The WIPO panelist in a UDRP filed against the aged (2006) domain name Cyrgo.com has delivered a decision favoring the Complainant.
Cyrgo S.A.S., Colombia, filed the UDRP to reclaim the domain that WHOIS records show it owned in 2001. The Colombian company registered the domain in 1999 but it apparently lapsed in 2006.
Since then, the domain seems to have changed hands a few times. In their Response, the domain’s registrant stated that they own the domain since 2006 and it’s been “in use” and reserved for an unspecified project.
The Complainant maintains rights to trademarks in Colombia, registered in 1994. They operate from the domain Cyrgo.com.co. The WIPO panelist wasn’t satisfied with the Respondent’s statements, for the following reasons:
- The exact date that the Respondent acquired the disputed domain name.
- Whether the Respondent was aware of the Complainant as at the time it acquired the disputed domain name.
- The exact reason why the Respondent selected the disputed domain name.
- The exact nature of the alleged intended project as well as details of any preparations already undertaken and why the project has not yet come to fruition. The Respondent simply stated that it would be providing more information about its intentions for use of the disputed domain name in due course.
Final decision: Grant transfer of the aged domain Cyrgo.com to the Complainant.
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ADMINISTRATIVE PANEL DECISION
Cyrgo S.A.S. v. Domain Administrator, Absord
Case No. D2021-37211. The Parties
The Complainant is Cyrgo S.A.S., Colombia, represented by Holland & Knight Colombia SAS, Colombia.
The Respondent is Domain Administrator, Absord, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2021. On November 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 11, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 13, 2021.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2021. The Respondent sent an email to the Center on November 25, 2021.
The Center appointed Adam Taylor as the sole panelist in this matter on December 27, 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.
On January 10, 2022, the Panel issued Procedural Order No.1 inviting each party to provide certain information and thereafter to comment on the other party’s submission. The Complainant made a submission on January 18, 2022, to which the Respondent responded on January 19, 2022. The Respondent did not make a submission in response to the Panel’s request addressed to it.
4. Factual Background
The Complainant has distributed construction materials in Colombia for some 50 years. It operates 17 points of sale throughout the country, supplying products to builders, hardware stores and homes.
The Complainant operates a website at “www.cyrgo.com.co”.
The Complainant owns a number of Colombian trade marks for CYRGO including nos. 172506 and 172507, both filed on May 10, 1991, and registered, respectively, on June 14, 1994, in class 37 and on June 15, 1994, in class 16.
The disputed domain name was registered on June 13, 2006.
According to an undated screenshot supplied by the Complainant, the disputed domain name has been used to resolve to a pay per click (“PPC”) website listing the following topics: “ENVIRONMENTAL SUSTAINABILITY SOFTWARE”, “ONLINE BUSINESS PLAN CONSULTANT”, “FERRETERIA INDUSTRIAL” (meaning “industrial hardware”), “PROFESSIONAL BUSINESS PLAN CONSULTANT” and “MANAGEMENT CONSULTANCY FIRMS”. Clicking on the “FERRETERIA INDUSTRIAL” link brought up a page with the Complainant’s name and contact details.
5. Parties’ Contentions
A. Complainant
The following is a summary of the Complainant’s contentions.
The Complainant is one of the “most important” distributors of construction materials in the Colombian market.
The disputed domain name reproduces, and is identical to, the Complainant’s trade mark and company name.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent has not been commonly known by the disputed domain name and has not acquired a related trade mark. The Complainant owns all trade marks containing the word “cyrgo”.
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith.
The Respondent registered and used the disputed domain name “to promote industrial hardware” whilst taking advantage of the reputation of the Complainant’s trade marks. Accordingly, the disputed domain name was registered in bad faith. It was used to mislead customers into thinking that the Respondent was associated with the Complainant.
Customers finding the disputed domain name are likely to confuse it with the Complainant’s mark, especially given its similarity with the domain name used by the Complainant for its own site.
The Complainant never received an answer to its attempted communications with the owner of the disputed domain name. Nor did the Complainant receive a satisfactory response from the Registrar.
Before submitting the Complaint, the Complainant discovered that the disputed domain name was being offered for sale at a price of USD 3,611. This shows that “all along”, the Respondent had a bad faith intention to sell the disputed domain name for a substantial amount. Failure to make good faith use of a domain name during any period can indicate that a respondent’s primary intent was to sell it.
B. Respondent
The following is a summary of the Respondent’s contentions.
The disputed domain name has been registered since 2006, and the Respondent has owned it for many years. The disputed domain name is reserved for a future project.
According to a search at the website of the United States Patent and Trademark Office, the Complainant does not own any international trade marks for the name that are valid in the United States.
