The Complainant is Sail Croatia Adventures Limited, United Kingdom (“UK”), represented by Vukmir & Associates, Croatia.
The Respondent is Sail Croatia Adriatic Adventures d.o.o., Croatia.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2021. On August 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, provided the contact details and informed the Center that the language of the Registration Agreement for the disputed domain name is Croatian. The Registrar also confirmed that it locked the disputed domain name set to expire on November 18, 2021, and that such lock status will remain in place through the remaining pendency of the UDRP proceeding.
On September 3, 2021, the Complainant submitted a request that English be the language of the administrative proceedings.
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, stating among others that “the Complainant has submitted a request that English be the language of the proceedings, to which the Respondent has not replied. Given the provided submissions and circumstances of this case, the Center has decided to: 1) accept the Complaint as filed in English; 2) accept a Response in either English or Croatian. In accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of proceedings”.
The proceeding commenced on September 14, 2021, and in accordance with the Rules, paragraph 5, the due date for Response was October 4, 2021.
On November 11, 2021 the Center renotified the Complaint and granted the Respondent five days (until November 16, 2021) to indicate whether the Respondent wishes to participate in the administrative proceedings. The Respondent sent an informal communication to the Center on November 11, 2021.
The Center proceeded to Panel Appointment on November 22, 2021 and appointed Zoltán Takács as the sole panelist in this matter. 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.
On November 26, 2021, the Center received an unsolicited Supplemental Filing from the Complainant.
4. Factual BackgroundThe Complainant is a UK based company founded in 2005, providing cruising and sailing services – among others – along the Croatian coast.
The Complainant owns a number of trademarks consisting of words Sail Croatia and Sail Croatia Adventures, including:
- the European Union Trademark Registration (“EUTM”) No. 010741511 for the mark SAIL CROATIA ADVENTURES and design element, registered on August 10, 2012, for services in Classes 39, 41, and 43 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks.
The disputed domain name was registered on November 18, 2019, and resolves to the Respondent’s website offering cruising and sailing services in Croatia.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is confusingly similar to its SAIL CROATIA ADVENTURES trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy.
The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent registered the disputed domain name with full knowledge of its trademark rights and is using it to intentionally attract Internet users to its competing web page for commercial gain by creating a likelihood of confusion with the Complainant and its trademark.
The Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant.
B. RespondentThe Respondent is a Croatian company founded in 2014 under the name Marine Tech d.o.o. The sole founder and owner of the Respondent has been Mr. Denis Makaus.
In January 2017, the Complainant and Makaus d.o.o. (another company solely owned by Mr. Makaus) concluded two supplier agreements in dual English and Croatian languages titled “Sail Croatia Supplier Contract” by which Makaus d.o.o. agreed to provide accommodation, meals, facilities, and other services to the Complainant in relation to its cruising and sailing services in Croatia.
In September 2017, the Complainant and Makaus d.o.o. concluded a loan agreement. For securing the Complainant’s monetary claim the parties established a mortgage on one of the Makaus d.o.o.’s vessels. In August 2018, the Complainant filed a motion of enforcement against Makaus d.o.o. in order to recover its monetary claim.
When the Complainant became aware of existence of the disputed domain name it sent warning letters to the Respondent in January and February of 2020. The Respondent did not respond.
In February 2020, the Respondent changed its corporate name from Marine Tech d.o.o. to Sail Croatia Adriatic Adventures d.o.o.
In his November 11, 2021 dated informal letter in the Croatian language sent from the Respondent’s email address to the Center Mr. Makaus requested communication in Croatian, so that they are able to better understand the case.
Mr. Makaus further stated that he is familiar with the Complaint, but completely rejects the possibility that Mr. Grant Sauren (sic) can have exclusive rights over the term “Sail” and even less over the name of his country (Mr. Sauren is the Complainant’s CEO). Mr. Makaus also stated that he obtained the disputed domain name legally, and that in the course of registration of his company named Sail Croatia Adventures d.o.o. he had to obtain a ministerial permit for use of the term “Croatia”. Mr. Makaus finally stated that if anyone granted Mr. Sauren (sic) exclusivity over the term “Croatia”, he would commence any proceedings to contest any such approval.
