{
    "case_number": "CAC-UDRP-100739",
    "time_of_filling": "2014-02-13 16:15:28",
    "domain_names": [
        " ficep.com"
    ],
    "case_administrator": "Lada Válková (Case admin)",
    "complainant": [
        "FICEP SPA "
    ],
    "complainant_representative": "Daniel Dimov (n\/a)",
    "respondent": [
        "FICEP "
    ],
    "respondent_representative": "Lawint",
    "factual_background": "The Complainant has been active in the machine tool manufacturing market since 1930 when it was founded in Italy.  It is now one of the world’s leading machine tool manufacturing companies and has become the largest producer in the world today of automated systems for the fabrication of structural steel and plate and the forging industry. \r\n\r\nThe Respondent is a French company incorporated on 19 January 1978, although its founder began providing services in 1973 under the term FICEP.  This originally stood for \"Froid Isolation Calorifuge Echafaudage Peinture\" (Cold, Insulation, Industrial Roofing, Scaffolding and Painting), but it has now been changed to \"Frigorifuge, Isolation, Calorifuge, Echafaudage, Plafonds\" (Cooling, Insulation, Industrial Roofing, Scaffolding and Ceilings).\r\n\r\nThe Respondent registered the Domain Name on 29 June 1998.\r\n\r\nThe Complainant previously brought a Complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) against the Respondent in relation to the same Domain Name, <ficep.com> (the \"First Complaint\").  The First Complaint was denied on 1 October 2013 - CAC Case Number 100630 (the \"First Decision\").  The Panel concluded as follows:\r\n\r\n\"While the Complainant has demonstrated that the contested domain name is identical to its registered trademarks, the Respondent has demonstrated that the disputed domain name is the same as their company name and that it has been making use of the name in good faith for decades.  As this is the case, the Panel finds that the Respondent does have rights or a legitimate interest in the name, and consequently, there is no other circumstance indicating of bad faith on the Respondent's part, the complaint is hereby dismissed.\" \r\n\r\nThe Complainant filed another Complaint against the Respondent concerning the Domain Name on 13 February 2014 (the \"Second Complaint\").  However, the Czech Arbitration Court found that it was deficient for a number of reasons, including the fact that the Complainant had not specified whether any other proceedings concerning the Domain Name had previously been brought.\r\n  \r\nThe Complainant corrected such deficiencies and filed an amended version of the Second Complaint on 20 February 2014.  The Respondent filed a Response on 13 March 2014, within the required deadline.  The Complainant then filed a Supplemental Filing on 16 March 2014, which was followed by a Supplemental Filing by the Respondent on 20 March 2014.  The Complainant provided a Second Supplemental Filing on 24 March 2014.    \r\n",
    "other_legal_proceedings": "The Complainant previously brought a Complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) against the Respondent in relation to the same Domain Name, <ficep.com>.  The First Complaint was denied on 1 October 2013 - CAC Case Number 100630.",
    "no_response_filed": "Parties' Contentions:\r\n\r\nComplainant\r\n\r\nThe Complainant argues that it also has unregistered rights as well as registered rights and that such rights existed before the Respondent's registration of the Domain Name. \r\n\r\nIt also points out that the Respondent has no registered trade marks in the term FICEP and argues that French law does not recognise unregistered trade marks.  It states that, whilst French law provides for specific protection of well-known trade marks, this has to be on the basis of opinion polls or surveys.\r\n\r\nThe Complainant argues that the Domain Name is identical to the Complainant's registered trade mark rights.  \r\n\r\nIt also states that the Respondent has no rights or legitimate interests in the Domain Name because the Respondent's use of the Domain Name is not in connection with a bona fide offering of goods or services. This is because the Respondent's website is used to offer scaffolding material and this can be confused by a non-expert as being the same or similar to the systems offered by the Complainant.  In addition internet users may think that the Domain Name is owned by the Complainant because the Complainant owns trade marks and many other domain names containing the term FICEP, but the Respondent does not.  