WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hydro Building Systems France (formerly SAPA Building Systems France) v. Nader Ragheb

Case No. DAU2018-0033

1. The Parties

The Complainant is Hydro Building Systems France (formerly SAPA Building Systems France) of Toulouse Cedex 1, France, of France, represented by Norman Waterhouse Lawyers, Australia.

The Respondent is Nader Ragheb of Sefton, Australia.

2. The Domain Name and Registrar

The disputed domain name <technal.com.au> is registered with TPP Wholesale Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2018. On November 13, 2018, the Center transmitted by email to TPP Wholesale Pty Ltd a request for registrar verification in connection with the disputed domain name. On November 14, 2018, the Center received an email communication from the Respondent. On November 15, 2018, TPP Wholesale Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Registrar’s confirmation further stated that:

(a) the registrant contact name and organization for the disputed domain name is Jack Shiber of Technal Aluminium Pty Ltd;

(b)the technical contact name and organization for the disputed domain name is Alex Ibarcena of Logic Digital and “Nad Ragheb” of Worth It Designs; and

The Complainant filed an amended Complaint on December 5, 2018, to address an administrative formality.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 on December 10, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2018. On December 11, 2018 and December 28, 2018, the Center received email communications from, respectively, Alex Ibarcena and P. A. Ibarcena.

On December 14, 2018 and January 9, 2019, the Center received further email communications from the Complainant. On January 10, 2019, the Center received an email communication from the Respondent.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 15, 2019. 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.

4. Factual Background

The Complainant is a French company. One of its businesses involves the promotion and marketing of a range of products under the trade mark TECHNAL. The TECHNAL products include aluminium façade systems, skylights, conservatories, windows, guard rails and other related applications.

The Complainant has been conducting this business in France and throughout more than 50 other countries for many years. For example, it has registered the trade mark TECHNAL in Australia, Trade mark No. 266,495, with effect from March 12, 1973. Trade mark No. 266,495 is registered in respect of partitions, removable partitions, doors, windows, frames for doors and for windows, and parts for making such goods in International Class 6. According to the Complaint, the Complainant has promoted its products throughout Australia extensively by reference to the TECHNAL trade mark.

The emails received from the Respondent state that over seven years ago he operated a website design business. In the course of that business, he registered the disputed domain name on behalf of a client known as “Technal Aluminium”. The Respondent states that he closed his website design business over five years ago. At that time, the Technal Aluminium business assumed control of all aspects of the disputed domain name and its website.

On October 27, 2017, the Complainant’s representatives sent a letter to Technal Aluminium Australia Pty Ltd (“TAA”) alleging, amongst other things, that the use of TECHNAL in its name, as a trade mark for its products and services and in the disputed domain name infringed the Complainant’s trade mark rights.

On November 7, 2017, TAA provided undertakings through its sole director, Jack Shiber, to cease using TECHNAL “in all manner and forms” including as part of its corporate name, in advertising and signage and to “destroy” all websites that contain or use the word “technal”.

Despite the undertakings, as at November 28, 2017, the disputed domain name resolved to a website which featured a banner titled “TECHNAL ALUMINIUM” and stating “Website under construction”.

TAA formally changed its corporate name to “Tech Aluminium Pty Ltd” on December 4, 2017.

After further correspondence from the Complainant’s representatives, information stored by the Wayback Machine at <archive.org> shows that the disputed domain name subsequently redirected to a website at “www.techaluminium.com”, promoting the business of “Tech Aluminium Australia Pty Ltd” which, amongst other things, stated “We are going through some exciting changes. We recently changed our name to Tech Aluminium Pty Ltd. What we haven’t changed is the exceptional quality of our leading products and services.” The telephone and facsimile numbers for this business are the same as the telephone and facsimile numbers used by TAA on the website to which the disputed domain name resolved on November 28, 2017.

As at October 23, 2018, however, the disputed domain name did not resolve to an active website. Annex 8 to the Complaint is a print out of the entry of the disputed domain name on that date showing a “This page can’t be displayed” message.