6. Discussion and Findings 6.1 Expiry of the Disputed Domain NameAccording to the Registrar’s WhoIs, the disputed domain name was set to expire on November 18, 2021.
Paragraph 3.7.5.7 of the ICANN Registrar Accreditation Agreement (RAA) provides, inter alia, that “In the event that a domain which is the subject of a UDRP dispute is deleted or expires during the course of the dispute the Complainant in the UDRP dispute will have the option to renew or restore the name under the same commercial terms as the registrant”.
In its Registrar Verification of August 6, 2021, the concerned Registrar confirmed that a Lock of the domain name was applied and that such Lock status will remain in place through the remaining Pendency of the UDRP proceeding pursuant to Paragraphs 4(a) and 4(b) of the UDRP Rules.
On November 10, 2021, the Center received the following information from the concerned Registrar, which the Center notified to the Parties on November 11, 2021: “GatewayNG will auto-renew the domain (to charge the member) as long as the registry auto-renews it. Since the current domain statuses do not include ‘clientRenewProhibited’, I’d expect the registry to renew it on 2021-11-18.”
For its part the Panel confirms that the public WhoIs data of November 30, 2021, indicated that the disputed domain name that was originally set to expire on November 18, 2021, has been renewed.
6.2 Complainant’s Supplemental FilingOn November 26, 2021, the Center received an unsolicited Supplemental Filing from the Complainant in which it reiterated that the fact that the Respondent conducts its business in English warrants its request that English be the language of the proceeding. The Complainant further stated that it has valid trademark rights in the SAIL CROATIA ADVENTURES trademark and that it is duly and lawfully incorporated under the company name Sail Croatia Adventures Ltd.
Paragraph 12 of the UDRP Rules expressly provides that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case.
UDRP panels have been consistent that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (see section 4.6. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant’s Supplemental Filing basically comments on the Respondent’s November 11, 2021, dated informal communication. The Panel finds reasonable and proportionate to consider the Complainant’s comments on this document that was not available at the time of filing of the Complaint.
However, because there are no new issues brought forward by the Complainant, the Panel is of the view that the Respondent will not be prejudiced if not given opportunity to reply to the Complainant’s comments which merely reply to the Respondent’s own letter setting out its views, and importantly the procedural efficiency will be better served by proceeding to a decision based on the documents at hand.
6.3 Language of the ProceedingPursuant to paragraph 11 of the UDRP Rules, unless otherwise agreed by the parties, the default language of the proceeding is the language of the registration agreement, subject to the authority of the panel to determine otherwise.
The Complaint was filed in English, but the language of the registration agreement is Croatian.
In its Supplemental Filing of September 3, 2021, the Complainant requested that English be the language of the proceeding – among others – for the following reasons:
(i) the Respondent’s webpage is in English; in particular, English is the first language in the “language menu” on the Respondent’s webpage, and even if one presses the “Croatian language button” to obtain the content in Croatian, majority of the content still remains in English and is not translated into Croatian;
(ii) Mr. Denis Makaus, who is the sole owner of the Respondent, has in 2017 on behalf of his other solely owned company Makaus d.o.o. concluded two agreements with the Complainant in dual English and Croatian languages with stipulating English law to govern the agreements and submitting to the exclusive jurisdiction of the Courts of England;
(iii) the disputed domain name is identical to the Complainant’s trademark and consists of English language words “sail”, “adventures”, and “Croatia”;
(iv) the Respondent’s (company) name consist of English language words “sail”, “Croatia”, “Adriatic”, and “Adventures”.
The Complainant contends that these facts and circumstances evidence that the Respondent has adequate knowledge of English language and is able to actively participate in this proceeding if conducted in English.
