Aqseptence Group, Inc. v. Paparelli Alessandro & Figlio Srl
Claim Number: FA2008001910349
Complainant is Aqseptence Group, Inc. (“Complainant”), represented by Tye Biasco of Patterson Thuente Petersen, PA, Minnesota, USA. Respondent is Paparelli Alessandro & Figlio Srl (“Respondent”), represented by Jane Mori, Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <johnson-screens.com>, registered with Register SpA.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 27, 2020; the Forum received payment on August 27, 2020.
On August 31, 2020, Register SpA confirmed by e-mail to the Forum that the <johnson-screens.com> domain name is registered with Register SpA and that Respondent is the current registrant of the name. Register SpA has verified that Respondent is bound by the Register SpA registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 8, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@johnson-screens.com. Also on September 8, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 1, 2020. The Response is in Italian.
On October 7, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist. The Panelist is fluent in Italian.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it offers products having a wide range of applications in the fields of filtration & separation and water technology, screens for industrial filtration, water wells, architectural elements, and the oil & gas market. Complainant has rights in the JOHNSONSCREENS mark due to its registration of the mark in the United States, with rights preceding the date of registration of the disputed domain name.
Complainant alleges that the disputed domain name is identical to Complainant’s JOHNSONSCREENS mark. Respondent incorporates the mark in its entirety and adds a hyphen and “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent lacks rights in the disputed domain name as Respondent is not commonly known by the domain name and Complainant did not authorize Respondent to use the JOHNSONSCREENS mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the JOHNSONSCREENS mark to mislead internet users into thinking that Respondent is somehow affiliated with Complainant and offers products that directly compete with Complainant.
Further, says Complainant, Respondent registered and used the disputed domain name in bad faith as Respondent’s domain name resolves to a webpage that offers goods and services that compete with Complainant’s business.
Additionally, Complainant has been the owner of the <johnsonscreens.com> domain name since 1995. In addition to violating Complainant’s trademark rights in its JOHNSONSCREENS mark, Respondent is also creating confusion by using an almost identical domain name that Complainant has been using continuously for more than 20 years before Respondent registered the disputed domain name. The copying of Complainant’s domain name is further evidence of Respondent registering and using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
B. Respondent
Respondent states that it was founded at the beginning of the 20th century, when it started to produce tools, in particular for use in construction, carpentry, and metal working. In the 1950’s, thanks to its creativity and experience, Respondent specialized in the production of filters and tubes for water wells, targeting a professional and specialized market. In this specific contest, Respondent started to use the term “Johnson type” in 2016, for technical reasons, that is, to identify the nature and function of certain products, and not to identify their source. In fact, Respondent’s products are always marketed and sold in conjunction with Respondent’s name “Paparelli”.
Respondent alleges that Complainant has not provided evidence of a trademark registration preceding the registration of the disputed domain name.
Respondent alleges that it has substantial documentary evidence from which it can be clearly deduced that the term "johnson" (also in combined forms, like "johnson screen", “johnson type”, etc.) has become the common name generally used worldwide by professional operators to identify the wedge wire screens made of stainless steel wire, largely used in the industrial screening of petroleum, chemical, pharmaceutical, filtration of water, etc. This can be easily verified by an Internet search, which will show that many sites offer “Johnson screens”, for example <https://www.tradebrio.com/product/waterwellscreen-haixingbob.html> and <https://www.zhehanfilter.com/water-treatment-filter/johnson-screens.html>.
According to Respondent, it is merely making use of a common term, therefore there is no cybersquatting and the present dispute is outside the scope of the UDRP.
Further, since Respondent found that, in 2016, the term “Johnson screen”, was commonly used to identify a type of product, and not the source of the product, it did not act in bad faith when it registered the disputed domain name.
Complainant has rights in the mark JOHNSONSCREENS and uses it to market a variety of products, including water filters.
Complainant’s rights in its mark, for the purposes of the present procedure, date back to May 2, 2016.
The disputed domain name was registered on September 28, 2016.
Several web sites, not associated with Complainant, use the term “Johnson screen” to refer to the products offered on the sites.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
Prior to discussing the three elements of the Policy, the Panel must decide on the language of the proceedings. The Registration Agreement is written in Italian, thereby making the language of the proceedings Italian.
