The Complainant is Dante International S.A. of Bucharest, Romania, represented by Magdalena-Daniela Popescu, Romania.
The Respondent is Irena Tsvetanova of Vidin, Bulgaria, self-represented. 2. The Domain Names and Registrars
The disputed domain names (the “first Domain Name”) and (the “second Domain Name” and together the “Domain Names”) are registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2017. On February 2, 2017, the Center transmitted by email to the Registrar a request for Registrar verification in connection with the Domain Names. On February 3, 2017, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 15, 2017.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2017. The Respondent sent several communications to the Center on February 16, 2017, February 20, 2017, February 25, 2017, February 27, 2017 and March 13, 2017, which will be referred below. The Center notified the Parties the commencement of the Panel Appointment process on March 13, 2017.
The Center appointed Olga Zalomiy as the sole panelist in this matter on March 16, 2017. 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 Romanian company which operates an online retail selling platform for various goods and services since 2001. The Complainant expanded its operations to Bulgaria in 2012. Its brand achieved a significant recognition in the non-store retailing in Bulgaria.
The Complainant owns several trademark registrations for the EMAG trademark, such as European Union Trademark Registration No. 9239191 for the figurative trademark EMAG, registered on May 5, 2012; International Trademark Registration No. 1143314 for the figurative trademark EMAG, registered on June 29, 2012 (covering Bulgaria); International Trademark Registration No. 1132830 for the word mark EMAG, registered on June 29, 2012 (covering Bulgaria) and Bulgarian Trademark Registration No. 67252 for a figurative trademark EMAG, registered on October 10, 2008.
The Complainant registered the domain name in 2008 and since 2012 the Complainant is using it in connection with an online retail selling platform in Bulgaria.
On April 8, 2014, the Complainant mailed a cease and desist letter to the Respondent, which the Respondent refused to accept.
The Respondent registered the first Domain Name on May 29, 2013 and the second Domain Name on June 5, 2014. Both Domain Names resolve to online retail selling platforms for various goods and services in Bulgarian.
In accordance with the evidence in the case file, on May 16, 2012, the Respondent registered a sole owner limited liability company under the name “IRA-DM”. On February 21, 2014, the company name was changed to “EMAG BG COM”. 5. Parties’ Contentions A. Complainant
The Complainant claims that it is a Romanian joint stock company established in 2002 which operates an online retail selling platform for various goods and services. The Complainant claims that it has operated its online marketplace in Romania since 2001 using the domain name and it started to expand its operations to neighboring countries, like Bulgaria in 2012, Hungary in 2013 and Poland in 2015. The Complainant claims that it owns several International Trademark registrations and a European Union Trademark registration for EMAG, which are extended to Bulgaria. The Complainant also contends that it owns a Bulgarian trademark registration for the EMAG trademark dated October 10, 2008, which was assigned to the Complainant on July 25, 2011. The Complainant alleges that in 2008 it registered the domain name .
The Complainant contends that the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant claims that it owns EMAG trademark. The Complainant alleges that the Domain Names incorporate its EMAG trademark in its entirety. The Complainant argues that the suffix “bg” is a mere geographically descriptive term, which is country code top level domain (“ccTLD”) “BG” corresponding to Bulgaria, where both the Complainant and the Respondent operate their online businesses. The Complainant claims that the risk of confusion between the Respondent’s Domain Names and the Complainant’s trademarks and the domain name exacerbated by the fact that the Complainant and the Respondent offer similar services on websites connected to the respective domain names.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant claims that the Respondent has no intellectual property rights that would entitle her to register the Domain Names. The Complainant alleges that it has never authorized the Respondent to use its EMAG trademark and that there is no business or corporate relationship between the parties. The Complainant argues that the Respondent is using the Domain Names, which are similar to the Complainant’s trademarks and the domain name to take advantage from Internet user’s confusion and to divert potential Complainant’s customers to its website. According to the Complainant, such use is not a bona fide use of the Domain Names, but actually serves as a bait to attract customers to the Respondent’s websites.
The Complainant claims that the Domain Names were registered and are being used in bad faith because the Respondent intentionally attempted to attract for commercial gain, Internet users to her websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites.
