The Complainant is Phoenix Polska Spółka z ograniczoną odpowiedzialnością w likwidacji of Szczecin, Poland, represented by Rafal Malujda from Rafal Malujda Law Office, Poland.
The Respondent is Miroslaw Buldo of Szczecin, Poland, represented by Radosław Włodarczyk from Marek Czernis & Co. Law Office, Poland. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2011. On December 19, 2011, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On December 19, 2011, GoD, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 22, 2011, the Center requested the Complainant by email to identify the concerned registrar and to specify the trademark or service mark on which the Complaint is based. Accordingly, the Complainant filed the amended Complaint on January 23, 2012.
The Center verified that the Complaint together with the amendment to the Complaint/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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2012. The Response was filed with the Center on January 16, 2012.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on January 23, 2012. 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 20, 2012, the Complainant submitted an unsolicited supplemental filing to the Center copying the Respondent. On January 27, 2012, the Respondent also submitted an unsolicited supplemental filing to the Center copying the Complainant. On both occasions, the Center acknowledged receipt of the supplemental filings, forwarded them to the Panel, and communicated to the parties that the Panel would have sole discretion to determine the admissibility of the supplemental filings under the paragraphs 10 and 12 of the Rules. On February 17, 2012, the Respondent submitted another unsolicited supplemental filing to the Center copying the Complainant. 4. Factual Background
The Complainant in this administrative proceeding is Phoenix Polska Spółka z ograniczoną odpowiedzialnością w likwidacji (limited liability company in liquidation), incorporated in Poland. The trademark or service mark on which the Complaint is based is PHOENIX POLSKA and PHOENIX POLAND, used for the following services:
- World-wide repairs (flying squads);
- Repairs and recondition of marinę and industrial machinery;
- Recondition of marinę parts with epoxy composites - Wencon;
- Dry docking arrangements; and
- A full range of ship management and other services. 5. Parties’ Contentions A. Complainant
The Complainant submits that initially, the disputed domain name has been registered by the Complainant’s main shareholder, a German-based company called Phoenix Reederei Bereederungs GmbH & Co. KG, but the disputed domain name has been used by the Complainant for its business. Subsequently, the disputed domain name was transferred onto the Complainant. Next, as put by the Complainant, the Respondent in mid-2011 transferred the disputed domain name onto himself, while being a member of the Board of Directors at that time of the Complainant. The disputed domain name, in the Complainant’s view, is now being unlawfully used by the company Phoenix-Poland Sp. z o. o., which is run by the relatives of the Respondent.
In the above vein the Complainant submits that the disputed domain name is identical or confusingly similar to a trademark of the Complainant since “Phoenix-Polska” is a well-known brand in its sector of activity and the disputed domain name is confusingly similar, because in addition to the name of the Complainant it comprises of the word “Poland” being an English translation of “Polska” used in its name Phoenix Polska Spółka z ograniczoną odpowiedzialnością (“Phoenix Polska Sp. z o.o.”) by the Complainant.
Further the Complainant claims that the Respondent has no right or legitimate interests in respect of the disputed domain name, which is evidenced by the fact that the Respondent transferred the disputed domain name in bad faith, using his trust and powers as a member of the board of the Complainant and he does not use the disputed domain name on his own but enables the company of his relatives to do so.
Finally, the Complainant states that the disputed domain name was registered and is being used in bad faith, because:
- the disputed domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; and
- the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; and
- by using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Complainant submits that it is not prevented by law from bringing this dispute only due to the fact it is in liquidation. The Complainant elaborates that often liquidation proceedings are used as a vehicle to repair a company, and this is the case of the Complainant. Apart from that, the company in liquidation is empowered to perform business activity, if this helps to perform its obligation to settle all the obligations. Furthermore, the Complainant is of the view that restrictions in Polish law bind liquidators only in the internal relations, (i.e. within the company) and anyway, this proceeding counts to the liquidation activities provided in article 282 of the Polish Commercial Partnerships and Companies Code (“CPCC”).
The Complainant also notes that most of the business partners of the Respondent are in fact previous clients of the Complainant, since the Respondent transferred the disputed domain name onto himself.
