The Complainant is Sport and Fashion, Pte. Ltd. of Singapore, represented by Kirill Efremov, Russian Federation.
The Respondent is St. Lawrence Cement Inc. of Canada, represented by ROBIC, LLP, Canada.
The disputed domain name <demix.com> (the “Disputed Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 21, 2019, 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 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 March 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2019. Upon the Respondent’s request, the Center granted an automatic extension of 4 days, i.e., until April 19, 2019, in accordance with paragraph 5(b) of the Rules. The Response was filed with the Center April 19, 2019.
The Center appointed Nick J. Gardner, Theda König-Horowicz, and Christopher J. Pibus as panelists in this matter on May 28, 2019. The Panel finds that it was properly constituted. Each member of 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.
The Complainant is a company incorporated in Singapore in 2012. Its business is the manufacture, distribution, and retail sale of sports equipment, sports shoes, and related products. It trades in the Russian Federation, various Eastern European countries, and various Asian countries. It does so under the trademark DEMIX. It says this trademark was first registered in 2005. It does not explain how this occurred given it was seven years prior to its formation. It has provided evidence of various trademark registrations although these appear to be in the name of Sport and Fashion Management Pte. Ltd – for example International Trade Mark no 953715 was registered on October 29, 2007 (and records it derives from a Russian registration dated November 22, 2005). The Panel is unclear as to whether Sport and Fashion Management Pte. Ltd is a different legal entity to the Complainant. As the Panel reaches its decision below on other grounds the point ultimately does not matter so the Panel will assume this company is the same entity as the Complainant. The Complainant’s DEMIX trademarks are referred to in this decision as the “Complainant’s DEMIX trademark”.
The Disputed Domain Name was registered by the Respondent on January 7, 1997. It does not at present resolve to any active website. The Respondent’s business is discussed below.
The Complainant says the Disputed Domain Name is identical to its DEMIX trademark.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. It says the Disputed Domain Name is not a dictionary word and there is no plausible reason why the Respondent would have registered it. It says, as the Disputed Domain Name does not resolve to any active webpage, the Respondent is not conducting any legitimate business under or in relation to it.
The Complainant says that the Disputed Domain Name was registered in bad faith as “based on the UDRP precedents registration of a domain name and its passive use may be considered as unfair use”. The Complaint goes on to make various references to an OMRON trademark which make no sense at all. The Center had on March 25, 2019 queried this reference and the Complainant stated it was “indicated only as an example of a similar dispute”. The Panel does not understand what the Complainant means by this or why this trademark is relevant.
The Respondent accepts that the Disputed Domain Name is identical to the Complainant’s DEMIX trademark but points out that the Disputed Domain Name was registered eight years before that trademark was registered.
The Respondent says the named respondent St. Lawrence Cement Inc., through a series of corporate transactions which it explains in detail, has now become part of a company called CRH Canada Group Inc. Nothing turns on this history so far as this Complaint is concerned so the Panel will simply refer to the Respondent, that term being used to include any successors in title to the named Respondent.
The Respondent says its business at the time the Disputed Domain Name was registered was the manufacture and sale of ready mix concrete and aggregates, and DEMIX was a trading name it used. It exhibits Canadian registered trademarks it had for that term – for example Canadian trademark no TMA556993 for the words DEMIX CONSTRUCTION together with a device, registered on January 29, 2002, and expunged on September 7, 2017. Whilst the Response goes into considerable detail about the Respondent’s history and business the Panel does not consider it necessary to set all this detail out. In essence the Respondent says that it had a legitimate interest in the Disputed Domain Name and has not registered it nor used it in bad faith. It concedes it does not use it at present but provides evidence that it has done so in the past and says it may wish to in the future and that it is entitled to retain the Disputed Domain Name in the meantime.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of the Disputed Domain Name that:
(i) the Disputed Domain Name is identical with 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.
The Panel accepts for present purposes (see comments above) that the Complainant has established that it owns the Complainant’s DEMIX trademark. There is no dispute that the Disputed Domain Name is identical to this trademark. It does not matter for the purposes of this element that the Disputed Domain Name was registered before the trademark existed – the Panel agrees with the consensus approach as explained in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.3:
“1.1.3 While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed.
