esika.com y esika.net (Perú) - Demanda Denegada- D2006-1323

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION
Ebel International Limited v. Carlos Manuel Salinas
Case No. D2006-1323

1. The Parties The Complainant is Ebel International Limited, of Lima, Peru, represented by Ricardo Fischer, of Arent Fox PLLC, Washington DC, United States of America.

The Respondent is Carlos Manuel Salinas, of Lima, Peru.

2. The Domain Names and Registrars

The disputed domain name <esika.com> is registered with Go Daddy Software, and the disputed domain name <esika.net> with DSTR Acquisition PA I, LLC dba DomainBank.com (both herein referred to as the “Domain Names”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2006. On October 16, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name <esika.com>. On October 16, 2006, the Center transmitted by email to DSTR Acquisition PA I, LLC dba DomainBank.com a request for registrar verification in connection with the domain name <esika.net>. On the same day, both registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the respective registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 28, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 31, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2006. The Response was filed with the Center on November 14, 2006.

The Center appointed Tobias Zuberbühler as the sole panelist in this matter on November 28, 2006. 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 company registered in Bermuda with a base of operations in Lima, Peru. Its purpose is to produce and sell cosmetics. It is mainly active in Latin America. The Complainant is inter alia holder of the trademark ESIKA in various countries (Annex E of the Complaint). The first request for registration was filed on May 29, 2001 in Peru. The trademark was registered in Peru on September 21, 2001 for the classes 3 and 16.

The Respondent is in the real estate business. He acquired the domain name <esika.com> on November 4, 2004, from its previous holder. The domain name <esika.net> was acquired by the Respondent on February 13, 2005. The Respondent’s request for registration of the trademark ESIKA.COM was filed in Peru on October 6, 2005 and registered on January 10, 2006, for the class 36.

5. Parties’ Contentions A. Complainant The Complainant objects to the use of the Domain Names by the Respondent and bases its Complaint on the following grounds.

The Domain Names are identical to the Complainant’s trademark and trade names.

The Respondent has no rights or legitimate interests in respect of the Domain Names as there is no relationship between the Respondent and the Complainant. Therefore, the Respondent has neither permission nor license to use Complainant’s trademarks. There is no evidence of use of the Domain Names in connection with a bona fide offering or service nor is the Respondent commonly known by the Domain Names or has acquired a relevant trademark or service mark. The Respondent makes no legitimate non-commercial or fair use of the Domain Names.

The Domain Names were registered in bad faith for the purpose of selling, renting or otherwise transferring for valuable consideration in excess of the out-of-pocket expenses related to the Domain Names and preventing the Complainant from reflecting the mark in a corresponding domain name. The Domain Names are being used in bad faith as the content of the website under the Domain Names is not reflecting real business activities as contested by the Respondent. It must be considered to pretend a serious activity in the field of real estate business and is therefore misleading.

B. Respondent

The Respondent objects to the Complaint and bases his Response on the following grounds:

There is no risk of confusion between the Domain Names and Complainant’s trademark.

The Respondent is the owner of the trademark ESIKA.COM registered for insurance, financial, monetary and real estate business services, including consultancy. Subsequently, the Domain Names are used to reflect this trademark and for the services the trademark is registered for.

The Respondent is attending his business that clearly differs from Complainant’s. He had never heard of Complainant or its trademarks when he purchased the Domain Names. The Complainant’s trademarks are not well-known. The trademarks of Respondent and Complainant coexist as registered marks.

The behaviour of the Complainant regarding the anonymous purchase efforts through an agent was misleading and conducted in bad faith.

At the time the Respondent acquired the Domain Names the Complainant had not registered any domain name related to its trademarks.

As the Respondent proves legitimate use of the Domain Names by reflecting his trademark the Complainant conducts reverse domain name hijacking by these proceedings.

6. Discussion and Findings

The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules). In this case, the Panel finds that the Center complied with all formalities and that the Complaint was properly notified to the Respondent.

Paragraph 4(a) of the Policy sets forth three elements that must be established by the Complainant to merit a finding that the Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) the Respondent’s 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 domain name; and

(iii) the Respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

In accordance with paragraph 4(a)(i) of the Policy the Panel finds that the Domain Names are identical to the trademark ESIKA, in which the Complainant has rights, since the Domain Names consist of the identical wording of Complainant’s trademark.

Therefore, the Complainant has fulfilled the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, the following circumstances can demonstrate that the Respondent has rights to or legitimate interests in the Domain Name:

(i) before any notice was given to the Respondent of the dispute, the Respondent used, or demonstrably made 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 though it has not acquired any trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial 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.

The Respondent applied for the trademark ESIKA.COM on September 2, 2005. On January 10, 2006, the National Institute for the Defense of Competition and the Protection of Intellectual Property of Peru (INDECOPI) granted in its decision 000197-2006/OSD the registration of the trademark ESIKA.COM for the services requested.

The Respondent purchased the domain name <esika.com> on November 4, 2004, and the domain name <esika.net> on February 13, 2005. The Domain Names had been created (<esika.com> on August 24, 1999, <esika.net> on February 1, 2001) before the Complainant’s trademark was registered. Since the purchase of the Domain Names and the request for registration of the trademark ESIKA.COM the Respondent has apparently used at least one of the Domain Names in connection with its offering of services. Respondent’s business activities does not interfere at all with Complainant’s cosmetics manufacturing and selling.

Based on the facts and evidence in this case, the Panel finds that the Complainant has failed to establish that the Respondent lacks own rights or legitimate interests in the disputed domain names.

The Panel’s decision is not in any way meant to prejudge or influence an eventual national court proceeding between the parties, which would be conducted under different procedural and substantive rules.

C. Registered and Used in Bad Faith

Finally, the Respondent asks the Panel to find the Complainant attempted “reverse domain hijacking”. This requires the Panel to find that the Complainant has acted in bad faith by initiating these proceedings. Complainant’s actions, in this case, do not rise to the level of “bad faith”. In the circumstances, the Panel declines to find that there has been “reverse domain hijacking”.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Tobias Zuberbühler
Sole Panelist

Dated: December 12, 2006

Fuente: http://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-1323.html