The Complainant is Zavod za prostorno uređenje Istarske županije (Institute for Physical Planning Region of Istria), Croatia, represented by Vukmir & Associates Attorneys at Law, LLC, Croatia.
The Respondent is Traugott Bonke, Germany.
2. The Domain Name, Registry and RegistrarThe Registry of the disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2021. On December 30, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On January 5, 2022, the Registry transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B (2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 2, 2022. In accordance with the ADR Rules, Paragraph B (3), the due date for Response was March 16, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2022.
The Center appointed Assen Alexiev as the sole panelist in this matter on March 29, 2022. 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 ADR Rules, Paragraph B(5).
4. Factual BackgroundThe Complainant is a public institution tasked with the performance of physical planning activities for the Region of Istria in the Republic of Croatia. It is the lead partner in the European Union-funded regional project “Prostorno uredenje teritorija - unutrasnjost i priobalje lstre - PUT-UP ISTRE” (the “Project”), funded by the Operational Program IPA Slovenia-Croatia 2007-2013. The Complainant has used the Project’s name PUT-UP-ISTRE and graphical representation since at least 2015, including in project documentation, materials and website.
The Complainant was the owner of the disputed domain name between July 30, 2015 and July 30, 2021, when its registration lapsed. The disputed domain name was used for the official website for the Project.
The disputed domain name was then registered by the Respondent on October 10, 2021. It is currently inactive. In late 2021, the disputed domain name resolved to a pornographic website.
5. Parties’ Contentions A. ComplainantThe Complainant states that PUT-UP ISTRE is the acronym of the full name of the Project. It consists of the first letters of the words that make the full name of the Project, and it is at the same time a play with words which in the Croatian language could be loosely translated as “WAY-UP ISTRIA”. The acronym was devised by the Complainant as per Project requirements to have an abbreviated name for the Project, and was used extensively as the name of the Project instead of the full name in all documentation about the Project, on Project brochures and on the Project website, where all the Project documentation was made available, in line with the Project requirements mandated by the EU funding body. The Project materials included a direct reference to the Project website created by the Complainant under the disputed domain name. According to the Complainant, due to the extensive use of the name of the Project and of the disputed domain name under which the Project website was operated by the Complainant for a period of 6 years, the relevant audience has come to identify the name PUT-UP ISTRE and the related logo with the Project and with the Complainant as the Lead partner in the Project.
The Complainant notes that it had been the owner of the disputed domain name for six years when its registration lapsed due to an omission of the Complainant. In October 2021, the Complainant realized that it was no longer in control of the disputed domain name and that it was associated to a pornographic website that also contained pay-per-click (“PPC”) links to other pornographic websites. The Complainant contacted the Registry on October 29, 2021 in an attempt to have the disputed domain name returned to it. In its response, the Registry advised to the Complaint to contact the registrant of the disputed domain name or initiate ADR proceedings. On December 1, 2021, the Complainant sent an email to the Respondent requesting the transfer of the disputed domain name to the Complainant and offering to compensate the Respondent for its documented out of-pocket costs directly related to registration and maintenance of the disputed domain name. The Respondent then deactivated the website at the disputed domain name, but did not respond to the transfer request of the Complainant. On December 14, 2021, the Complainant sent a follow-up email to the Respondent, but it also remained unanswered.
The Complainant states that although it has not registered the sign PUT-UP ISTRE as a trademark, the same enjoys protection as an unregistered trademark or trade name under the Croatian law prohibiting unfair competition. Under Article 64(1) of the Croatian Trade Act, unfair competition includes the advertising or offering goods or services by providing information or using terms that exploit the reputation of another commercial entity, their products or services, or the products of another commercial entity, and the sale of goods with marks, data, or appearance that create or could create confusion as to the source, method of production, quantity, quality or other characteristics of the goods. Pursuant to Article 65 of the Trade Act, the damaged party is authorized to seek protection through court and request compensation of damages caused by an act of unfair competition, while under Article 70 of the Trade Act, unfair competition is legally defined as misdemeanor offense, which is sanctioned by monetary fines of up to HRK 300,000.00.
