The Complainant is “AKROSTAL” spółka z ograniczoną odpowiedzialnością of Poznań, Poland, represented by KLJB Leśkiewicz i Wspólnicy sp.k., Poland.
The Respondent is “Multistal & Lohmann” sp. z o.o. of Szczecin and Poznań, Poland, represented by Masiota Adwokaci i Radcowie Prawni, Poland. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2013. On July 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 2013, the Registrar 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 July 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2013. The Response was filed with the Center on August 6, 2013. On August 19, 2013, the Center received a Supplemental Filing from the Complainant. On August 27, 2013, the Center received a response from the Respondent with respect to the Complainant’s Supplemental Filing. Further, on August 29, 2013, the Complainant filed a response to the Respondent’s response to the Complainant’s Supplemental Filing.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on August 15, 2013. 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 a company, registered under the laws of Poland, initially, since 2001, working in a form a civil partnership under the name “AKROSTAL” civil partnership (spółka cywilna) K. Jodko, G. Wilczewski, L. Tabert and subsequently since February 9, 2006 it was transformed into limited liability company called for “AKROSTAL” sp. z o.o.
The verbal trademark was registered by the Complainant in the Patent Office of the Republic of Poland on September 19, 2011 (registration number: 390411, number of protection right: 255041). The AKROSTAL verbal trademark was registered for:
(1) the goods included in the class 6 of the Nice classification (steal sheets, steal wire, steal rope, steal strips, steal or pig iron, band iron, raw or half-processed steal, cast steal).
(2) the services included in the class 40 of the Nice classification (milling, polishing).
From the year 2002 the Complainant has been running its corporate website under the domain name .
The Respondent registered the disputed domain name on November 29, 2006 . The disputed domain is registered by Tucows, Inc., Canada. On the same day (November 29, 2006) the Respondent registered two other domain names using the company name of the Complainant and its trademark, i.e. domains and , which however are not subject to these proceedings. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is identical to its registered trademark. The Complainant pays attention to the fact that the word “Akrostal"” is a fanciful name, and is not a generic word. The name AkrostaL, used by the Complainant within the framework to the business activity run incessantly from the year 2001 and consequently should be subject to protection from unlawful use by the third parties. Moreover, the Complainant notes that the Respondent is the direct competitor of the Complainant on the steal and other metals market.
It is the Complainant’s case that the Respondent has no right, nor legitimate interest in the disputed domain name. The Respondent runs business activity under the company name: “Multistal & Lohmann” sp. z o.o. and it does not possess any legal title, nor any licence provided by the Complainant for the use of the fanciful name AKROSTAL constituting the company name of the Complainant and its verbal trademark. The Respondent is not known by the name Akrostal.
Third, the Complainant stated that the disputed domain name was registered and is being used in bad faith. This is, in the Complainant’s view, evidenced by the fact that during the registration of the disputed domain name: and two remaining domain names: and by the Respondent which took place on November 29, 2006, the Respondent was fully conscious that they were registering the domain names that included the company name of the Complainant AKROSTAL and its verbal trademark. In November 2006, the Complainant and the Respondent knew each other (knew their company names and scope of business) as a result of competing together for some years on the same market. The fact confirming that the Respondent acted in bad faith during the registration of the disputed domain name is the circumstance that it has not been used by the Respondent for an indication of a specific website - it concerns two remaining domains as well. The Respondent registered the hereinabove domain names and bears the costs of their maintenance only to prevent the Complainant, who has the right to use the name AKROSTAL, from registering and using the hereinabove domain names having the most popular extensions (“.com”, .”eu”, “.”).
The Complainant indicates that the passive holding of domain names by the Respondent, especially the disputed domain name is explicitly perceived as acting in bad faith, e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 concerning domain name, Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 decision concerning domain name.
Furthermore the passive holding of three domain names for many years that include the company name of the Complainant Akrostal and that are not used for an indication of specific websites should be treated as an attempt to block the Complainant the access to the market through depriving them of the possibility of use AKROSTAL domain names with the most popular extensions. In the way of thinking of the Complainant, a number of their customers cannot find their website after entering the domain names: , or because they are blocked by the Respondent who has no legitimate interest to these domain names. B. Respondent
The Respondent submits that its company operating under the name Multistal & Lohmann has been operating on the market for many years and it enjoys general recognition among clients and good reputation. It stated that the registration of the disputed domain name itself cannot be classified as the beginning of its use in business activities. Only in a situation where Multistal & Lohmann conducted business activities with the use of a business name/word “AKROSTAL”, it would be possible to conclude that the disputed domain name is used in trade. Moreover, the Respondent conducts its business activities under its own business name, presenting its trade offer on its own website. It does not place the name of “AKROSTAL” on its products.
The Respondent explained that the registration of the disputed domain name was mainly connected with a new project planned by its partners to be implemented due to a thriving business of the company. Ultimately, the project was abandoned and the registered domain names are not used by the Respondent.
The Respondent does not deny the fact of the disputed domain name is identical to the business name of AKROSTAL sp. z o.o. However, the Respondent submits that it is an effect of actions taken by partners of AKROSTAL sp. z o.o. and not of Multistal & Lohmann sp. z o.o. The Respondent further justified that this was due to the fact that Mr. Grzegorz Wilczewski, Mr. Leszek Tabert and Mr. Robert Frąckowiak cooperated with the Respondent for many years, also in the period of development of the company business activities, and as a result, they had general (practically unlimited) access to all the trade and commercial information of the Respondent.