Furthermore, according to the Complainant there is no need to possess formally registered trademarks under UDRP, and in particular the mark used by the Complainant is a very well-known one. B. Respondent
The Respondent in its Response underlines that the Complainant is a company in liquidation, which entails that under article 282 of CPCC, it is not allowed to perform any activity other than winding up the business. In particular, the Complainant is not legitimate to initiate this dispute. The Respondent denies that the aim of the resolution of the shareholders of the Complainant was to rehabilitate the company, since the resolution expressly provides that the shareholders decided on dissolution of the Complainant. Likewise, the Respondent denies the allegation of the Complainant, wherein the latter declared that the clients of the Respondent are in fact previous clients of the Complainant, since the Complainant, being in liquidation, does not perform any business activities.
Furthermore, the Respondent submits that the Complainant has no registered rights within the Polish Patent Office in the trademark or service mark PHOENIX POLSKA or PHOENIX POLAND. Neither did the Complainant prove the name of the Complainant to be well-known one. This is further supported by the fact that the Complainant does not even possess a logotype.
In the Respondent’s view the mere fact that the disputed domain name uses the word “phoenix” cannot be
regarded as misleading itself. The word “phoenix” is not unique and to the contrary it is commonly used by other business entities acting in Poland and worldwide in different branches. There are at least several other domain names including the word “phoenix” that are registered in Poland. In addition to above the Respondent points out that Google search engine result under the phrase “Phoenix Poland Sp. z o.o” refers directly to that company, and not to the Complainant.
It is also noted by the Respondent that the main shareholder of the Complainant is Phoenix Reederei GmbH and not Phoenix Reederei Beerererungs Gmbh, as stated in the Complaint. Moreover, this main shareholder of the Complainant was not interested in the disputed domain name; thus it was duly transferred to the Respondent. The transaction was made upon directly expressed instruction of the main shareholder of the Complainant. Consequently, the Respondent legitimately acquired rights in the disputed domain name, acting in good faith.
It is the Respondent’s contention that it has rights or legitimate interests in respect of the disputed domain name. On June 3, 2011, the Respondent [acting as the “Registrar”] signed a contract with Phoenix Poland Sp. z o. [acting as the “Applicants”], whereupon, the Respondent assumed obligation consisting in providing the service ensuring the registration of the disputed domain name . By virtue of the contract the registration service should be performed “in the Registrar’s own name, on behalf and for the Applicants’ own account.” In connection herewith, the Respondent was expressly authorized by the Applicants (Phoenix Poland Sp. z o.o.) to act solely for and on behalf and for the Applicants.
The disputed domain name is now being used bona fide for the purpose of performing economic activity by Phoenix Poland Sp. z o.o. Moreover, the Respondent indicated that the company using the disputed domain name comprised of a name directly reflecting the disputed domain name. Therefore, Phoenix Poland Sp. z o.o. makes legitimate and fair use of the disputed domain name.
In addition to the above, the Respondent holds that Phoenix Poland Sp. z o.o. is commonly recognizable in the market, i.e. is the official dealer and service station in Poland for worldwide-known producer of marine engines - Caterpillar. Moreover, Phoenix Poland Sp. z o.o. acquired certificates of quality ISO issued by Germnaischer Lloyd Systems Certification (GLSC), Chester Moleculars and Caterpillar.
The business name – Phoenix Poland Sp. z o.o. – was registered with the Polish National Court Register, i.e. is legally recognized and unique, and no other company in Poland may perform business activity under the same name. 6. Discussion and Findings
The Panel finds that the language of the proceedings is English, being the language of the Registration Agreement.
The Panel finds that the Complainant is legitimate (in the sense that it does have standing under the Policy and Rules) to file the Complaint. Article 282 of CPC refers only to the actions of the business of the company that the liquidators may undertake, whereas the capacity to bring the administrative proceedings is regulated by the Uniform Domain Name Dispute Resolution Policy and the Rules pertaining thereto. The said Rules provide that a complainant means the party initiating a complaint concerning a domain-name registration. From that perspective, there is no need even to prove a legal interest while deciding on the preliminary procedural question on the capacity to bring the proceedings. Of course, the Policy does require that in order to succeed in a dispute a complainant must prove a relevant trademark, and it would typically be necessary to establish standing, to make a claim in this respect in any filed complaint under the Policy and Rules. In any event, this, is turn, shall be relevant for the merits of the claim, which are discussed below.
