Cecia.com: John Berryhill scores another victory for #domain investor

IP attorney, John Berryhill, defended yet another domain UDRP successfully.

The domain Cecia.com was ordered to remain with its domainer registrant, as there was no proof of bad faith registration or use of the domain:

In view of the above circumstances, the Panel is unable to find it more likely than not that the Respondent intended to benefit unfairly from the Complainant’s mark and/or to damage the business of the Complainant when he registered the disputed domain name

Naturally, after this decision the Respondent has raised his asking price for Cecia.com from $6,888 to $9,888 dollars.

The domain transfer was denied.

CECIA v. Abid, AbidNetwork.com
Case No. D2021-2504

1. The Parties

The Complainant is CECIA, France, represented by Niddam-Drouas Avocats, France.

The Respondent is Abid, AbidNetwork.com, Pakistan, represented by John Berryhill, Ph.d., Esq., United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <cecia.com> is registered with GoDaddy Online Services Cayman Islands Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2021. 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 the same day, 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 August 9, 2021. The original due date to submit a Response was August 29, 2021. On August 26, 2021, the Respondent requested an extension of the due date. On the following day, in accordance with the Rules, paragraph 5(b), the due date to submit a Response was extended to September 2, 2021. The Response was filed with the Center on September 3, 2021 (local time at the Center).

The Center appointed Matthew Kennedy as the sole panelist in this matter on September 10, 2021. 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 registered in 2000 that specializes in advice, surveys, design, and construction for the food processing sector. The Complainant’s name CECIA was formed as the acronym for “Cabinet d’Etude et de Conseil en Industrie et Agroalimentaire” (which may be translated from French as “Study and Consulting Firm for Industry and Agri-food”). The Complainant has three offices in small cities in western France and a workforce of 42 people. According to its regulatory filings, the Complainant’s annual turnover in 2019 and 2020 was over EUR 6 million. The Complainant holds the following French trademark registrations, both for CECIA:

– Number 1744871, filed and registered on November 14, 1990, specifying services in classes 35 and 42; and

– Number 3058124, filed and registered on October 16, 2000, specifying services in class 38.

These trademark registrations remain current. The Complainant has been a subsidiary of the IDEC Group since 2018. On November 6, 2018, the IDEC Group registered the domain name <cecia.fr>, which resolves to a website in French and English providing information about the Complainant and its services. The title of the website is “CECIA ingénierie” (meaning“CECIA engineering”) and the homepage prominently displays a triangular logo featuring “CECIA ingénierie” and, below that, “Groupe IDEC”. The narrative text refers to the Complainant as “CECIA”. The IDEC Group has three arms (development, engineering and investment) organized in eleven units, one of which is the Complainant, identified on its website by the triangular CECIA ingénierie logo. The other ten units use names incorporating “Faubourg”, “IDEC” or other words, but not “CECIA”. According to its website, the IDEC Group operates both in France and abroad, in Europe, Asia, and the Americas, through local presence, partners and collaborations.

The Respondent is a domain reseller identified in the Response as Mr. Abid Ishaq, a resident of Pakistan who trades under the business name “Abidnetwork.com” and operates a website at the same address. The website displays his portfolio of approximately 100 domain names including, for example, <ijtm.com>, <hjig.com>, <businesssystem.com>, <richhappy.com>, <mickeyhouse.com>, <dmcleaningservices.com>, <gbcosmetics.com>, <norainternational.com>, <laurencox.com>, <felixservices.com>, <hannahmorris.com>, <victoriaregia.com>, <teriha.com>, and the disputed domain name. Each domain name on the site is presented with graphic elements. The contact details on the website provide Mr. Ishaq’s name, a telephone number in Pakistan and his email address.

The disputed domain name was acquired at a public auction of expired domain names and registered by a third party on behalf of the Complainant on December 9, 2020. The disputed domain name resolves to a webpage hosted by the Registrar or one of the Registrar’s partners, where it is advertised for sale. The webpage allows Internet users to request price information via an online form or by telephone. According to evidence provided by the Complainant, a search for the disputed domain name in the Registrar’s WhoIs database produces results under a banner advertising that the disputed domain name is listed for sale at one of the Registrar’s partner sites for USD 6,888.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to the Complainant’s CECIA trademark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not currently, and never has been, known as “Cecia”. The Respondent is not in any way related to the Complainant’s business, is not one of its distributors, and does not carry out any activity for it or have any business with it. The Complainant has never given any authorization or permission to the Respondent to register or use its trademarks or the disputed domain name.

The disputed domain name was registered and is being used in bad faith. The Complainant’s trademarks were registered long before the disputed domain name, the Complainant was incorporated as “CECIA” in 2000; the disputed domain name is identical to the CECIA trademark; all the top results of an Internet search for “cecia” relate to the Complainant; and the Respondent is a domainer who is used to registering domain names infringing upon third parties’ rights in order to resell them. The Respondent is using the disputed domain name to offer it for sale for USD 6,888.