The Complainant argues that the first Domain Name was registered in bad faith because at the time of its registration, the Complainant had already registered its EMAG trademark and the domain name incorporating the trademark. The Complainant claims that it is likely that the Respondent chose to register the Domain Name instead of the domain name because the latter was no longer available. The Complainant argues that it is not possible that in 2013 the Respondent did not know about the Complainant’s well-known website, which was operating in Romania since 2001 because the Respondent resides in Vidin, a town located on the Romanian-Bulgarian border. The Complainant claims that it started operating an online market place in Bulgaria in September of 2012 and became well-known within a year, which made it easier for the Respondent to begin an identical business under similar Domain Names. The Complainant claims that the Respondent registered the Domain Name in bad faith for the above-mentioned reasons. The Complainant argues that the Respondent changed her company’s name from “IRA-DM” to “EMAG BG COM” in February of 2014 to give legitimacy to her use of the EMAG trademark. The Complainant alleges that the Respondent is using the Domain Names in bad faith because she changed her company name to a name similar to her Domain Names after the Complainant warned her that the use of the Domain Name violated the Complainant’s rights. The Complainant claims that the Respondent is using the Domain Names to direct to websites, which are similar in the look and feel to the Complainant’s websites and the Domain Names are used for online marketplaces similar to those of the Complainant, to divert potential buyers from the Complainant. B. Respondent
The Respondent did not submit a formal response to the Complaint. Instead, the Respondent sent several communications to Center with an almost identical content, which can be summarized as follows: the Respondent claims to have a right to use the Domain Names because the Domain Names are similar to the name of her company “EMAG BG COM”.
On February 16, 2017, the Respondent sent a communication to the Center, which reads as follows:
“Hello! What respondent [sic] tries to steal our two sites and domains! That cant [sic] happen! I am sending you two attachments show [sic] my right to use both domain and legally. If they want to buy two domain sites, and the company cost for this is 1 million Euros! Everything else is ordinary theft and will be decided in court!” and “In attachment [sic] I send [sic] you documents that we are the rightful owner of these domains. Have a nice day!”.
With its communication, the Respondent filed two unsigned documents from a Bulgarian translator, which appear to be translations from Bulgarian into English of a document from the Ministry of Justice Registry Agency. The document states that the agency confirms that EMAG BG COM is a sole owner limited liability company located at an address in Vidin, Bulgaria. Another unsigned document appears to be a letter from the Respondent whereby she relies on a Bulgarian law for the proposition that the owner of the EMAG BG COM has a right to use the name of her company in connection with her website “www.”. Original documents in Bulgarian were not submitted.
On February 20, 2017, the Respondent sent another communication to the Center, which reads as follows:
“In attachment [sic] I send [sic] you documents that we are the rightful owner of these domains. Have a nice day!”
The same two documents that we attached to the February 17, 2007 communication were attached to the February 20, 2017 communication.
On February 24 2017, the Center received a communication sent by the Respondent on February 20, 2017 in the following terms:
“Hello. I learned that against me complained [sic] about the use of domain EMAG-BG.Com [sic] Please contact me by e0mail to send you [sic] all the necessary documents for use of the domain name to find out that I got wires [sic] to use it. I will send documents [sic] for legal registration of my company and conditions of use [sic] of the domain. Thank you [sic] expect an answer!
On February 27, 2017, the Center received another communication from the Respondent, to which the Respondent attached the same two documents. The body of the email contained no text.
In response to the Center’s March 13, 2017 notification of the Respondent that the deadline for response was on March 8 and that the Center proceed with the Panel appointment process, the Respondent sent a communication, to which the Respondent attached the same two documents that the Respondent transmitted earlier. The body of the email contained no text. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Names:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)). A. Identical or Confusingly Similar
To prove the first UDRP element, the Complainant must show that the Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights. Here, the evidence shows that the Complainant has trademark rights in “emag” by virtue of its registrations of the EMAG trademark in many countries, including Bulgaria, the country of the Respondent’s residence.
The Complainant contends and the Respondent does not dispute that the Domain Names incorporate the EMAG trademark in its entirety. The only difference between the Domain Names and the Complainant’s EMAG trademark is the addition of a hyphen in the first Domain Name as well as addition of the country code “bg”, corresponding to Bulgaria, followed by the generic Top-Level Domain (the “gTLD”) “.com” in both Domain Names. It is well-established that the gTLD is generally disregarded under the confusing similarity test for purposes of the UDRP1 and that the addition of “geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP”2 . The Panel, therefore, accepts that the Domain Names are identical or confusingly similar to the Complainant’s EMAG trademark.