According to the Complainant, since it has used the name PUT-UP ISTRE extensively in connection to the Project and the relevant audience has come to identify it with the Project, in line with the above provisions of the Trade Act, the Respondent should be prohibited from exploiting the reputation of the name PUT-UP ISTRE for advertising goods and services, as this is an act of unfair competition that is prohibited under the law. Therefore, the Complainant enjoys rights in the name PUT-UP ISTRE under the national law of the Member-State Croatia.
The Complainant states that the disputed domain name is confusingly similar to the name PUT-UP ISTRE in respect of which the Complainant has a right recognized or established by national law of a Member State, because the disputed domain name incorporates the name PUT-UP ISTRE in its entirety. According to the Complainant, the hyphen that is present in the disputed domain name and not in the PUT-UP ISTRE name is to be disregarded when assessing the identity or confusing similarity.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because it is not commonly known by it and does not hold trademark rights in it, and the Complainant has not permitted the Respondent to use the name PUT-UP ISTRE or to apply for or use any domain name incorporating this name. The Complainant maintains that the Respondent has used the disputed domain name for a pornographic website which also contained PPC links to third-party pornographic websites. The Complainant states that the Respondent was thus taking advantage of the name PUT-UP ISTRE in which the Complainant has rights, in order to attract traffic to its website and to make commercial gain, including through the PPC links present on its website.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. According to it, at the time of registration of the disputed domain name the Respondent was aware of the Complainant’s PUT-UP ISTRE name and of the fact that the Complainant was the registrant of the disputed domain name before its expiration in July 2021. The Complainant adds that it would be a too much of a coincidence if the Respondent decided to include name PUT-UP ISTRE name in its entirety and without any modifications in the disputed domain name, without being aware of the Complainant and the name PUT-UP ISTRE in which the Complainant has rights. The Complainant adds that PUT-UP ISTRE is an invented term (abbreviation of the full name of the Project) created by the Complainant for the purpose of the Project, it is not a generic or a dictionary word and does not have any meaning in German or English, and has no connection to the pornographic content for which it was used by the Respondent.
The Complainant submits that the Respondent has chosen to register the disputed domain name upon expiration of its registration by the Complainant as part of the practice known as “domain drop catching” in order to profit from the fact that the name PUT-UP ISTRE is well-known within the relevant audience and is associated with the Project, and by doing so to attract Internet users, for commercial gain, to its pornographic website operated under the disputed domain name, by creating a likelihood of confusion with a name on which a right is recognized or established by the national law of Croatia.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAccording to Article 22(1)(a) of the Commission Regulation (EC) No. 874/2004 (the “Regulation”), an ADR procedure may be initiated by any party where the registration is speculative or abusive within the meaning of Article 21 of the Regulation. Article 21(1) of the Regulation provides that a registered domain name shall be subject to revocation where it is identical or confusingly similar to a name in respect of which a right is recognized or established by national and/or European Union law and where it:
(a) has been registered by its holder without rights or legitimate interests in the name; or
(b) has been registered or is being used in bad faith.
In the present ADR proceeding, the Complainant has pleaded the cumulative existence of the circumstances provided by the Regulation and ADR Rules (points (a) and (b) above). The Panel notes that the Regulation and ADR Rules list the issues under points (a) and (b) in the alternative, but nevertheless the Panel will examine both of these issues in order to reach its decision in the present ADR proceeding.
A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union lawArticle 10(1) of the Regulation provides that “‘Prior rights’ shall be understood to include, inter alia, registered national and community trademarks, geographical indications or designations of origin, and, in as far as they are protected under national law in the Member-State where they are held: unregistered trademarks, trade names, business identifiers, company names, family names, and distinctive titles of protected literary and artistic works.”