Paragraph 4(a) of the Policy places a burden on a complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which a complainant has rights; and
(ii) a respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used by the respondent in bad faith.
A complaint may only succeed in these proceedings if the above criteria are met simultaneously. In the present case, this could not be affirmed. A. Identical or Confusingly Similar
The Complainant has proven that the disputed domain name is identical or confusingly similar to the name, trademarks and service marks of the Complainant. The identity or confusing similarity of the disputed domain name to the Complainant’s trademark PHONEIX POLAND is apparent from a simple visual comparison. The disputed domain name is a replica of the Complainant’s mark PHONEIX POLAND, and very similar to the Complainant’s mark PHONEIX POLSKA. Though the Complainant is named Phoenix Polska Sp. z o.o., while the company using the disputed domain name is exactly Phoenix Poland Sp. z o.o., this may be relevant for the assessment of rights or legitimate interests of the Respondent in respect to the disputed domain name.
As a consequence, the Panel finds that the Complaint brought by the Complainant meets the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent is not the Complainant’s licensee in any respect, neither is it authorized to use the Complainant’s marks. However, the mere fact that the Respondent is not authorized by the Complainant to use its trademark, neither is it the Complainant’s licensee, does not preclude the Respondent from having a right or legitimate interest in the disputed domain name.
Under the paragraph 4(C) of the Policy, any of the following particular circumstances (though not limited to these), if found by the Panel to be proved, on the basis of its evaluation of all evidence presented, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of Paragraph 4(a)(ii):
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, despite having not acquired any trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent to use it for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
However, it is for the Complainant, in order to meet the test set out in Paragraph 4(a)(ii) of the Policy, to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is well established that it is relatively difficult for any complainant to prove a negative, in that a respondent has no rights or legitimate interests in a domain name, since for the most part, that information is known to and within the control of the respondent. The complainant albeit is not free from any burden of proof; typically, a prima facie case at least is required in order to pass the border of rebuttal to the respondent Accordingly, the burden on a complainant in respect of this element must, by necessity, be light. However, in the present case it is clear that the Complainant did not even attempt to prove that the Respondent does not have any rights or legitimate interests over the disputed domain name. The Complainant limited its claims to alleging that it holds the right over the disputed domain name. Moreover one needs to agree with the Respondent when saying that the name “phoenix” is used commonly in different branches in order to name different commercial activities.
It is of significant importance that the Respondent proved that it acquired rights over the disputed domain name. Also, it is common between the parties that the disputed domain name is being used by the company named Phoenix Poland Sp. z o.o., which is registered within the Polish National Court.
On the record before the Panel finds that the Complainant has failed to satisfy its burden regarding paragraph 4(a)(ii) of the Policy. This is sufficient to find that the Complaint be denied. C. Registered and Used in Bad Faith
There is nothing in the present case that could justify a claim for the registration and use in bad faith of the disputed domain name.
Paragraph 4(b) of the Policy provides that following circumstances, inter alia, if found to be present, shall be evidence of the registration and use of a domain name in bad faith:
(ii) a respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) a respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
The Complainant failed to prove any of the above requirements. There is no evidence on the record that the Respondent attempted to prevent the Complainant name from reflecting the mark in a corresponding domain name. First there is no evidence that the Respondent has engaged in a pattern of such conduct and secondly there shall be no doubt that it is in the interest of the Respondent, connected with the company Phoenix Poland Sp. z o.o., to own the disputed domain name . This supports the statement that the Respondent did not aim at disrupting the business of the Complainant, but is merely undertaking action aimed at preserving its business. Finally, since the Complainant is in liquidation and hence its activity in market is already strongly limited only to necessary action connected with the liquidation of the company, it cannot be agreed that the Respondent attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark.
The Panel finds that the Complainant has not presented evidence sufficient to establish the registration and use in bad faith of the disputed domain name by the Respondent; therefore, the Panel finds that the Complainant has failed to satisfy its burden regarding paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Piotr Nowaczyk
Sole Panelist
Dated: Februay 20, 2012
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