The Complaint for the disputed domain name digitalceramic.com was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2012.
The Complainant was Digital Ceramic Systems Limited of Stoke-on-Trent, Staffordshire, England and The Respondent was Baltea SRL of Leini, Italy.
The Domain Name digitalceramic.com was registered on January 31, 2005.
On May 15, 2012, the Complainant applied for the trademark DIGITAL CERAMICS, which was not registered yet as of July 24, 2012.
Both Complainant and Respondent had problems with the UDRP and WIPO procedure and rules. The Complainant filed its Complaint on June 13, 2012. Two days later, on June 15, 2012, the Complainant submitted an amendment to the Complaint with the request to change the remedy of the Complaint from the cancellation to the transfer of the Domain Name. The Panel decided to consider the amendment. Respondent submitted a late response. The Respondent never specifically explained why it took until July 13, 2012, i.e. eight days after the deadline for the filing of the Response, to submit the Response. The Panel admitted the Response. Then on July 17, 2012, the Complainant submitted a supplemental filing as a reaction on the Respondent’s Response, without having been required to do so by the Panel. The Panel after having reviewed the content of the Complainant’s Supplemental Filing, reached the conclusion that it does not mention new documents or new circumstances which were not known by the Complainant at the moment of the filing of its Complaint so the Panel didn’t consider this submission.
The Complaint ultimately failed on the first element of the UDRP: Rights in a trademark or a service mark.
Firstly, the Panel had to determine whether the fact that the Domain Name was registered more than seven years before the application for the said trademark hinders the conclusion of identity or confusing similarity under the UDRP. Complainant didn’t have a registered trademark yet.
Secondly, it had to be specified what needs to be shown for the Complainant to successfully assert common law or unregistered trademark rights. The Complainant didnt offer any evidence in the nature of advertising, revenues, sales, consumer surveys, media recognition, or the like, which could support the acquisition of “secondary meaning” sufficient to constitute a common law mark’. Therefore, the Panel concluded that the Complainant didnt provide enough proof that DIGITAL CERAMICS had become a distinctive identifier associated with the Complainant. The Panel noted that for cases as the present one, in which the trademark DIGITAL CERAMICS consists of descriptive words, the burden of proof is even higher:
“[I]n cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness.”
Therefore, given the above and on the basis of all evidence submitted by the parties, in the Panel’s view, the Complainant failed on the record before the Panel in these proceedings to meet the first requirement of paragraph 4(a) of the Policy, as it did not prove any rights in a trademark or a service mark.
As the Complainant failed to prove that it has rights in a trademark or a service mark in the sense of paragraph 4(a)(i) of the Policy, the Panel was not required to consider the fulfillment of the other requirements held in paragraph 4(a) of the Policy, i.e. whether the Domain Name was identical or confusingly similar to a trademark or a service mark in which the Complainant has rights, whether the Respondent had no rights or legitimate interests in respect of the Domain Name and whether the Domain Name had been registered and is being used in bad faith. Nevertheless, it may be noted that the Panel had substantial doubts as if all other requirements foreseen in paragraph 4(a) of the Policy would have been fulfilled.
The mere fact that the Complainant’s trademark is going to be registered in a few months, if ever, would have made it impossible for the Panelist to find bad faith registration for a domain name registered 7 years before that trademark. The Respondent, allegedly incorporated on March 2, 2005 offers, among others, ceramic toners. It has registered several domain names such as balteadc.it, digitalceramic.it, tonerceramic.it or tonerceramico.net. Digitalceramic.com resolves to Respondent’s website.
So the Complaint for digitalceramic.com was denied.