The Complainant does not have a registered trademark. It has however shown that it has consistently used PUT-UP ISTRE as the name of the Project since 2015 and that the Project and its implementation have been publicized by the Complainant for a number of years, including through its website at the disputed domain name until 2021, when its registration expired. This satisfies the Panel that the name PUT-UP ISTRE has gained certain reputation as an identifier of the Project implemented by the Complainant. As submitted by the Complainant, Croatian law prohibits the advertising or offering of goods or services by using terms that exploit the reputation of another commercial entity or of its products or services. This satisfies the Panel that Croatian law provides a certain level of protection to the name PUT-UP ISTRE used by the Complainant for the Project implemented by it even though it has not been registered as a trademark, and that this identifier can therefore be regarded as a prior right under the Regulation.
As commonly accepted in many prior cases, the “.eu” country code Top-Level Domain (“ccTLD”) can be disregarded, being a mere technical requirement for registration. The relevant part of the disputed domain name is therefore “put-up-istre”, which reproduces the sign PUT-UP ISTRE almost exactly, the only difference being the insertion of a hyphen between “up” and “istre”. This difference does not prevent a finding of confusing similarity between the name PUT-UP ISTRE and the disputed domain name. It should also be noted that the disputed domain name was initially chosen and used by the Complainant for the website of the Project.
The Panel therefore finds that the disputed domain name is confusingly similar to the name PUT-UP ISTRE for the purposes of Article 21(1) of the Regulation.
B. Rights or Legitimate InterestsUnder the ADR Rules, the burden of proof for the lack of rights or legitimate interests of the Respondent lies with the Complainant. However, the existence of negative facts is difficult to prove, and the relevant information for the Respondent is mostly in its sole possession. Therefore, the Panel holds that it is sufficient that the Complainant makes a prima facie demonstration that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production then shifts to the Respondent to submit appropriate evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, because it is not commonly known by it and does not hold trademark rights in it, and the Complainant has not permitted the Respondent to use the name PUT-UP ISTRE or to apply for or use any domain name incorporating this name. The Complainant maintains that the Respondent has used the disputed domain name for a pornographic website which also contained PPC links to third-party pornographic websites.
The Respondent has not disputed the Complainant’s statements and the evidence submitted by it. It has not alleged having rights or legitimate interests in the disputed domain name.
The evidence submitted by the Complainant shows that the disputed domain name has been used by the Complainant for six years for the purposes of the website of the Project. After its registration by the Respondent, for a certain period of time it resolved to a pornographic website with PPC links to other such websites.
It therefore appears from the evidence as more likely than not that the Respondent has registered and used the disputed domain name targeting the reputation of the name PUT-UP ISTRE as the name of the Project, in an attempt to attract Internet users to it and to offer them pornographic content. Such conduct does not appear as legitimate and does not support a finding that the Respondent has rights or legitimate interests in the disputed domain name.
On the basis of the above, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name for the purposes of Article 21(1) of the Regulation.
C. Registered or Used in Bad FaithUnder Article 21(1) of the Regulation, lack of rights or legitimate interests and registration or use in bad faith are considered alternative requirements for a successful complaint. As the Panel has found that the Respondent lacks rights or legitimate interests in the disputed domain name, no further discussion on bad faith registration or use is necessary.
Nevertheless, as discussed above, it appears as more likely than not that the Respondent has targeted the name PUT-UP ISTRE with the registration of the disputed domain name in an attempt to attract Internet users to the pornographic website that the Respondent associated to it and to redirect them to third-party pornographic websites for commercial gain. The fact that the disputed domain name is currently inactive does not affect this conclusion.
The above is sufficient for the Panel to conclude that the Respondent has registered and used the disputed domain name in bad faith for the purposes of Article 21(1) of the Regulation.
7. DecisionFor the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name
Assen Alexiev
Sole Panelist
Date: April 15, 2022
1 (i) The decision shall be implemented by the Registry within thirty (30) days after the notification of the decision to the Parties, unless the Respondent initiates court proceedings in a Mutual Jurisdiction, as defined in Paragraph A(1) of the ADR Rules.
(ii)As the Complainant is established in Croatia, a Member State of the European Union, it satisfies the general eligibility criteria for registration of the disputed domain name set out in Article 4(2)(b) of Regulation (EC) No. 733/2002 as amended by Regulation (EU) 2019/517.