The Complainant has proved the first UDRP element. B. Rights or Legitimate Interests
To prove the second UDRP element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in respect of the domain name and, once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence it has rights or legitimate interests in the domain name3 . Where the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.4
Here, the Complainant contends that the Respondent has no rights or legitimate interests in the Domain Names. The Complainant claims that the Respondent has no intellectual property rights that would entitle her to register the Domain Names. The Complainant alleges that it has never authorized the Respondent to use the EMAG trademark and that there is no business or corporate relationship between the parties. The Complainant argues that the Respondent is using the Domain Names, which are similar to the Complainant’s EMAG trademarks and the Complainant’s domain name to take advantage from Internet user’s confusion and to divert potential Complainant’s customers to her websites. According to the Complainant, such use is not a bona fide use of the Domain Names, but actually serves as a bait to attract customers to the Respondent’s websites. The Panel accepts that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names and the Respondent now must demonstrate her rights in the Domain Names.
Pursuant to paragraph 4(c) of the UDRP, the Respondent may establish that it has rights or legitimate interests in the Domain Names by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Domain Names, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent appears to claim that she has a right or legitimate interests in the Domain Names because she uses the Domain Names in connection with websites operated by a limited liability company named EMAG BG COM. The Respondent alleges that she is the sole owner of EMAG BG COM. The Respondent appears to contend that, because her company name is similar to the Domain Names, she has a legitimate right to use the company name in the Domain Names.
The Panel finds that the Respondent failed to establish rights or legitimate interest in the Domain Names. Because the Respondent is the single member of a company with the name identical to the Domain Names and, she would normally have been considered to be commonly known by the Domain Names. However, in this case, it appears that the Respondent changed the initial name of her company to one which resembles the Domain Names in an attempt to “legitimize” her operations. As it was stated in Neteller plc v. Prostoprom,WIPO Case No. D2007-1713, “the better interpretation of Paragraph 4(c)(ii) is that, to come within the safe harbor of that provision, a respondent (or his/her organization or business) must have been commonly known by the at-issue domain at the time of registration.” Therefore, to come within the safe harbor of the paragraph 4(c)(ii) of the UDRP, the Respondent must have been known by the Domain Names at the time of their registration.
The evidence on record demonstrates that this was not the case. At the time of the first Domain Name registration, the Respondent’s company was named “IRA-DM”. That company name was changed only in February of 2014. By that time, the Complainant had been in the online retail market business in Romania for 13 years and has already occupied 50% of the Bulgarian online retail market. Evidence demonstrates that by the time of the registration of the second Domain Name, the Complainant had owned two EMAG trademark registrations in Bulgaria as well as the domain name connected to the Complainant’s online business. Even in the unlikely scenario that the Respondent, who resides in a town located on the Bulgarian-Romanian border, did not know about the Complainant’s business in Romania, she should have known about the Complainant’s business in Bulgaria. Therefore, the Panel finds it likely that the Respondent changed her company name from “IRA-DM” to “EMAG BG COM” to trade on the Complainant’s reputation and in an attempt to “legitimize” her operation of the competing businesses. The Respondent’s failure to rebut this allegation is telling.
The Panel finds that the Respondent failed to establish that she has rights or legitimate interests in the Domain Names.
The Complainant has satisfied second element of the UDRP. C. Registered and Used in Bad Faith
Under the third UDRP element, paragraph 4(a)(iii), the Complainant is required to prove that the Domain Names were registered and are being used in bad faith.
The Complainant contends that the Respondent registered and used the Domain Names in bad faith. The Complainant argues that the first Domain Name was registered in bad faith because at the time of its registration, the Complainant had already registered its EMAG trademark and its domain name , incorporating the trademark. The Complainant claims that it is likely that the Respondent chose to register the Domain Name instead of domain name because the latter was no longer available. The Complainant argues that it is not possible that in 2013 the Respondent did not know about the Complainant’s well-known website, which was operated in Romania since 2001 because the Respondent resides in Vidin, a town located on the Romanian-Bulgarian border. The Complainant claims that it started operating an online market place in Bulgaria in September of 2012 and became well-known within a year, which made it easier for the Respondent to begin an identical business under similar Domain Names. The Complainant claims that the Respondent registered the Domain Name in bad faith for the above-mentioned reasons. The Complainant argues that the Respondent changed her company’s name from “IRA-DM” to “EMAG BG COM in February of 2014 to make apparent legitimacy of her use of the EMAG trademark.