The emails from Alex Ibarcena and P. A. Ibarcena state that the disputed domain name has been acquired by a new business “Technal Digital” and:

“Technal.com.au has now been re-allocated to a new registered business called Technal Digital. The business is an Information Technology Industry business which does not produce or sell any Building or Aluminium Industry product or related service. The business’s online identity is presently under construction and will in no manner be confused with Hydro’s registered trade marked brand.”

It appears that “Technal Digital” was registered as a business name on December 26, 2018. The registrant was one Patrick Ibarcena who is also the registrant of the registered business name “Logic Digital”.

The disputed domain name currently resolves to a website which states “This site is currently under construction.” The website also sets out seven paragraphs addressing concerns about security on the Internet and states that:

“Technal Digital’s mission is to establish affordable, secure, industrial and personal digital protection measures that can be used online and off-line.”

The page is dated at the foot “Technal Digital, 2019”.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a name, trade mark 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 or subsequently used in bad faith.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that the Panel deems applicable.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s name, trade mark or service mark.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trade mark and, if so, the disputed domain name must be identical or confusingly similar to the trade mark.

The Complainant has proven that it owns the registered trade mark TECHNAL.

On the question of identity or confusing similarity, what is required is simply a visual and aural comparison and assessment of the disputed domain name itself to the Complainant’s trade mark. This is different to the question under trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy. Further, in undertaking the required comparison, it is permissible to disregard top level suffixes such as “.com.au”. See for example, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”), section 1.2.

Disregarding the Top-Level suffix, “.com.au”, therefore, the disputed domain name is identical to the Complainant’s proven trade mark.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which a respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Previous panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., auDA auDRP Overview 1.0, section 2.1.

The Complainant states that it has not authorised the Respondent, “Technal Aluminium”, Jack Shiber or P. A. Ibarcena or Alex Ibarcena to use the Complainant’s trade mark or to include that trade mark in the disputed domain name. None of those persons is affiliated with or associated with the Complainant or its TECHNAL business in any way.

Paragraph 1 of the auDRP Rules defines the “respondent” to be “the holder of a domain name registration against which a complaint is initiated”.

According to the WhoIs information confirmed by the Registrar as correct on the date the Complaint was filed, the holder of the disputed domain name is Mr. Ragheb. The WhoIs information provided by the Registrar also states that the registrant’s contact name is Jack Shiber of TAA.

As noted above, Mr. Ragheb’s emails in response to the Complaint state that he registered the disputed domain name on behalf of his client “Technal Aluminium” and his client has at all times had control over the disputed domain name.

In these circumstances, the Panel would be prepared to find that TAA, or Jack Shiber of TAA, was in substance the holder of the disputed domain name when the Complaint was filed. Alternatively, Mr. Ragheb could be regarded as holding his formal title as registrant on behalf of TAA. In any event, it is plain that Mr. Ragheb registered the disputed domain name for use by “Technal Aluminium” in accordance with its plans and intentions. Accordingly, the actions of TAA can fairly be attributed to Mr. Ragheb for the purposes of the Policy if TAA is not formally the holder of the disputed domain name.

Until recently, the disputed domain name resolved to a webpage which promoted the aluminium door and window products of, first, TAA and subsequently “Tech Aluminium Pty Ltd”. That is use of the disputed domain name in connection with the promotion and sale of products in competition with the Complainant’s own TECHNAL products. Use of a complainant’s trade mark in a domain name to promote products in competition with the trade mark owner does not qualify as a good faith offering of goods or services under the Policy in the absence of some further justification.

A possible justification may be provided by paragraph 4(c)(ii) as TAA’s name starts with TECHNAL. First, however, it appears that TAA was incorporated in 2013; some 40 years after the Complainant registered its trade mark in Australia. Before TAA was incorporated, there appears to have been a business operating as “Technal Aluminium” from 2009. That is still some 36 years after the Complainant registered its trade mark in Australia.

Further, TECHNAL is not a common or ordinary English word in everyday use. It appears to have significance in relation to fabricated aluminium products such as doors and windows only because of its use and adoption as a trade mark by the Complainant.

