The Complainant is Sport and Fashion Management PTE. LTD. of Moscow, Russian Federation, represented by Sergey N. Cherepok, Russian Federation.
The Respondent is Domain Administrator, Name Administration Inc. (BVI) of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland,, represented by John Berryhill, Ph.D., Esq., United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Uniregistrar Corp (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 15, 2015. On July 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 17, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 20, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 24, 2015.
The Center verified that the Complaint together with the 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 July 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response August 16, 2015. The Response was filed with the Center August 16, 2015.
The Center appointed Christopher J. Pibus, Irina V. Savelieva and Pablo A. Palazzi as panelists in this matter on September 16, 2015. The Panel finds that it was properly constituted. Each member of 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 appears to be an assignee of the Russian Trademark Registration for TORNEO & Design under Registration No. 214265 dated August 19, 1999 for games, toys; gym and sports goods. The Complainant has entered into a license agreement with a retailer called Sportsmaster Ltd., which operates more than 450 stores in over 150 cities in the Russian Federation, Kazakhstan, Belarus, Ukraine and China. The Complainant's licensee sells sports footwear, apparel, accessories and equipment under different trademarks including the TORNEO trademark.
The disputed domain name was registered on September 28, 1999. The disputed domain name resolves to a website which provides links to third party websites. 5. Parties' Contentions A. Complainant Confusingly Similar
The Complainant submits that it owns a trademark registration in the trademark TORNEO dated August 19, 1999 under Russian Registration No. 214265 for games, toys; gym and sports goods.
The Complainant further contends that the disputed domain name is identical to the Complainant's registered TORNEO & Design trademark, as it consists entirely of the distinctive word "torneo".
Accordingly, the Complainant contends that the disputed domain name is confusingly similar to the Complainant's registered TORNEO trademark. Rights and Legitimate interests
The Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain name . The Respondent is not commonly known by the name "Torneo", and has never been authorized or licensed by the Complainant to use this name or mark. The Complainant further contends that the Respondent has not used the disputed domain name in a bona fide offering of goods or services. The Complainant contends that the Respondent could not have been unaware of the rights held by the Complainant and urges the Panel to assume that the Respondent's intention in registering the disputed domain name was to sell the disputed domain name to the Complainant for monetary gain. Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith because (i) the Respondent could not have been unaware of the Complainant's registered trademark rights in TORNEO, when the Respondent registered the confusingly similar disputed domain name; and (ii) the Respondent registered the confusingly similar disputed domain name for the primary purpose of reselling it in a manner contrary to the Policy. B. Respondent
The Respondent submits that the word "torneo" is the common Spanish and Italian word for "tournament". The Respondent further contends that it registered and has used the disputed domain name for more than a decade as a paid advertising search term for subjects related to the common meaning of the word, namely "tournament".
In terms of ownership, the Respondent also submits that there is no evidence in the form of an assignment or otherwise to the Complainant, proving that the registration for the TORNEO trademark is properly owned by the Complainant. A proper chain of title has not been shown in the evidence as filed.
The Respondent further contends that the Complainant has not furnished any evidence in these proceedings that it actually makes or sells any products bearing the registered TORNEO trademark, as shown in the Trademark Registration No. 214265. The evidence relating to the licensee's activities does not show any sales, advertising or promotion of products under the TORNEO mark.
The Respondent submits that the word "torneo" is in fact a generic term, and as such the Complainant cannot claim monopoly rights in the word. There are a number of other trademark registrations in many jurisdictions which include the word "torneo" as an element of a trademark, owned by a wide variety of registrants. As such, consumers and Internet users are accustomed to encountering a variety of users of the word "torneo" in its common sense, and as part of commonly adopted trademarks.
The Respondent asserts that it was unaware of the Complainant and the Complainant's trademark rights prior to this dispute.
In these circumstances, the Respondent is entitled to register and use the generic word "torneo" for the purpose of providing advertising search terms related to the word "tournament", as it has for many years. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad. A. Identical or Confusingly Similar
In light of the findings on bad faith, it is not necessary for the Panel to rule on the first element. B. Rights or Legitimate Interests
In light of the findings on bad faith, it is not necessary for the Panel to rule on rights or legitimate interests. C. Registered and Used in Bad Faith
Upon review of the Complaint materials, the Panel finds that the Complainant does provide some evidence of use of the TORNEO mark in association with sporting equipment through its licensed retail stores and on websites at "" and "". However, the Panel is not convinced that the evidence as filed supports a finding of reputation in the TORNEO & Design trademark beyond the jurisdictions of the Russian Federation, Kazakhstan, Belarus, Ukraine and China. Therefore, the Panel is not prepared to question the Respondent's statement that it was not aware of the TORNEO mark. Accordingly, the Panel accepts the Respondent's evidence on this point.
Further, the Panel acknowledges the Respondent's evidence to the effect that the word "torneo" is the common Italian and Spanish word for "tournament", which supports the Respondent's contention that the word "torneo" is primarily generic in nature.
The Panel also takes into consideration the fact that the Respondent has owned and used the disputed domain name for over a decade, and during that time has continuously used the disputed domain name without objection as a parking site that provides links to third party websites. The Respondent properly points out that pages from its website (associated with the disputed domain name) actually display links to other websites with content related to tournaments, specifically soccer tournaments. These links are obviously based on the generic meaning of "torneo"; there is nothing on the Respondent's website connected to, or suggestive of, the Complainant's products or business.
Accordingly, the Panel finds that the Complainant has not satisfied the requirements under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Presiding Panelist
Irina V. Savelieva
Panelist
Pablo A. Palazzi
Panelist
Date: October 23, 2015
Full & Egal Universal Law Academy