The Complainant is Trodat GmbH, of Wels, Austria, represented by Salomonowitz and Horak, Austria.
The Respondent is Agustín Aparicio Ortiz of Badajoz, Spain, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Dinahosting s.l. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2017. On December 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 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.
The Complaint was submitted in the English language. The language of the Registration Agreement for the Disputed Domain Name is Spanish. On January 2, 2018, the Center sent a language of proceeding communication in both Spanish and English to the Parties. On January 5, 2018, the Complainant submitted an amended Complaint which includes a request for English to be the language of proceeding. The Respondent did not reply to the Center’s notification or the Complainant’s submission.
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 Spanish, and the proceedings commenced on January 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2018. The Response was filed with the Center on January 29, 2018.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on February 22, 2018. 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 an Austrian company in the business of self-inking stamps. The Complainant has been manufacturing stamps since the early twentieth century. Currently, the Complainant has more than thirty subsidiaries, with more than 1,150 employees worldwide.
The Complainant owns trademark rights for the term TRODAT. The Complainant has provided evidence of the following registrations for its trademarks:
- International Trademark Registration (IR) No. 484432 TRODAT (word), with a registration date of March 30, 1984;
- European Union Trademark (EUTM) No. 003082773 TRODAT (figurative), with the registration date of May 6, 2005;
The Disputed Domain Name was registered on October 31, 2016. According to the evidence submitted with the Complaint, the Disputed Domain Name resolves to a website offering TRODAT-branded stamps and stamps manufactured by other companies. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
Identical or confusingly similar
The Disputed Domain Name uses the Complainant’s TRODAT trademark in its entirety with the generic term “stamp”. The addition of the term “stamp” to the trademark only generates more confusion to Internet users, since the Complainant’s main activity is to produce and market stamps. Thus, the combination of the trademark TRODAT and the generic word “stamp” intensifies customer’s confusion.
Rights or legitimate interests
The Respondent is operating an online store for stamps by numerous manufacturers. The Respondent is, inter alia, offering products by TRODAT’s biggest competitors on the market, “Colop” and “Shiny”. Therefore, the Respondent does not meet the requirements established in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, to establish rights or legitimate interests in the Disputed Domain Name.
The Complainant has not granted any license or other rights to the Respondent to use the trademark TRODAT in the Disputed Domain Name or to register any domain name which incorporates Complainant’s trademark.
Furthermore, the Respondent engaged in a pattern of registering domain names corresponding to stamp marks held by other parties: the domain names and were also registered by the Respondent on the same day as the Disputed Domain Name. These domain names show the same content than the Disputed Domain Name.
The Respondent has no rights or legitimate interests with respect to the Disputed Domain Name.
Registration and Use in Bad Faith
The trademark TRODAT has a longstanding leading position on the market and, as such it is certain that the Respondent was aware of the Complainant’s reputation at the time the Respondent registered the Disputed Domain Name, particularly because the Respondent offers TRODAT stamps for sale. Therefore, it is not possible to conceive of any reason to legitimately register the Disputed Domain Name.
Furthermore, the Respondent has engaged in a pattern of conduct designed to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, by registering the same day, several domains by widely known stamp manufactures and which are TRODAT’s biggest competitors. In addition, the Disputed Domain Name used to belong to the Complainant and because of a technical issue with the Complainant’s spam filter, the domain name was not renewed. Taking advantage of this situation, the Respondent registered the Disputed Domain Name without the knowledge or consent of the Complainant.
Due to this pattern of conduct, it is obvious that the Respondent intentionally created likelihood of confusion with Complainant’s trademarks and websites in order to attract Internet users for his own commercial gain. The use by the Respondent of the Disputed Domain Name is obstructing the Complainant’s business and causing confusion to the general public. B. Respondent
The Respondent did not reply to the Complainant’s contention. The Respondent stated that the Complaint is written in English and that he only speaks Spanish. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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. A. Language of the proceedings
Pursuant to paragraph 11 of UDRP Rules, unless otherwise agreed by the Parties, the language of the proceeding is the language of the registration agreement, subject to the authority of the Panel to determine otherwise. In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.
The Complainant has requested for the proceeding to be conducted in English due to the fact that the Disputed Domain Name uses English language in its notices, menu options and policies. According to the Complaint, this suggests that the Respondent knows English language. Furthermore, the Complainant states that Respondent used the word “stamp” in English in the Disputed Domain Name instead of the Spanish equivalent “sello”. It should be pointed out that the Respondent didn’t make any comment in this regard.
The WIPO Overviewof WIPO Panel Views on Selected UDRP Questions, ThirdEdition (“WIPO Overview 3.0”), section 4.5 states the following: “[…], panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.”
Therefore, taking into consideration the Complainant’s arguments, verified by the Panel, the Panel finds that the language of the proceedings will be English, and that the decision will be rendered also in English. The Panel notes that in any case all of the communications from the Center to the Parties were transmitted in both Spanish and English. B. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark TRODAT, as it is recognizable within the Disputed Domain Name and the addition of the word “stamp” does not change this finding. Furthermore, the term “stamps” describes the product which the Complainant is known for, so the term does not dispel this confusing similarity.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
In light of the contentions set out in Section 5.A of the Decision, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Once this prima facie case has made out, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
“(i.) before any notice to you of the dispute, your use of, demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii.) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii.) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.”
There is no evidence of the existence of any of those rights or legitimate interests in this case. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark. The Complainant has prior rights in the trademark which precede the Respondent’s registration of the Disputed Domain Name by several decades.
The Respondent has failed to show that it has acquired any trademark rights with respect of the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods and services. In this regard, the Respondent’s use of the Disputed Domain Name for an online store for stamps offering the Complainant’s products and its competitors does not constitute either a noncommercial or a fair use of the Domain Name (Policy, paragraph 4(c)(iii)).
The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant has used its trademark TRODAT for stamps for at least 70 years. It has also used this trademark as its company name for almost 50 years. The Disputed Domain Name was registered on October 31, 2016.
The Panel is of the view that the Complainant’s trademarks are well-known and that the Respondent had evidently knowledge of the Complainant and his trademarks when he registered the Disputed Domain Name. Furthermore, the Panel visited the Disputed Domain Name and was able to verify that the Respondent seems to be selling TRODAT stamps in his website and the content simulates an official store of the Complainant. See Trodat GmbH v. Fuat Akkus, Yonkinya,WIPO Case No. D2016−0226; and Trodat GmbH v. Robert Tylka, Tylka / Emma Rogers,WIPO Case No. D2016-2037.
With reference to the use of the Disputed Domain Name, the evidence provided with the Complaint shows how the Respondent operated an online store for stamps by numerous manufacturers, including the Complainant’s competitors such as “Colop” and “Shiny”. The Panel considers the evidence of record sufficient to establish that the Respondent is using the Disputed Domain Name in bad faith.
The circumstances in the case before the Panel indicates that the Respondent was aware of the Complainant’s TRODAT trademark when registering the Disputed Domain Name and it has intentionally created likelihood confusion with Trodat’s trademarks and website in order to attract Internet users for his own commercial gain, as described by paragraph 4(b)(iv) of the Policy.
Therefore, taking all circumstances into account and for all above reasons, the Panel concludes that the Respondent has registered and 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.
Pablo A. Palazzi
Sole Panelist
Date: March 7, 2018
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