Pursuant to UDRP Rule 11(a), the Panel has the authority to determine a different language for the proceedings, having regard to the circumstances of the case. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Pursuant to Rule 10(b), Respondent must be given a fair opportunity to present its case. Pursuant to Rule 10(c), the Panel may weigh the relative time and expense in enforcing the Italian language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
In the present case, the Complaint was filed in English. Respondent is fluent in English, as shown by its correspondence with Complainant. Respondent alleges that responding to a legal brief is not the same as commercial correspondence, thus it would be penalized if it had to reply in English. Respondent submits a well-reasoned Reply in Italian.
The Panel is fluent in Italian and thus fully understands the Reply. The Panel notes that the substantive arguments set forth in the Reply are similar to those set forth in its English-language correspondence with Complainant. The Reply aptly cites UDRP precedents written in English. Thus the Panel finds that Respondent has been given a fair opportunity to present its case.
Pursuant to Rule 11(a), having regard to the circumstances of the case, the Panel determines that fairness and justice to both parties, and due expedition, are best satisfied by conducting the remainder of the proceedings in English. See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017); see also UBS AG v. ratzel laura, FA 1735687 (Forum July 14, 2017).
Respondent contests the relevance of various trademarks referred to by Complainant, however it does not contest that Complainant does have trademark rights in the JOHNSONSCREENS mark due to its registration in the United States. Registration of a mark is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The trademark in question was registered in 2017, but the filing date was May 2, 2016, and that is the relevant date for the present proceedings, see Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA 1591638 (Forum Jan. 16, 2015) (finding Complainant has rights in the LENOVO mark dating back to the February 20, 2003 filing date with the USPTO as the trademark application was ultimately successful); see also Hershey Co. v. Reaves, FA 967818 (Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Therefore, the Panel finds that Complainant has adequately shown rights in the JOHNSONSCREENS mark per Policy ¶ 4(a)(i), and that those rights precede the registration of the disputed domain name.
The disputed domain name consists of Complainant’s mark, with the addition of a hyphen and the “.com” gTLD. Registration of a domain name that contains a mark in its entirety and adds a gTLD and hyphen does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug, 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). Therefore, the Panel finds that the disputed domain name is identical to Complainant’s mark per Policy ¶ 4(a)(i).
As noted above, Complainant must prove all three elements of the Policy, including that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Pursuant to Policy ¶ 4(c)(i) and (ii), Respondent can demonstrate rights and legitimate interests in a disputed domain name if before any notice of the dispute it used the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or if it has been commonly known by the domain name.
Complainant alleges that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services because it infringes Complainant’s trademark. Respondent alleges that the term “Johnson screen” is a descriptive term that is used by many filter manufacturers around the world. It presents evidence to support its allegation.
The Panel finds that the question of whether nor not Respondent’s use of Complainant’s mark is legitimate falls outside of the scope of the present proceedings, and is best resolved in national courts, because it hinges on the issue of whether the term “Johnson screens” can legitimately be used to describe a type of filter. See Happy State Bank d/b/a GoldStar Trust Company v. Ronny Yakov / CrowdPay.us, Inc. FA 1802648 (Forum Sept. 27, 2018); see also Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else); see also Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”).
Consequently, the Panel finds that Complainant has failed to satisfy, in sense of the present proceedings, its burden of proving that Respondent does not have a legitimate interest in the disputed domain name.
Since the Panel finds that Complainant has not satisfied its burden of proving that Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii), it will not analyze the third element of the policy. See GROBET FILE COMPANY OF AMERICA, INC. v. THE EXCHANGE JEWELRY SUPPLY, FA 94960 (Forum July 14, 2002) (“Having failed to prove the second prima facie element, the Panel need give no consideration to the third element, Respondent’s bad faith registration and use of the domain name.”); see also The Travel Corporation Ltd. v. Priddy Entertainment, FA 1908211 (Forum Oct. 1, 2020).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <johnson-screens.com> domain name REMAIN WITH Respondent.
Richard Hill, Panelist
Dated: October 7, 2020
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