WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HID Global Corporation v. Reynaldo Sanchez
Case No. D2013-1569
1. The Parties
Complainant is HID Global Corporation of Irvine, California, United States of America (“US”), represented by Cohausz & Florack, Germany.
Respondent is Reynaldo Sanchez of Caracas, Bolivarian Republic of Venezuela.
2. The Domain Name and Registrar
The disputed domain name <hiddevenezuela.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2013. On September 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On September 13, 2013, the Center sent an email communication to Complainant inviting it to amend the Complaint, namely the paragraphs relating to the identification of the Registrar in the present proceeding. Complainant filed an amended Complaint on September 13, 2013.
The Center verified that the Complaint together with the amended 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 8, 2013.
The Center appointed Roberto Bianchi as the sole panelist in this matter on October 17, 2013. 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
Complainant is a manufacturer of secure identity solutions and sells physical access control products, logical access control solutions, and secure issuance solutions, including cards, readers, networked access solutions, card printer/encoders and software. Complainant’s other business includes virtualization technology, cashless payment, government ID, RFID for industry and logistics and animal ID solutions and professional services.
Complainant is owned by Assa Abloy AB, a Swedish supplier and manufacturer of locks and door opening solutions which consists of subsidiaries, importers and agents all over the world.
Complainant owns the following trademark registrations:
US trademark HID with registration No. 3329275 of November 6, 2007 and filing date of April 20, 2006, covering radio frequency identification (RFID) systems and their individual components, namely, RFID credentials, readers and writers for communicating with the RFID credentials, and programmers for programming the RFID credentials, wherein the RFID credentials are in the form of cards, tags or key fobs; magnetic stripe systems and their individual components, namely, magnetic stripe cards and readers for communicating with the magnetic stripe cards; magnetic alloy wire systems and their individual components, namely, magnetic alloy wire cards and readers for communicating with the magnetic alloy wire cards, wherein the magnetic alloy wire credentials are in the form of cards, tags or key fobs; RFID reader and writer modules for original equipment manufacturers (OEM’s); contact smart chips; multiple technology-based credentials and readers and writers, which combine one or more RFID technologies with magnetic stripe technology, magnetic alloy wire technology, contact smart chip technology, key pad technology, bar code technology, biometric technology, anti-counterfeiting technology, and photo identification technology; hardware, software and firmware for networking and interfacing RFID readers and writers and host computers used in the fields of security and access control; and software for issuing and managing RFID credentials in the form of cards, tags or key fobs, of International Class 9. First use/first use in commerce October 20, 1995.
U.S. trademark HID with registration No. 2362185 of June 27, 2000 and filing date of August 12, 1999, covering radio frequency identification devices, namely, proximity tags, proximity tag readers and proximity tag writers for monitoring security access, identification, inventory, or physical state, of International Class 9. First use/first use in commerce October 10, 1995.
Community trademark HID with registration No. 001061464 of March 7, 2000 and filing date of February 1, 1999, covering radio frequency identification devices; proximity tags, proximity tag readers and proximity tag writers for monitoring security access, identification, inventory or physical state, of International Class 9.
Complainant also relies on two trademarks owned by its parent company, Assa Abloy AB: Community trademark HID with registration No. 011270527 of May 3, 2013 and filing date of October 17, 2012, covering various goods and services of international classes 9, 16, 35, 37, 38, 41, and 42; and Community trademark HID,with registration No. 011270584 of May 3, 2013 and filing date of October 17, 2012, covering various goods and services of International Classes 9, 16, 35, 37, 38, 41, and 42.
The disputed domain name was registered on January 22, 2009.
5. Parties’ Contentions
A. Complainant
In its Complaint, Complainant contends as follows:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant and its parent company own registered trademark rights in the sign HID in many countries, among those in the European Union and in the US. Complainant also uses its trademarked name in connection with the promotion and marketing of its products and services on its various Internet websites at, inter alia, “www.hidglobal.com”, “www.hidglobal.co.uk”, “www.hidglobal.de”, “www.hidglobal.es”, “www.hidglobal.se”.
The “hid” element of the disputed domain name is identical to the HID elements of Complainant’s trademarks and the domain names owned by Complainant. The elements “de” and “Venezuela” are just an indication that Respondent is active on the Venezuelan market.