The Respondent represents that it is the sole author of the “AKROSTAL” name, owner of the disputed domain name and at the same time it denies the claims of the Complainant that it has no rights to use the disputed domain name. In order to confirm its argument the Respondent presents the following facts.
Akrostal sp. z o.o. was granted an exclusive right to use the AKROSTAL trademark five years after registration of the domain name by the Respondent. In consideration of the foregoing, the Respondent is of the view that it is the Complainant who violated the rights of the Respondent and not the other way round.
The Respondent denies also the claims of the Complainant regarding the use of the domain name by the Respondent in bad faith. The use by the Respondent of the aforementioned domain name has not been an attempt to make profit by attracting Internet users to the website or any other on-line location of Multistal & Lohmann. Due to the fact that the Respondent has been already dynamically operating on the steel market under the business name of “Multistal & Lohmann” and only with the use of domain name, there are no grounds for claiming that the Respondent's actions are in bad faith. In particular, in consideration of the fact that Multistal & Lohmann sp. z o.o. had enjoyed recognition among clients before Akrostal Sp. z o.o. was established. It is the Complainant who could have an interest in acting to weaken the position of the Respondent on the market. 6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(b) the respondent has no rights or legitimate interests in the domain name; and
(c) the domain name has been registered and is being used by the respondent in bad faith.
A complaint may only be admitted if the above criteria are met simultaneously. A. Identical or Confusingly Similar
First, the Complainant has proven that the disputed domain name is identical to the name and trademarks of the Complainant. Since September 19, 2011, the Complainant hold registration for the trademark in the Patent Office of the Republic of Poland and since February 9, 2006, the Complainant operates as a limited liability company under the name AKROSTAL sp. z o.o.
The confusing similarity of the disputed domain name to the Complainant’s trademark AKROSTAL is apparent from a simple visual comparison. The disputed domain name is a replica of the Complainant’s mark. This is sufficient to satisfy the requirement that the disputed domain name is confusingly similar to a mark in which the Complainant has rights (see also Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 wherein the UDRP panel found that “when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words”).
Second, the fact that the disputed domain name is identical to the Complainant’s mark is also admitted by the Respondent In its Response). .
The Panel therefore finds that the disputed domain name is identical to the Complainant’s trademark and as a consequence, the Complaint brought by the Complainant meets the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
From the evidence submitted before the Panel it is clear that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent is not the Complainant’s licensee in any respect, nor is the Respondent authorised to use the Complainant’s marks. There is no evidence of the Respondent’s use of, or demonstrable preparation 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. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, noting the use of the Complainant’s trademark in the Respondent’s website which does not appear to be for a commercial purpose.
This is also confirmed by the Respondent himself, who clearly stated that is registered the disputed domain name couple of years ago, for the alleged purpose of one its projects, which ultimately was abandoned.
The Panel is not persuaded by the Respondent’s excuse that it is the Complainant using and abusing the Respondent’s right to the name AKROSTAL. Such an allegation is in clear contrast to the protection given by the Nice registration of the verbal trademark AKROSTAL and would violate a right of protection of business names (pol. firma) under art. 43(1) of the Polish Civil Code.
The Panel therefore infers from the documents submitted before it that the Respondent has no serious arguments to prove its rights to, or legitimate interests in the disputed domain name . The Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled. C. Registered and Used in Bad Faith
The Complainant is the owner of the trademark and worldwide known mark AKROSTAL and the owner of the domain name , under which it runs its official website.
Despite the fact that the disputed domain name was registered before the Complainant secured registration for its AKROSTAL trademark, the Panel is persuaded by the evidence of the present case that the Respondent registered and is using the disputed domain name in bad faith. This is noticeable by the fact that during the registration of the domain was registered on November 29, 2006, the parties knew each other very well, cooperated and competed on the same market and had some personal (past) relations between each other. The Panel is therefore of the opinion that the Respondent was aware of the Complainant and that it is clear that the aim of the registration of the disputed domain name was to take advantage of the confusion between the disputed domain name and the Complainant’s rights in AKROSTAL. See Execujet Holdings Ltd. v. Air Alpha America, Inc.,WIPO Case No. D2002-0669 and paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)..
The bad faith use of the disputed domain name evidenced by the fact of its passive holding by the Respondent. The Respondent failed to demonstrate what, if any, project it was planning to run under that domain name. Neither did it provide any proof showing any efforts undertaken in execution thereof. The Panel is therefore persuaded that the Respondent’s excuse was presented solely for the purpose of the defence in the current proceedings. Based on the case record, the Panel finds, that the Respondent registered the hereinabove disputed domain name only to prevent the Complainant from registering and using the disputed domain name.
It is well established, as also pointed by the Complainant, that the passive holding of a domain name by a respondent, can amount to acting in bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
As a result, the Panel finds that the disputed domain name was registered and is used by the Respondent in bad faith and considers the requirements of paragraph 4(a)(iii) of the Policy to be fulfilled. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Piotr Nowaczyk
Sole Panelist
Date: September 3, 2013
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