WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Brands Environment Establishment v. Pawel Matwiejczuk Case No. D2009-0238 1. The Parties
The Complainant is Brands Environment Establishment, of Vaduz, Liechtenstein, represented by Studio Legale Perani, Italy.
The Respondent is Pawel Matwiejczuk, of Warszawa, Poland. 2. The Domain Names and Registrar
The disputed domain names , and (hereafter, the “Domain Names”) are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2009. On February 24, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the Domain Names. On February 25, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 23, 2009.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on April 6, 2009. 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 Brands Environment Establishment. Since 2002, the Complainant uses the BOSCO SPORT trademark for the sponsoring of the Russian Olympic team.
The Complainant is owner of the following BOSCO SPORT trademarks:
- BOSCO SPORT, registered with the World Intellectual Property Organization on December 15, 2005, under registration number 891834, with validity in Poland (Annex C, Complaint);
- BOSCO SPORT, registered with the Office for Harmonisation in the Internal Market (European Community registration) on October 7, 2008 (filing date is December 6, 2007), under registration number 6492029 (Annex C, Complaint).
The Respondent registered the Domain Names on August 21, 2008. The Domain Names do not resolve to any website. 5. Parties' Contentions A. Complainant Identical or confusingly similar
The Complainant contends that the Domain Names are confusingly similar to Complainant's BOSCO SPORT trademarks, since the Domain Names exactly reproduce the BOSCO SPORT trademarks. Rights or legitimate interests
The Complainant states that the Respondent has no right or legitimate interest in the Domain Names. The Complainant contends that it has a worldwide watching service on the words “Bosco Sport” and that no trademark with these words has been registered in name of the Respondent. In addition, the Complainant contends that the Respondent does not make use of the business name “Bosco Sport”, nor is the Respondent commonly known under the name “Bosco Sport”.
Finally, the Complainant contends that the Domain Names are not connected to any websites, which implies that there is no bona fide use or legitimate purpose for the use of the Domain Names. Registered and used in bad faith
The Complainant states that the Domain Names are registered and are being used in bad faith. The Complainant contends that the concept of a domain name “being used in bad faith” does not imply that such use is limited to positive action. In this respect, the Complainant relies on Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, in which the panel found that passive holding of a domain name may, considering all circumstances of the respondent's behaviour, amount to use in bad faith.
Within this scope, the Complainant contends that the Complainant's trademark BOSCO SPORT has a strong reputation and is well known. There is thus no doubt that the Respondent was aware of the Complainant's rights in the trademark BOSCO SPORT.
The Complainant contends that the Domain Names have not been used since they were registered. Moreover, there is no evidence of any preparations for a legitimate commercial or noncommercial use of the Domain Names. The Complainant furthermore contends that any use of the Domain Names by the Respondent would infringe on the Complainant's trademark rights.
The Complainant finally contends that the sole purpose of the registration of the Domain Names may be to resell the Domain Names, which represents, in any case, evidence of registration and use in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant has demonstrated trademark rights in BOSCO SPORT.
The Domain Names vary from the BOSCO SPORT trademark only in the addition of the generic top level “.com” or “.info” and in the deletion of the space between the words Bosco Sport () or in the addition of a hyphen between the words Bosco Sport ( and ). It is standard case law to disregard the generic top levels such as “.com” or “.info”, a deletion of space between words or an addition of a hyphen when assessing whether a domain name is identical or confusingly similar to a trademark (e.g. see Laerdal Medical Corporation v. Locks Computer Supply,WIPO Case No. D2002-0063; InfoS, Inc. v. Tenenbaum OferWIPO Case No. D2000-0075 and Ruby's Diner v. Joseph W. Popow,WIPO Case No. D2001-0868.
Based on the above, the Panel finds that the Domain Names are confusingly similar to the Complainant's trademarks. B. Rights or Legitimate Interests
The Complainant has contended that the Respondent is not known and has not been known under the name “Bosco Sport”, nor does the Respondent own a BOSCO SPORT trademark. The Complainant has contended that due to the fact that the Domain Names do not resolve to any websites, there does not seem to exist any (other) legitimate interest in the Domain Names. Based on these “prima facie”contentions and in the absence of a rebuttal by the Respondent, the Panel finds that the Complainant has shown that the Respondent does not have a right or a legitimate interest in the Domain Names. C. Registered and Used in Bad Faith
Although there are no websites accessible via the Domain Names, it is standard UDRP case law that “passive holding” shall not automatically lead to the conclusion that “use in bad faith” cannot be found. As set out in the Telstra case, in case of passive holding a panel should judge the matter in the light of all the circumstances of the case (Telstra Corporation Limited v. Nuclear Marshmallows, cited above).
The Panel accepts that the Respondent most likely had prior knowledge of the Complainant's trademarks when registering the Domain Names. Since 2002, the BOSCO SPORT trademarks have been used by the Complainant for the sponsoring of the participants of the Russian Olympic team. That makes it likely that the BOSCO SPORT trademarks are widely known in the Russian Federation and surrounding (Eastern) European countries, including Poland, the place of residence of the Respondent. The Panel notes that the first registration of the BOSCO SPORT trademark was in Poland. The Panel further notes that the Respondent registered the Domain Names during the Olympic Games of 2008, which took place from August 8 to August 24, 2008. Under these circumstances, based on the record available to the Panel, it must be assumed in this particular case that the Respondent was aware of the Complainant's trademarks when registering the Domain Names.
In view of the notoriety of the Complainant's trademarks, the Panel furthermore finds that any future good faith use of the Domain Names appears inconceivable.
For the reasons set out above, the Panel finds that the Complainant has proven that the Respondent has registered and uses the Domain Names in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, , and be transferred to the Complainant.
Wolter Wefers Bettink
Sole Panelist
Dated: April 24, 2009
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