The Respondent does not provide any specific response to the Complainant’s allegations. The Panel, reviewing the record in the light most favorable to the Respondent, finds that it is more likely than not that the Complainant’s allegations are true.
As discussed in more details in the previous section, the Panel accepts that it is more likely than not that the Respondent knew about the Complainant’s trademark at the time of the registration of the first Domain Name. The Complainant began using the EMAG trademarks in Romania in 2001 – 12 years before the first Domain Name was registered. It is likely, that the Respondent, who resides in a town located on the border between Romania and Bulgaria, knew about the Complainant’s EMAG trademark. The Complainant registered its EMAG trademarks and the domain name and began using them in Bulgaria prior to the Respondent’s registration of the first Domain Name. The evidence shows that the Complainant’s mark quickly achieved recognition and began occupying a prominent place in Bulgaria. Given the Complainant’s prior use of the EMAG trademark in the Bulgarian market and its significant use of the EMAG trademark in the neighboring Romanian market, it is likely that the Respondent knew about the Complainant’s trademark and registered the Domain Names with the Complainant’s trademark in mind.
In deciding whether the Domain Names were registered in bad faith, the Panel comes to a conclusion that the Respondent registered the Domain Names to target the Complainant’s mark. The Panel concedes that the term “emag” may be descriptive alleging that “e” in the term would stand for electronical market, “mag” stands for “magazine”, which means “store” in Bulgarian, and “bg” is identical to the country code for Bulgaria. Therefore, the Panel considered a possibility that the Respondent may have chosen to register the first Domain Name because of its descriptiveness of her services. In such situation, “the answer to the “bad faith” question generally depends on whether the respondent has targeted the Complainant or its mark, seeking to trade off the goodwill the Complainant has established in its mark, or whether the respondent has merely chosen the disputed domain name because of its attraction as a descriptive phrase or expression.”5
Here, it appears that the EMAG trademarks have acquired distinctiveness through their extensive use in commerce for over a decade by the Complainant in Romania, so that they are immediately recognizable to consumers as being associated with the Complainant and its businesses. As previously discussed, the Respondent’s place of residence makes it plausible that she had known about the Complainant’s trademarks and business. Taken into account the evidence of the Complainant’s online market position in Bulgaria and resemblance between the Complainant’s and the Respondent’s websites, and the Respondent’s lack of a substantive response to the Complainant’s allegations, it is likely that the Respondent registered the first Domain Name to target the Complainant or its mark.
Furthermore, the Complainant claims that in December of 2013 its employee had a phone conversation with the Respondent’s husband whereby he was informed that the operation of the “www.” website infringed the Complainant’s trademark. The Complainant contends that the Respondent changed her company name from “IRA-DM” to “EMAG BG COM” with the full knowledge of the Complainant’s rights in the EMAG mark. It is likely that, because the Respondent knew about the Complainant’s rights in the EMAG trademark, she refused to accept courier delivery of the Complainant’s April 8, 2014 cease and desist letter. Two months later, the Respondent registered the second Domain Name with full knowledge of the Complainant’s marks and business. The Respondent did not dispute this contention.
It is undisputed that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of said websites. The evidence shows that the Respondent is using the Domain Names to direct to websites, which are similar in the look and feel to the Complainant’s websites and are intended for competing business to Complainant’s. It is therefore likely that the Respondent is using the Domain Names to divert the Respondent’s customers and derives financial gain from her activities. The Panel finds that the Respondent registered and is using the Domain Names in bad faith.
The Complainant has satisfied third element of the UDRP. 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 Domain Names and be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: March 29, 2017
1 Paragraph 1.2., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
2 Paragraph 1.9., WIPO Overview 2.0.
3 Paragraph 2.1., WIPO Overview 2.0.
4 Paragraph 2.1., WIPO Overview 2.0
5 World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642
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