B. Respondent

The Complainant has established that the disputed domain name is identical to a trademark in which the Complainant has rights in connection with the operation of a 42-person specialized consulting business in France. The results of a Google search for “Cecia” conducted outside France mostly relate to the female name Cecia, and differ markedly from the search results annexed to the Complaint.

The Complainant has failed to carry its burden by a preponderance of evidence to show that the Respondent lacks rights or interests in the disputed domain name. The most frequent meaning of “Cecia” is a female name. “Cecia” is not uniquely or famously associated with the Complainant, such that the mere registration of the disputed domain name can be understood to implicate the Complainant’s limited trademark rights. The Respondent registered the disputed domain name because he saw that “Cecia” had been listed among names for auction and it corresponds to a female name. The mere registration and offering for sale of non-exclusive, common words and phrases as domain names is not an illegitimate practice, absent evidence or a reason to infer that the domain registrant was somehow specifically motivated by the Complainant’s mark. There is no reason to believe that the Respondent, a reseller with a portfolio of domain names comprised of combinations of common words and phrases, has any purpose in mind other than attempting to resell a non-exclusive female name to any of countless persons who may have a legitimate interest in buying it for purposes having nothing to do with the Complainant’s non-exclusive and relatively obscure use of “Cecia” in connection with a 42-person business solely in France.

The Complainant has not shown that the disputed domain name was registered and is being used in bad faith. The disputed domain name was previously registered via a privacy service by an entity in France, which the Respondent presumes to have been the Complainant, until it expired in October 2020. The ICANN Expired Domain Deletion Policy provides for grace periods, redemption periods, multiple notices, and other second-chance opportunities to renew an expired domain name, which in the Respondent’s assessment require a lot of effort to ignore. Historically, and particularly in November and December 2020, the Respondent was engaged in the acquisition of various short, memorable, domain names at public auctions, based on the Respondent’s perception of their respective values for potential resale. A relevant question is whether “Cecia” is more well-known, and in all likelihood more valuable, as a female name than it is for an engineering consultancy with three offices in France. There are many persons, and even other businesses, named “Cecia”, and they are in many more countries, and much more numerous, than the Complainant’s own business. On LinkedIn alone, there are about 20 times more people named “Cecia” than are employed by the Complainant – and still more than twice as many people than employed by the Complainant’s parent company. The normal assumption in expired domain auctions according to the Respondent at least is that the domain names have been abandoned. The Respondent has no duty to know about the status of small businesses in France, nor of the French trademark register or whether it reflects a company in the process of becoming defunct. The primary duty of diligence in the Respondent’s assessment rests upon the domain registrant to know when their domain name registration renewals are due, or to renew names far in advance.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(i) the disputed 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 disputed domain name; and

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

As the above elements apply cumulatively, failure to satisfy any one element will lead to denial of the Complaint.

A. Identical or Confusingly Similar

Based on the evidence presented, the Panel finds that the Complainant has rights in the CECIA mark.

The disputed domain name wholly incorporates the CECIA mark as its operational element. Its only additional element is the generic Top-Level Domain (“gTLD”) extension “.com”. As a mere technical requirement of domain name registration, a gTLD extension is generally disregarded in the comparison between a domain name and a trademark for the purposes of the Policy.

Therefore, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

In view of the Panel’s findings in Section 6.C. below, it is unnecessary to consider the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The first circumstance is as follows:

(i) circumstances indicating that [the Respondent has] registered or [the Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs directly related to the [disputed] domain name;

As regards registration, the Complainant must demonstrate that it is more likely than not that the Respondent was aware of the Complainant or of its CECIA mark at the time when he acquired the disputed domain name and that he intended to benefit unfairly from that mark and/or to damage the business of the Complainant. See Rba Edipresse, S.L. v. Brendhan Hight / MDNH Inc., WIPO Case No. D2009-1580.

In the present case, the disputed domain name was registered on behalf of the Respondent in 2020, many years after the registrations of the Complainant’s CECIA mark in France. However, the evidence on record shows that “Cecia” is a female name. While “Cecia” is not a common name like “Cecilia”, it does not appear to be an unusual name for women with a Hispanic family name. In addition, the evidence shows that CECIA is an acronym for various five-word combinations, including the “Centro de Educación, Conservación e Interpretación Ambiental” and the “Collaborative Electroacoustic Composition with Intelligent Agents” project, as well as the Complainant (see Section 4 above); while this does not assist the Respondent in establishing any rights for its own part in the disputed domain name, it does show that there is some level of co-existence. Accordingly, the fact that the disputed domain name wholly incorporates “cecia” with the addition only of a gTLD extension does not, of itself, give rise to the inference that the Respondent knew of the Complainant’s mark or intended to target the Complainant.