In addition, the Complainant contends that administration of the proceeding in Croatian would cause delay and significant additional translation costs to the Complainant.
In its Croatian language email communication sent to the Center on November 11, 2021 the Respondent stated that Croatian is the official language of the Republic of Croatia and asked the Center to communicate in Croatian in order that the Respondent is able to better understand what the case is about.
In the Panel’s view it is evident from the evidence submitted by the Complainant that the Respondent has a level of comfort with the English language required to understand the nature of the claims asserted by the Complainant as well as to actively participate in this proceeding if conducted in English. The Respondent has also been given fair opportunity to present its case, either in English or in Croatian, but failed to do so.
Taking into consideration the above the Panel has decided that English shall be the language of the proceeding.
6.4 Substantive IssuesParagraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The overriding objective of the Policy is to curb the abusive registration of domain names in cases where the registrant is seeking to profit from and exploit the trademark of another.
In order to succeed on the complaint a complainant must evidence each of the below three elements required by paragraph 4(a) of the Policy, namely that;
(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.
A. Identical or Confusingly SimilarUnder paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
According to section 1.11.1 of the WIPO Overview 3.0, where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for the purposes of standing to file a UDRP case.
The Complainant produced evidence of having registered rights in the SAIL CROATIA ADVENTURES trademark and for the purpose of this administrative proceeding the Panel finds that the EUTM No. 010741511 (which by the way has been extended to Croatia since becoming Member State to the EU on July 1, 2013) satisfies the requirement of having trademark rights for the purpose of the Policy.
Having determined the presence of the Complainant’s trademark rights, the Panel next assesses whether the disputed domain name is identical or confusingly similar to the Complainant’s SAIL CROATIS ADVENTURES trademark.
According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
According to section 1.11.1 of the WIPO Overview 3.0, the applicable generic Top-Level Domain (“gTLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test.
The Complainant’s trademark consists of the words SAIL, CROATIA, and ADVENTURES followed by a design element which does not convey any relevant information for the purpose of this proceeding. It’s the word components that stand out in the Complainant’s trademark, which the Respondent fully incorporated in the disputed domain name. Dashes between the words in the disputed domain name do not prevent a finding of confusing similarity.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s SAIL CROATIA ADVENTURES trademark and that requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsUnder paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds rights in the SAIL CROATIA ADVENTURES trademark; that the disputed domain name is confusingly similar to its trademark and that the Respondent is not authorized to use its trademark.
In a UDRP proceeding, it is generally understood that it is the Respondent who is in the best position to assert rights or legitimate interests in the disputed domain name (see section 2.1 of the WIPO Overview 3.0).
The Respondent has not provided any evidence or circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to rights or legitimate interests in the disputed domain name.
The disputed domain name is clearly derived from the Complainant’s company name and its trademark, and adopted as a result of the Respondent’s owner’s previous business relationship with the Complainant. This is not bona fide use of the disputed domain name and therefore cannot establish any rights or legitimate interests for the Respondent in relation to the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you have registered or you have 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 complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
With regard to the past business relationship between the Complainant and the Respondent’s sole owner’s other company, it is clear that the Respondent registered the disputed domain name with knowledge of the Complainant’s company name and its trademark.
The timing and circumstances of the registration of the disputed domain name incorporating the Complainant’s trademark, as discussed above in section 5.B., strongly suggest that the Respondent’s primary intent was to capitalize on the goodwill of the Complainant’s trademark and use it in the disputed domain name to intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of such site within the meaning of paragraph 4(b)(iv) of the Policy.
Additionally, by using the disputed domain name to operate a website offering the very services Complainant has offered for over 15 years, the Respondent has actually confused the Complainant’s customers. This in view of the Panel amounts to disruption of business within the meaning of paragraph 4(b)(iii) of the Policy.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
7. DecisionFor 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,
Zoltán Takács
Sole Panelist
Date: December 6, 2021