The Complainant is La Fantana SRL of Bucharest, Romania, represented by Cosmovici si Asociatii SRL, Romania.
The Respondent is Admin of Daegu, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Gabia, Inc. (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2017. On February 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 10, 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.
On February 10, 2017, the Center notified the parties in both English and Korean that the language of the Registration Agreement for the disputed domain name was Korean. On February 10 and 13, 2017, the Complainant requested for English to be the language of the proceeding. On February 14, 2017, the Respondent requested for Korean to be the language of the proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint, in both English and Korean, and the proceedings commenced on February 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2017. On March 7, 2017, the Center received an email communication from the Respondent. The Respondent did not however submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on March 10, 2017.
The Center appointed Andrew J. Park as the sole panelist in this matter on March 24, 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, La Fantana SRL, is a service company operating in the field of water bottling and distribution. The Complainant carries out water production and bottling in its own factory and is a member of the European organization for Watercoolers - Watercoolers Europe.
According to the Panel’s independent research, with more than 12 years of expertise, the Complainant is a leader in providing B2B water cooler services in Serbia. It provides integrated services for water and coffee to offices, including delivery of products, installation of devices, instructions for usage, and servicing the devices. The Complainant has over 200 employees in Serbia and more than 11,500 customers - companies, institutions and individuals.
The Complainant has acquired trademark rights to the LA FANTANA and related marks in the European Union, Romania, and Serbia, as follows:
In Romania:
- LA FÂNTÂNA, registered with filing date of September 13, 2000 (Reg. No. M2000/03837).
- LA FANTANA, registered with filing date of March 9, 2005 (Reg. No. M2005/002548).
- LA FÂNTÂNA VINE LA TINE, registered with filing date of August 9, 2005 (Reg. No. M2005/008574).
In Serbia:
- LA FANTANA, registered with the filing date of May 11, 2004 (Reg. No. 50368).
- LA FANTANA, registered with the filing date of July 9, 2008 (Reg. No. 58333).
- LA FANTANA DOLAZI DO VAS, registered with the filing date of December 3, 2008 (Reg. No. 59067).
In the European Union:
- LA FANTANA VINE LA TINE,registered with the filing date of August 28, 2008 (Reg. Nos. 007198054 and 007197891).
The Respondent has not formally responded to the Complaint.
The disputed domain name was registered by the Respondent on November 18, 2007. The disputed domain name resolves to a web page displaying pay-per-click links and offering the disputed domain name for sale. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name should be transferred to the Complainant because:
1) the disputed domain name is identical and confusingly similar to the Complainant’s LA FANTANA trademark and infringes upon the Complainant’s rights in and to the mark. The Complainant insists that the disputed domain name is just an altered form of the Complainant’s trademark LA FANTANA by eliminating the space between “la” and “fantana” and that said difference in spacing does not create any material difference between the disputed domain name and the Complainant’s trademark LA FANTANA.
2) the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent shows no evidence that it has made use of or intends to make use of the disputed domain name in connection with a bona fide offering of goods or services. Further, the Respondent has not developed any business nor engaged in any commercial act using the disputed domain name and the only purpose of its registration of the disputed domain name is to block the rightful owner’s access to this domain name. The Respondent is not commonly known by the disputed domain name, and neither “lafantana” nor “la fantana” have any meaning in the Republic of Korea, where the Respondent is located.
3) the disputed domain name was registered and is being used in bad faith. The Complainant’s trademark, LA FANTANA, was registered in 2000, prior to the Respondent becoming the owner of the disputed domain name in 2007. The Complainant has a great level of notoriety in the market through the use of the trademark LA FANTANA and it is obvious that the Respondent registered the disputed domain name despite being aware of the Complainant’s exclusive rights to the LA FANTANA mark and its global reputation. The Complainant also insists that the Respondent is trying to resell the disputed domain name. The Complainant shows that the first text appearing on the website with disputed domain name is “Click here to buy for your website name.” B. Respondent
The Respondent sent an informal email in Korean quoting the three Policy elements (in Korean and English), and asserting that the Complainant has failed to satisfy the requirements. The Respondent further asserted that given that the disputed domain name was registered 11 years ago, the Complaint is brought in an attempt at Reverse Domain Name Hijacking. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules. In accordance with paragraphs 5(f) and 14(b) of the Rules, if the respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Language of the Proceeding
The Registration Agreement for the disputed domain name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, i.e., Korean. Here, the Respondent advised the Center that he is unable to understand English and therefore does not understand the Complaint. The Center preliminarily accepted the Complaint as filed in English, and has indicated that it would accept a response in either English or Korean, subject to a determination by the Panel pursuant to paragraph 11 of the Rules. Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account:
1) The disputed domain name contains content that is in English and it resolves to a website that includes links in English.
2) The Complainant and the Respondent use different languages; neither of them uses English as its respective native language, and neither understands the language of the other party. .
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint as filed in English; and (2) issue a decision in English. B. Identical or Confusingly Similar
This element consists of two parts; first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.
The Panel finds that the Complainant has established registered rights in the mark LA FANTANA and that the disputed domain name is identical to the Complainant’s trademark LA FANTANA. The elimination of a space between “la” and “fantana” in a domain name is an insubstantial and therefore immaterial distinction.
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is identical to the Complainant’s trademark. C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case.
There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel’s view is that these facts may be taken as true in the circumstances of this case provided that they have not been denied by the Respondent.
The evidence, which is not denied by the Respondent, shows that the Respondent knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s trademark, in order to profit by offering to sell the disputed domain name. The Panel finds that this conduct is evidence of cybersquatting and does not provide a right or legitimate interest in the disputed domain name under paragraph 4(a)(ii) of the Policy (see, e.g., American Automobile Association, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0592).
The Panel agrees with the Complainant that there is no evidence whatsoever that the Respondent is currently using or commonly known by, has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the name “la fantana.”
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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 claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent registered the disputed domain name primarily for the purpose of selling it either to the Complainant or its competitors.
As already mentioned, the Respondent did not file a formal response to the Complaint, and offered no evidence to rebut the Complainant’s allegations of the Respondent’s bad faith registration and use of the disputed domain name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University,WIPO Case No. D2000-0944).
The Panel finds that the Complainant’s registered trademark LA FANTANA is well known, that it has been used for almost 17 years and that it was registered before the Respondent registered the disputed domain name. The disputed domain name is identical to the Complainant’s trademark and the website at the disputed domain name only contains pay-per-click links and only shows the message “Click here to buy for your website name” which obviously shows the Respondent’s intention to resell the disputed domain name.
Accordingly, the evidence, which is not rebutted by the Respondent, shows that the Respondent likely knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s trademark in violation of paragraph 4(b)(iv) of the Policy, and likely also to resell the disputed domain name for valuable consideration in excess of the Respondent’s out-of-pocket costs.
The conduct described above falls squarely within paragraph 4(b) of the Policy and accordingly, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii). 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.
Andrew J. Park
Sole Panelist
Date: April 7, 2017
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