According to the Complainant, the Domain Name has been used since 1998 as a means to deceive the Complainant's customers.\r\n\r\nThe Complainant also states that the Respondent has not been commonly known by the Domain Name because the Complainant is commonly known by this term, and two companies cannot be commonly known by the same term.  Furthermore the Complainant argues that the Respondent is not making a legitimate non-commercial or fair use of the Domain Name because the Respondent is using the Domain Name to attract internet users for commercial gain by creating a likelihood of confusion with the Complainant's trade mark. \r\n\r\nThe Complainant argues that the Respondent registered the Domain Name in bad faith for much the same reasons and therefore seeks transfer of the Domain Name.\r\n\r\nRespondent\r\n\r\nAs a preliminary issue, the Respondent makes reference to the First Complaint filed by the Complainant which was denied.\r\n\r\nThe Respondent underlines that a case under the UDRP may be reheard under certain circumstances, according to previous UDRP case law (WIPO Case No. D2000-0703, Grove Broadcasting Co. Ltd v. Telesystems Communications Limited).  Such circumstances cover (a) serious misconduct on the part of a judge, juror, witness or lawyer, (b) perjured evidence having been offered to the Court, (c) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial and (d) a breach of natural justice.\r\n\r\nIn the Respondent's opinion none of these circumstances are met in the present case because the content of the First Complaint and the Second Complaint is almost the same, except that the in the Second Complaint the Complainant has added some paragraphs relating to (i) French trade mark legislation and case law and (ii) cybersquatting.  According to the Respondent, these new paragraphs do not contain any new evidence and so do not justify a rehearing: the Complaint has already been judged by a Panel and so must be rejected.\r\n\r\nNevertheless, the Respondent also provides substantive arguments as follows:\r\n\r\nThe Complainant and the Respondent are not competitors and do not provide services or products for the same customers or in the same market.  They have very different websites. \r\n\r\nThe term “FICEP” was chosen and is used by the Respondent to designate the services it provides.  The Respondent has evidence of serious and continuous use of such term since 1973. \r\n\r\nThe Respondent registered the Domain Name in order to propose its services to customers across Europe on the internet.  It has not previously had any issues with such registration.\r\n \r\nThe Respondent argues that it has rights and legitimate interests in the Domain Name because it has used the name FICEP since 1973 and registered it as its company name in 1978.  Even though it does not have a registered trade mark in the term FICEP, the Respondent argues that FICEP is recognised as a well-known trade mark under both French and international law and submits evidence to support this.   \r\n\r\nThe Respondent states that it was not aware of the Complainant's trade marks before it received a letter from the Complainant's representative in 2011.  \r\n\r\nThe Respondent argues that it has always used the Domain Name in good faith and has never benefited commercially as a result of the similarity between the Domain Name and any domain names used by the Complainant.  In the Respondent's opinion, the Complainant has not provided any evidence of the Respondent's bad faith.  \r\n\r\nThe Respondent also states that, since the Complainant filed the Second Complaint, it has received several emails and letters addressed to the Complainant, supposedly from suppliers or consumers.  The Respondent asserts that such confusion has never happened before and states that the email address used (ficep@ficep.com) does not appear on the Respondent's website (which refers to ficep@wanadoo.fr), only on its business cards and commercial advertisements.  In the Respondent's opinion, this indicates that the senders probably did not go to the Respondent's website but were given the address by the Complainant in an effort to demonstrate confusion between the two companies, thus showing the Complainant's bad faith.  \r\n \r\nIn this regard, the Respondent states that it has initiated a criminal procedure for fraud before the French criminal authorities and that the legal representative of the Respondent was heard by an officer of French police on 11 March 2014 as part of preliminary investigations. \r\n\r\nComplainant's First Supplemental Filing\r\n\r\nThe Complainant states that it has two additional pieces of evidence that were previously unavailable, as follows:\r\n\r\n(i) On 13 March 2014, the Office for Harmonization in the Internal Market (OHIM) issued a decision regarding the Respondent's opposition to the Complainant's CTM application number 11858065 in the term FICEP.  Such opposition was based on the use of the Respondent's company name in France.  However the Respondent failed to supply relevant evidence and so the opposition was rejected.  In the Complainant's opinion, this clearly indicates that the Respondent does not have any rights in the term FICEP. \r\n\r\n(ii) The Complainant argues that the French police report submitted by the Respondent does not prove that the Complainant has committed any fraud, and that this is ultimately a question for a court to decide.  Instead the Complainant argues that the report illustrates the Respondent's bad faith as it did not reply to such emails and did not forward them to the Complainant.  In the Complainant's opinion, the Respondent clearly registered the Domain Name in order to prevent the Complainant (the trade mark owner) from reflecting its trade mark in a corresponding domain name, which is evidence of bad faith in accordance with paragraph 4(b)(ii) of the UDRP.\r\n\r\nRespondent's Supplemental Filing\r\n\r\nThe Respondent addressed the Complainant's two additional points as follows:\r\n\r\n(i) OHIM's decision is not new evidence as referred to in the case WIPO No. D2000-0703, Grove Broadcasting Co. Ltd v. Telesystems Communications Limited.  The Complainant applied for its CTM in May 2013, but the Domain Name was registered in 1998, well before this.  Furthermore, the Respondent argues that this decision cannot be taken into account as it is not final and the Respondent is preparing to appeal.\r\n\r\n(ii) The Respondent argues that the French police report does suggest the Complainant's involvement, despite the Complainant's submissions, and repeats its belief that the senders of the wrongly addressed emails must have been given the address by the Complainant.  In response to the Complainant's assertion that the Respondent registered the Domain Name in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name, the Respondent points out that the Domain Name was registered in 1998, but the Complainant did not have a registered trade mark until 2004. Thus the Respondent argues that the FICEP brand did not exist when the Domain Name was registered and therefore the Respondent could not have registered it in bad faith.    \r\n\r\nComplainant's Second Supplemental Filing\r\n\r\nThe Complainant states that it has been using the unregistered trade mark FICEP since 1930, and indeed has submitted copies of invoices dating from 1958.  The Complainant points out that the email address of the Complainant (ficep@ficep.it) is confusingly similar to that of the Respondent (ficep@ficep.com).  It adds that the Complainant's clients could easily be misled as the Complainant is an international company and exports 98% of all its products.  \r\n\r\nIn addition, the Complainant submits evidence of a Google search indicating that ficep@ficep.com is publicly available on many websites, and thus argues that the Respondent's submission that ficep@ficep.com is not publicly available is not true.\r\n \r\nFinally, the Complainant points out that it did not mention the misdirected correspondence until being informed about it by the Respondent, and argues that this is a clear indication that the Complainant is not linked to such correspondence.  \r\n\r\n",
    "rights": "Not Applicable (See below)",
    "no_rights_or_legitimate_interests": "Not Applicable (See below)",
    "bad_faith": "Not Applicable (See below)",
    "procedural_factors": "The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.",
    "decision": "Rejected",
    "panelists": [
        "Jane Seager"
    ],
    "date_of_panel_decision": "2014-04-22 00:00:00",
    "informal_english_translation": "The Complainant relies on ownership of the following trade marks:\r\n \r\n- US trade mark registration 78178282 FICEP (figurative) filed on 25 October 2002 and registered on 15 June 2004;\r\n  \r\n- Italian trade mark registration 1031782 FICEP (figurative) filed on 7 May 2002 and registered on 16 December 2006; and\r\n\r\n- Community Trade Mark (CTM) application 11858065 FICEP (figurative), filed on 30 May 2013.\r\n",
    "decision_domains": {
        "FICEP.COM": "REJECTED"
    },
    "panelist": null,
    "panellists_text": null
}