The Complainant shows that it has gained a reputation through the provision of its specialized engineering services. Its website shows that almost all its projects have been carried out in France. Its only registered trademark rights are French as well. However, the Respondent submits that he has never been to France and had never heard of the Complainant prior to this dispute. Nor is he an engineer. While the Complainant’s website includes a claim that it supports projects abroad in Europe, Africa, and Asia, the specific reach of those projects and why they would lead to a conclusion of awareness on the part of the Respondent is not articulated. Although the IDEC Group appears to operate internationally, no unit within the group besides the Complainant seems to have a name that incorporates CECIA. Hence, this evidence does not demonstrate that the Respondent was aware of the Complainant or its mark when he registered the disputed domain name.

The Complainant has also provided evidence showing that it has gained a reputation on the Internet, which has a territorial reach beyond France. The evidence shows that the Complainant operates its website in French and English. The Complainant also provides evidence showing that the top results of an Internet search for “Cecia” mostly refer to itself or its staff. However, those results were evidently impacted by the fact that the search was conducted in France, where the Complainant operates. In contrast, the Respondent shows that the top results for the same Internet search conducted outside France (in the United States, where its counsel is located) mostly refer to Cecia as a female name, either in general or more frequently as the name of particular women. Some top results also refer to CECIA as an acronym with different meanings. Only one result in the first three pages of text results relates to the Complainant. This result displays the Complainant’s website title “CECIA ingénierie” with some brief narrative text that refers to “CECIA”. One of the top image results is the CECIA ingénierie logo.

The Respondent submits that he chose the disputed domain name because it was identical to a female first name used in many countries. His country of residence, Pakistan, does not appear to be one of those countries. The evidence that he submits in support of his explanation consists of the results of Internet searches which, presumably, was also the way in which he established that Cecia was a personal name prior to the registration of the disputed domain name. The Panel considers that the results of such searches, even when conducted outside France, are likely to have included the Complainant’s website and possibly its logo, among other top results corresponding to different meanings of “cecia”. The Panel infers that the Respondent may indeed have been aware, or arguably should have been aware, of the existence of the Complainant when he registered the disputed domain name.

Nevertheless, in the particular circumstances of this case, prior awareness of the Complainant does not by itself demonstrate that the Respondent intended to benefit unfairly from the Complainant’s CECIA mark and/or to damage the business of the Complainant. First of all, the Complainant’s website title and the textual elements of its logo as they appear in search results are “CECIA ingénierie” rather than “CECIA”, which appears to be used in the narrative text as a corporate name. There is no reason why the Respondent should be deemed to have constructive notice of the contents of the French trademark database. Second, the Respondent’s explanation for his choice of the disputed domain name, while not irreproachable, is not lacking in credibility. The evidence does not show that the primary meaning of CECIA is its trademark meaning. Rather, most of the top results of the Respondent’s general Internet search, and all the top results of his LinkedIn search in the record, refer to Cecia as a female name. The uncontested evidence shows that the Respondent’s domain name portfolio mostly comprises combinations of descriptive terms or initials, or both, and the Panel notes that some incorporate female names, such as <norainternational.com>, <victoriaregia.com> and <teriha.com>. The Complainant points out that one of the Respondent’s domain names (<mickeyhouse.com>) is similar to a well-known trademark and it mentions another (<dmcleaningservices.com>) without clarifying whether there is a relevant trademark. The Panel notes that two of his other domain names may incorporate the names of particular individuals. Nevertheless, the Panel cannot discern in this evidence a pattern of registering trademarks or infringing terms as domain names. The mere fact that the Respondent operates a domain name reseller business does not by itself give rise to an inference that he targeted a mark. In the Panel’s view, the Respondent’s domain name portfolio on the whole lends more support to his explanation for choosing the disputed domain name than it does to the Complainant’s claim that he targeted its CECIA mark.

The Respondent’s subsequent actions may also shed light on his intentions when he registered the disputed domain name. He is offering the disputed domain name for sale. The Panel accepts that the asking price is USD 6,888, even though that price is not stated on the webpage to which the disputed domain name resolves. However, this price alone does not indicate that it is based on the trademark value of CECIA, even though the Respondent likely paid less for the disputed domain name, because that price may reflect the disputed domain name’s inherent value as a personal name as well as a short acronym with multiple actual and potential meanings not necessarily related to the Complainant. Taking into account all the circumstances of this dispute, the asking price does not allow the Panel to infer that the Respondent acquired the disputed domain name “primarily” for the purpose of selling it to the Complainant or to a competitor of the Complainant within the terms of paragraph 4(b)(i) of the Policy.

Nothing on the Respondent’s webpage has any particular connection to the Complainant or to the type of services that it offers, namely engineering. Nor is there any other evidence of bad faith on the part of the Respondent.

In view of the above circumstances, the Panel is unable to find it more likely than not that the Respondent intended to benefit unfairly from the Complainant’s mark and/or to damage the business of the Complainant when he registered the disputed domain name. Accordingly, the Panel does not find that the Complainant has met its burden under the third element in paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

Matthew Kennedy
Sole Panelist
Date: September 21, 2021

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