the Complainant has not submitted any evidence to demonstrate the actual use of its trademarks in connection with the products and services for which they have been registered. Therefore, the Complainant has not submitted sufficient elements that could demonstrate the Respondent's possible or actual knowledge of the Complainant's trademarks.") Several services available at minimal cost might have revealed other activities, e.g., targeting pending or recently issued trademarks or a domain name portfolio of the Respondent similar to those complained of here; Burberry Limited v. Zhangjin, Domain Admin, WIPO Case No. D2014-1623 ("The Panel would have appreciated some evidence that could throw some light on when and where the Complainant started using the trademark [at issue], the length and extent of such use, the likely knowledge of the Respondent regarding the existence of the trademark [at issue], or even any propensity of the Respondent to register trademarks of others as domain names.").7
But whether such evidence exists is speculation, in which the Panel may not indulge. Except for the screenshot of the pornographic site, the Complainant's evidence8 is little more than proof of trademark ownership and the Respondent's lack of one. That is not enough for the Panel to order a transfer.
e. Pornography. With proof of targeting use of a domain name for a porn site is per se bad faith. But what the Policy condemns is not all pornography sites but misappropriation of another's trademark intentionally to attract unsuspecting Internet users to the site. As noted, proof of such a misappropriation here is insufficient.
7. Decision
For the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Sole Panelist
Date: February 19, 2018
1 Class 37 consists of "Construction and Repair. This class includes mainly services rendered by contractors or subcontractors in the construction or making of permanent buildings, as well as services rendered by persons or organizations engaged in the restoration of objects to their original condition or in their preservation without altering their physical or chemical properties."
2 "Hmm. We're having trouble finding that site.
We can't connect to the server at www.ideltec.com.
If that address is correct, here are three other things you can try:
Try again later.
Check your network connection.
If you are connected but behind a firewall, check that Firefox has permission to access the Web."
3 The courier service engaged to deliver the Complaint, however, reported that "Receiver postcode and/or city are not valid."
4 Based strictly upon the Complaint and its annexes, the Complainant may do no business at all.
5 It goes without saying that if such evidence exists it is for the Complainant to advance.
6 In both these cases the respondent was found on the evidence to have engaged in similar conduct in several other instances, a circumstance not present here. See Policy, paragraph 4(b)(ii).
7 Evidence of this sort can be crucial in cases in which trolling a trademark registry is alleged. Nyolus Technologies, Inc. v. Shanshan Huang, This domain name is for sale, supra (from the evidence "The Respondent has a history of registering domain names that incorporate newly filed trademarks."); Güde GmbH & Co. KG v. Shanshan Huang, WIPO Case No. D2017-0562 ("from the evidence submitted by the Complainant […] it arises that the Respondent engaged on at least two earlier occasions in registration of domain names incorporating the marks included in the trademark applications filed shortly before by third-parties.")
8 The Complainant's pleading is also significantly skimpy. The best arguments for bad faith, based upon the timing of domain name registration and issuance of the Complainant's trademark and taking down the pornographic content shortly after the cease-and-desist letter, came from the Panel, not the Complaint.