Complainant owns a family of trademarks all over the world starting with the distinctive and creative element HID among which the mark HID GLOBAL. Additional trademarks with the striking element “HID” were filed and registered by its parent company Assa Abloy AB. In order to allow the Panel to acknowledge that the different trademarks invoked by Complainant effectively form such a family of marks, Complainant herewith confirms that it is duly authorized to use the marks filed by its parent company. The public concerned recognizes the common part of these marks, namely HID as well as HID GLOBALas originating from one undertaking, namely from Complainant. The disputed domain name is identical to the HID trademark owned by Complainant and its parent company respectively. The disputed domain name is also confusingly similar with numerous trademark registrations of the word “hid” and combinations thereof held by Complainant and its parent company respectively in countries all over the world. Moreover, the disputed domain name conflicts with the company name of Complainant.
Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant’s HID GLOBAL and HID trademarks are internationally well known, and are associated with high quality, security and design. The reselling of Complainant’s products and services and the usage of Complainant’s trademarks is strictly regulated through license-, distribution- and reselling agreements. Respondent is not a licensee, a retailer or in any other way authorized by Complainant to use the trademarks HID GLOBAL or HID. Nor is Respondent authorized to apply for or use any domain name incorporating any of the trademarks held by Complainant.
However, Respondent offers goods covered by Complainant’s trademarks under the disputed domain name, and calls himself “HID de Venezuela”. Moreover, Respondent uses the disputed domain name prominently presenting the protected logo of Complainant without consent of Complainant. All this may lead to the wrongful conclusion by potential consumers that Respondent is a licensee or retailer duly authorized by Complainant. The disputed domain name is (quasi) identical to the above-identified trademark registrations HID. Respondent does not own any trademark, service mark or any other sign such as corporate names, trade names or shop sign corresponding to the word “hid”. Complainant has not licensed or permitted in any way Respondent’s use of the HID trademark. Respondent has not used, is not using and has not shown any intention of using the disputed domain name or a name corresponding to it in connection with a good faith offering of goods and services.
Respondent has registered and has been using the distpued domain name in bad faith. This is evidenced by the fact that the website corresponding to the disputed domain name is used to offer customers preferably from Venezuela, goods for sale which are protected by the HID trademarks of Complainant. This is an indication for bad faith use of the disputed domain name. Respondent wants to make a link to the mark of Complainant.
B. Respondent
Respondent did not reply to Complainant’s contentions, and is in default. On September 17, 2013, as its only reaction to the notification of the Complaint and Commencement of the Proceeding, Respondent sent to the Center an unsigned message in Spanish - presumably automatically generated - stating: “Subject: Re: Your mail to […]@hiddevenezuela.com. This is an automatic acknowledgment of receipt of the message you sent. We’ll soon contact you. Note: This acknowledgment of receipt only proves that the message was received by the mail server of the addressee. There is no guarantee that the addressee has read or understood the content of the message. Thanks.1”
6. Discussion and Findings
Under Policy, paragraph 4(a), Complainant must make out its case that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
A. Identical or Confusingly Similar
Complainant has shown to the satisfaction of the Panel that it has rights in the HID trademark. See Community trademark and U.S. trademark registrations in Section 4 above.
The Panel notes that the disputed domain name, apart from the addition of the gTLD “.com”, consists of the HID mark with the addition of the terms “de” (Spanish for “of” or “from”) and “Venezuela”, thus meaning “HID from Venezuela” or “HID of Venezuela”. It is well established that the addition in a domain name of a country name to a mark is inapt to distinguish the domain name from such mark. See InfoSpace.com, Inc. v. Hari Prakash,
WIPO Case No. D2000-0076 (“The Panel concludes that the mere addition of the word “India” at the front of the Respondent’s domain name is not sufficient to distinguish it from the trademarks of the Complainant. … [S]uch addition appears to be made most likely with a intent to induce Internet users to believe that they are connecting their computers with a site pertaining to an Indian affiliate of the Complainant, or to some kind of “Indian operation” of the Complainant.”); see also Volvo Trademark Holding AB v. SC-RAD Inc.,
WIPO Case No. D2003-0601(“The Panel adopts the findings in Harrods Limited v. John Griffin, WIPO Case No. D2002-0641, where it was said that, “The only difference between the disputed domain names and the HARRODS trademarks is the addition of the geographic designation ‘usa’ to the HARRODS name. The geographic designation ‘usa’ adds nothing distinctive, and the emphasis remains on the name HARRODS to attract the attention of Internet users”; and the decision in Microsoft Corp. v. Webbangladesh.com,
WIPO Case No. D2002-0769, where the panel held that: “The evidence shows that the Domain Name is identical to Complainant’s mark, differing only in the addition of the geographic description ‘Bangladesh’ to the Microsoft mark. The Domain Name bears an exceptional and confusing similarity to the Microsoft mark.”; Volvo Trademark Holding AB v. SC-RAD Inc.,
WIPO Case No. D2003-0601, “Similarly in this, the incorporation of a Complainant’s well-known trademark “VOLVO” in the registered domain name is sufficient, despite the addition of the geographic term, to find the domain name confusingly similar to the Complainant’s trademark.”)