The Complainant has no claim to the disputed domain name, which is an “international domain name”, because the Complainant’s trade marks appear to be relevant only in Colombia.
The Respondent is open to exploring settlement offers, but it believes the Complainant’s claim to be invalid. The Respondent will be providing more information about its intentions for use of the disputed domain name.
The links in the Complainant’s screenshot of the website at the disputed domain name are automatically generated when there is no active website. None of the links refer or relate to the Complainant, which does not own any trade marks for “ferreteria industrial” or any of the other generic terms listed on that page.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
– the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
– the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
– the disputed domain name has been registered and is being used in bad faith.
A. Preliminary Issue – Informal Response
The Response is in the form of an email to the Center, which does not comply with the formal requirements set out in paragraph 5 of the Rules. For example, there is no statement of truth. The Panel has nonetheless decided to admit the Response in accordance with its powers under paragraph 10(d) of the Rules but to bear in mind the Response’s non-compliance with the Rules, including in particular the absence of a statement of truth, when weighing up the Respondent’s assertions in this case. The Panel has also decide to admit the Respondent’s email of January 19, 2022.
B. Identical or Confusingly Similar
The Complainant has established rights in the mark CYRGO by virtue of its Colombian registered trade marks.
The Respondent observes that the Complainant does not own any United States trade marks and that the Complainant’s marks appear to be relevant only in Colombia. However, section 1.1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains that, given the global nature of the Internet and the domain name system, the jurisdiction where the trade mark is valid is not considered relevant to panel assessment under this first element.
Furthermore, disregarding the Top-Level Domain (“TLD”) suffix, the disputed domain name is identical to the Complainant’s trade mark. Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.
As to paragraph 4(c)(i) of the Policy, the disputed domain name has been used for a parking page with PPC links including “FERRETERIA INDUSTRIAL”, which means “industrial hardware” and reflects the type of goods and services supplied by the Complainant. Such use of the disputed domain name could not of itself confer rights or legitimate interests. See section 2.9 of WIPO Overview 3.0, which states that use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalise on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.
The Respondent observes that none of the PPC links refer or relate to the Complainant and that the Complainant does not own any trade marks for the generic term “ferreteria industrial”. However, as mentioned above and not denied by the Respondent, this phrase denotes the kind of goods and services offered by the Complainant and therefore use of the parking page in conjunction with the disputed domain name comprising the Complainant’s mark capitalises on the reputation and goodwill of that mark. The Panel also notes that this link leads to a page which refers to the Complainant and provides its contact details.
Furthermore, there is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
For the above reasons, the Panel concludes that the Complainant has established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
The Respondent states that the disputed domain name has been registered since 2006 and that the Respondent has owned it “for many years”, implying that the Respondent may not be the first owner of the disputed domain name. The Response also claims that the disputed domain name is reserved for “a future project”. However, the Response fails to disclose any of the following:
1. The exact date that the Respondent acquired the disputed domain name.
2. Whether the Respondent was aware of the Complainant as at the time it acquired the disputed domain name.
3. The exact reason why the Respondent selected the disputed domain name.
4. The exact nature of the alleged intended project as well as details of any preparations already undertaken and why the project has not yet come to fruition. The Respondent simply stated that it would be providing more information about its intentions for use of the disputed domain name in due course.
The Respondent also failed to respond to the Panel’s subsequent invitation to answer these questions and supply supporting evidence.
In these circumstances, including the lack of any alternative explanation from the Respondent, the Panel thinks it reasonable to infer that the Respondent registered the disputed domain name in bad faith with a view to targeting the Complainant’s distinctive mark.
In the Panel’s view, paragraph 4(b)(iv) of the Policy applies. By using the disputed domain name, comprising the Complainant’s distinctive trade mark, in connection with a parking page with links to products relating to the Complainant’s industry, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Respondent points out that the PPC links on the parking page are automatically generated. However, section 3.5 of WIPO Overview 3.0 makes clear that respondents cannot disclaim responsibility for “automatically” generated pay-per-click links on their websites and that neither the fact that such links are generated by a third party such as a registrar, nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.
In any event, even if the Respondent were not held responsible for the parking page, the Panel nonetheless considers that the disputed domain name constitutes a “passive holding” in bad faith as explained section 3.3 of WIPO Overview 3.0, based on the following cumulative circumstances: (i) the distinctiveness of the Complainant’s mark, (ii) the failure of the Respondent to provide any evidence of actual or contemplated good-faith use and (iii) the implausibility of any good faith use to which the disputed domain name may be put.
For the above reasons, the Panel considers that the Complainant has established the third element of paragraph 4(a) of the Policy.
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, be transferred to the Complainant.
Adam Taylor
Sole Panelist
Date: January 31, 2022