In these circumstances, it appears very likely (as the Complainant contends) that the persons standing behind “Technal Aluminium” were well aware of the Complainant’s trade mark when adopting that name. Neither Mr. Shiber nor anyone else from TAA has asserted to the contrary.

In addition and in any event, by the undertakings Mr. Shiber provided on November 7, 2017, TAA and Mr. Shiber both undertook to cease all future use of TECHNAL to promote TAA’s products. Indeed, in his email dated December 4, 2018, Alex Ibarcena states that Mr. Shiber instructed him to cancel the registration of the disputed domain name. According the email, cancellation was not possible as Mr. Ragheb has not responded to emails.

For all of these reasons, therefore, the defence provided by paragraph 4(c)(ii) is not available to Mr. Ragheb or TAA.

The continued use of the disputed domain name to promote the fabricated aluminium products of the renamed Tech Aluminium Pty Ltd was inconsistent with those undertakings. It also was use in competition with the Complainant without its permission. Accordingly, it is not a good faith offering under the Policy.

It appears from the emails submitted by Alex Ibarcena and P. A. Ibarcena that they were sent by one and the same person. That conclusion is further supported by the evidence that one Patrick Ibarcena is the registrant of business names for both Logic Digital and Technal Digital.

The Panel notes Mr. Ibarcena contends that the disputed domain name was removed from ownership by TAA “two or three months ago” and he intends to use it in connection with a new business related to the information technology industry and not producing any aluminium or building industry products or services.

First, Mr. Ibarcena is not recorded in the WhoIs records as the registrant of the disputed domain name (although, as noted above, he is listed as a technical contact).

Secondly, Mr. Ibarcena has not provided any emails, agreements or other documentation evidencing some form of transfer of whatever rights TAA may have had to him.

Thirdly, it is far from clear to the Panel how an instruction to cancel the registration of the disputed domain name from the holder transferred ownership to Mr. Ibarcena, especially in circumstances where Mr. Ibarcena claims to be unable to effect changes to the registration without Mr. Ragheb’s participation.

Fourthly, the date when the alleged transfer took place is not at all clear. As noted above, the redirection to TAA’s website had ceased by October 23, 2018. That is well after the Complainant’s representatives had put TAA on notice of the Complainant’s demands.

Fifthly, Mr. Ibarcena did not register the business name “Technal Digital” until December 26, 2018; well after the Complaint had been filed.

There is no evidence that he ever traded as “Technal Digital” before the Complaint was filed or even before the Complainant’s representatives sent the first letter of demand to TAA in October 2017. See e.g. auDA auDRP Overview 1.0, section 2.7B. All the evidence indicates, Mr. Ibarcena has no such business yet.

Sixthly, Mr. Ibarcena has not exposed how he selected the name TECHNAL for his new business. As already noted, it is a coined or invented term. It does not appear to have any significance apart from as the Complainant’s trade mark. It is not descriptive of Mr. Ibarcena’s proposed business. While there is a very simple website in operation at the moment, it describes itself as “under construction” and has been hastily put up after the Complaint was filed.

In these circumstances, it appears that Mr. Ibarcena’s adoption of the disputed domain name is both recent and opportunistic. Taking advantage of the instruction from TAA (which appears to be his client) to cancel the disputed domain name and the disputed domain name’s obvious potential value as the Complainant’s trademark.

Even if Mr. Ibarcena were to be treated as the holder of the disputed domain name, therefore, the Panel would not find he has rebutted the Complainant’s case that he does not have rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has established the second requirement under the Policy.

C. Registered or Subsequently Used in Bad Faith

In contrast to the Uniform Dispute Resolution Policy, the Complainant must establish that the disputed domain name has been either registered or subsequently used in bad faith by the Respondent under the third requirement of the Policy.

Whether Mr. Ragheb, TAA or Mr. Ibarcena be regarded as the Respondent, the reasons for concluding that none of them have rights or legitimate interests in the disputed domain name under the Policy leads to the conclusion that the disputed domain name has been registered in bad faith.

That is sufficient to lead to a finding that the Complainant has established the third requirement under the Policy.

6. Decision

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

Warwick A. Rothnie
Sole Panelist
Date: January 28, 2019