The Panel concludes that the disputed domain name is confusingly similar to the HID mark in which Complainant has rights.
B. Rights or Legitimate Interests
Complainant contends that its HID trademarks are internationally well known, and are associated with high quality, security and design, and that the reselling of Complainant’s products and services and usage of Complainant’s trademarks is strictly regulated through license-, distribution- and reselling agreements. Complainant argues that Respondent is not a licensee, a retailer or in any other way authorized by Complainant to use the trademarks HID GLOBAL or HID, nor is Respondent authorized to apply for or use any domain name incorporating any of the HID trademarks. Complainant further contends that Respondent at the disputed domain name is offering goods covered by Complainant’s trademarks, and calls himself “HID de Venezuela”. Moreover, says Complainant, Respondent is using the disputed domain name prominently, by presenting the protected logo of Complainant without consent of Complainant. All this may lead to the wrongful conclusion by potential consumers that Respondent is a licensee or retailer duly authorized by Complainant. Furthermore, the disputed domain name is nearly identical to Complainant’s HID marks. Respondent does not own any right in any trademark, service mark or any other sign such as corporate names, trade names or shop sign corresponding to the word “hid”. Respondent has not used, is not using and has not shown any intention of using the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods and services.
In the Panel’s opinion, these contentions together with the available evidence are apt to constitute a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. In particular, as shown by Complainant, on the website at the disputed domain name Respondent is using the HID logo and the “HID” term in the legend “DISTRIBUIDORA HID VENEZUELA” without any authorization by Complainant. UDRP panels have found that unauthorized seller may have rights or legitimate interests under specific circumstances (see paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). However, in this case, the website does not disclose the relationship between Respondent and Complainant. Therefore, this Panel finds this is not a legitimate use of the disputed domain name, and does not constitute a bona fide offering of goods or services pursuant to Policy, paragraph 4(c)(i).
Further, there is no evidence that Respondent’s name is any other than Reynaldo Sanchez, as informed by the Registrar to the Center. In particular, there is no evidence or allegation that Respondent is actually known by the name “DISTRIBUIDORA HID VENEZUELA”, corresponding to the legend appearing on its website, commonly or otherwise. Accordingly, the Policy, paragraph 4(c)(ii) does not appear to be applicable. Lastly, there is no allegation or evidence that Respondent is making a fair or noncommercial use of the disputed domain name pursuant to the Policy, paragraph 4(c)(iii).
Since Respondent is in default and did not provide any argument or evidence in its own favor, the Panel concludes that Complainant has made out its case, that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As seen above, Respondent openly recognized on the website at the disputed domain name that the HID and HID GLOBAL marks are owned by Assa Abloy AB, Complainant’s parent company. This means that Respondent knew of these marks and targeted them and their owners at the time of registering the disputed domain name, which is a requisite of registration in bad faith.
Complainant also has shown that Respondent on the website at the disputed domain name, by using the HID logo owned by Complainant and its parent company, is, if no directly impersonating Complainant, at least is deceivingly suggesting to Internet users that they are connecting to a website of or related to Complainant in Venezuela. In the Panel’s opinion, this by itself is sufficient evidence of bad faith use.
Although Respondent is apparently based in Venezuela, it failed to provide any allegation or evidence that it is a company duly organized in Venezuela or elsewhere, and which bears a name containing the “hid” term. This fact reinforces the impression that the legend “DISTRIBUIDORA HID VENEZUELA” appearing on the website was basically meant to deceive Internet users looking for Complainant in Venezuela. Finally, Respondent’s failure to reply to the Complaint and the fact that, as reported by the courier entrusted with delivering the Complaint in hard copy, Respondent failed to provide correct and complete details of its address, lead the Panel to conclude that Respondent is using the disputed domain name in bad faith.
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 <hiddevenezuela.com> be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: October 30, 2013
1 Un-official translation by the Panel. The original message in Spanish reads: “Este es un acuse de recibo automático para el mensaje que usted envió. Pronto nos pondremos en contacto con usted. NOTA: Este acuse de recibo sólo acredita que el mensaje fue recibido por el servidor de correo del destinatario. No hay garantía de que el destinatario haya leído o comprendido el contenido del mensaje. Gracias.”
