The Complainant is Elmec România S.R.L. of Bucharest, Romania, represented by Rares Dan & Asociatii, Romania.
The Respondent is Georgian Munteanu of Bucharest, Romania. 2. The Domain Name and Registrar
The disputed domain name is registered with DomainPeople, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2014. On January 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 2014, 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. However, the Registrar also responded that the language of the relevant registration agreement was English. As the Complaint had been submitted in Romanian, on January 31, 2014, the Center forwarded a notice to the Complainant requesting the Complainant to provide (a) evidence of an agreement between the parties that proceedings be in Romanian; or (b) translate the Complaint into English; or (c) submit a request that Romanian be the language of the proceedings. On January 31, 2014, the Complainant submitted a request that the proceedings be in Romanian and providing several arguments. No response to that email was forthcoming from the Respondent.
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 February 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2014.
The Center appointed Marilena Comanescu as the sole panelist in this matter on March 7, 2014. 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 operates retail stores under its COLLECTIVE mark featuring clothing, clothing accessories and footwear from various brand owners, including from UGG AUSTRALIA.
The Complainant holds trademark registrations for COLLECTIVE such as the Romanian trademark No. 116612 registered in 2011 and the Community Trademark registration No. 010520328 registered in 2011, both claiming services in class 35.
The disputed domain name was registered on December 20, 2013 and at the time of filing the Complaint, it was used in relation to a website containing images of the Complainant’s trademark and retail stores and offering for sale goods similar to those offered by the Complainant through its COLLECTIVE retail stores. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its trademark COLLECTIVE, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and uses the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In view of the default and the absence of any reply to the Complaint by the Respondent, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Procedural Issue: The Language of the Procedure
The language of the present procedure is English particularly for the following reasons:
- the language of the Registration Agreement is English;
- there is no evidence before the Panel regarding the Respondent’s nationality;
- there is no agreement between parties regarding the language of the procedure;
- the contact details provided by the Respondent to the Registrar are inaccurate, and therefore the named country can also be a false information;
- the Complainant’s assertions regarding the identity of the content on several websites and the alleged connection between the disputed domain name registrants are not satisfactorily demonstrated before the Panel.
Having in view that the Respondent was properly notified with regard to the present proceedings by the Center in both languages and the Panel is familiar with both Romanian and English, the present Panel shall issue its decision in English but shall not deem necessary to receive the translation of the Complaint in English. B. Procedural Issue: Transfer of the Disputed Domain Name containing a Third Party’s Trademark
The Complainant acknowledges that the disputed domain name contains, in addition to its trademark, a well-known trademark owned by a third party, UGG AUSTRALIA. This fact raises the important procedural issue of whether, in the event the Complaint is successful, there is any impediment to ordering the remedy sought by the Complainant – being, transfer of the disputed domain name to the Complainant.
The majority of the previous UDRP panels dealing with this issue have granted the requested remedy of transfer. See WhatsApp Inc. v. Private Whois , Private Whois and Private Whois ,WIPO Case No. D2012-0674 and the comments thereof.
According to its assertions, the Complainant is one of the authorized retailers of the UGG AUSTRALIA branded goods in Romania.
At the same time, as stated in WhatsApp Inc. v. Private Whois , Private Whois and Private Whois , supra, “Neither the Policy nor the Rules contains a provision that precludes the grant of the transfer remedy in this situation. Furthermore, neither the Policy nor the Rules contains a provision that precludes the third party from bringing an action under the Policy, or under any other applicable law, against the complainant in whose favor an order of transfer is made, in the event that the third party considers the complainant’s holding of the domain name to be in violation of the Policy.”
For all the above, this Panel sees no reason not to make the requested order of transfer of the disputed domain name to the Complainant in the event that the present case meets all the three requirements of the Policy. C. Identical or Confusingly Similar
The Complainant holds registrations for the trademark COLLECTIVE.
The disputed domain name reproduces the Complainant’s trademark together with part of a third party trademark, i.e. UGG, and the generic term “shop”.
The inclusion of a third party’s trademark in the disputed domain name incorporating the Complainant’s trademark in its entirety does not provide sufficient differentiation for a domain name to be considered distinctive from a complainant’s trademark. See F. Hoffmann-La Roche AG v. MEDISOURCE LTD,WIPO Case No. D2009-0990; and Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy,WIPO Case No. D2003-0793.
Further, it is well established that a disputed domain name consisting of a trademark and a generic or descriptive term is confusingly similar to a complainant’s trademark. See, paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Accordingly, this Panel also finds that such variation does not render the overall impression of the disputed domain name being different from the Complainant’s trademark.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. D. Rights or Legitimate Interests
The Complainant asserts that it has given no license or other right to use its trademark, that the Respondent is not commonly known by the disputed domain name and that it has not conducted legitimate business under the name “collective”. In line with the previous UDRP decisions, the Panel accepts that the Complainant has provided a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name and the burden of production shifts to the Respondent.
The Respondent chose not to challenge Complainant’s allegations, there is no evidence before the Panel to support the contrary and therefore the Panel accepts these arguments as facts.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name . E. Registered and Used in Bad Faith
The disputed domain name was registered in 2013 and incorporates the Complainant’s mark registered in 2011 together with the terms “ugg” and “shop”, the Complainant operating retail stores under its mark COLLECTIVE where famous brands, such as UGG AUSTRALIA, are marketed.
Further, the disputed domain name resolves to a website where products similar to those distributed by the Complainant were promoted and containing unauthorized images of the Complainant’s COLLECTIVE mark and retail stores. Furthermore, such website provides false information regarding its holder, an entity allegedly named “CollectiveUGG”, an entity which does not exist on the territory of Romania according to the Complaint. Clearly, the Respondent was intentionally attracting Internet users to its website for commercial gain.
Another sign of bad faith attitude is the addition of two trademarks held by different owners, as noted by the panel in the Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, supra, “Respondent may not want or benefit from the confusion, but it does want the commercial benefit-increased search exposure- that the hyphenated multi-trademark structure affords.(…) Put simply, in order to maximize Internet search exposure, and thereby increase its commercial gain, Respondent has fused together several trademarks that belong to different owners and represent different reservoirs of goodwill.”
The Respondent did not respond to the Complaint, nor provided accurate contact information to the Registrar. Given the other circumstances of the case, such behavior may be considered as further evidence of bad faith in registering and using the disputed domain name.
For the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. 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.
Marilena Comanescu
Sole Panelist
Date: March 17, 2014
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