The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element.
Where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith.”
See further below as to the Panel’s finding with regards to the Respondent’s alleged bad faith.
It is well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to the Respondent of the dispute, 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) the Respondent 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.
The Panel has no hesitation in deciding that (i) above clearly applies in this case. The Respondent has produced ample evidence to show its use of the term DEMIX in relation to its business including its own registered trademarks for the term. This use was long before this Complaint was filed and indeed long before the Complainant existed or its DEMIX trademark was registered.
Accordingly, the Panel considers that the Complainant has failed to show the Respondent lacks rights or legitimate interests.
The difficulty the Complainant faces in the present case is that the Disputed Domain Name was registered eight years before the Complainant’s predecessor registered the Complainant’s DEMIX trademark. This was before the Complainant even existed and there is no evidence at all of any predecessor to the Complainant using or having any reputation in the term “demix” at the time the Disputed Domain Name was registered.
Although the word “demix” is a coined word, it combines the English word “mix” with the common prefix “de”. “Mix” is a word which is commonly used in relation to the process of mixing cement with aggregates to make concrete, and it seems unsurprising to the Panel that the Respondent independently coined this term for use in its business.
There is also no evidence the Respondent has used the Disputed Domain Name in bad faith. The evidence establishes it has in the past used it to link to a bona fide website related to its business. The evidence shows it currently uses the “demix” name as part of the trade names “DEMIX Béton”, “DEMIX Agregates”, and “DEMIX Construction”, and operates websites linked to “www.demixbeton.ca”, “www.demixconstruction.ca”, and “www.demixagregates.ca”. The Panel agrees with the Respondent that it is entitled to retain the Disputed Domain Name. The Panel also agrees that the various precedents the Complainant has referred to about non-use all concern domain names which had been deliberately chosen because of their correspondence to a complainant’s trademark. That is not the case here. See, WIPO Overview 3.0, section 3.3, stating that panels will look at the totality of the circumstances in each case when applying the passive holding doctrine.
Accordingly, the Panel concludes there is no credible evidence to establish bad faith on the part of the Respondent and the Complainant has failed to establish that the third condition of paragraph 4(a) of the Policy has been fulfilled.
Reverse Domain Name Hijacking is defined under the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
As set out in the WIPO Overview 3.0, section 4.16, reasons articulated by panels for finding Reverse Domain Name Hijacking include: “(i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith…such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument, (iv) the provision of false evidence, or otherwise attempting to mislead the panel, (v) the provision of intentionally incomplete material evidence – often clarified by the respondent, (vi) the complainant’s failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence.”
Each of (i), (ii), and, (iii) is present to at least some degree in the way in which the Complainant has conducted these proceedings. The Complainant seems to have assumed that because it has a registered trademark identical to the Disputed Domain Name, and the Disputed Domain Name was not currently being used, it could file a complaint without any consideration of the difficulties it faced. In particular it completely ignored the fact the Disputed Domain Name had been registered eight years before its trademark was registered. WIPO Overview 3.0 is very clear on this issue – see section 1.1.3: “Where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith.”
The Complaint appears to have been prepared with very little attention to detail and as noted above includes erroneous references to a completely unrelated trademark. Once the intended respondent was identified as being a Canadian company likely to be involved in the cement business (given its name), it ought to have been obvious to the Complainant that the Respondent was likely to have independently coined the Disputed Domain Name. If the Complainant was in any way unclear on this issue, a few minutes Internet searching would have found the Respondent’s present web sites at for example “www.demixbeton.ca”. Similarly a search of the Canadian Trademarks Registry would have found a number of DEMIX-related trademarks predating the Complainant’s trademark – whilst these are in various corporate names this should nevertheless have alerted the Complainant to the potential difficulties with its case.
These facts, combined with the fact the registration of the Disputed Domain Name predated the Complainant’s formation and the date of its trademark registration, should have alerted the Complainant to the fact that a complaint had no prospects of success.
The Panel therefore concludes that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied. In addition, the Panel concludes that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Nick J. Gardner
Presiding Panelist
Theda König Horowicz
Panelist
Christopher J. Pibus
Panelist
Date: June 6, 2019
Stay updated! Get new cases and decisions by daily email.
