WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kabushiki Kaisha ASICS v. SC Gaticonstruct
Case No. DRO2008-0010
1. The Parties
The Complainant is Kabushiki Kaisha ASICS, Japan, represented by Baker & McKenzie Amsterdam N.V., Netherlands.
The Respondent is SC Gaticonstruct, Ramnicu Valcea, Romania.
2. The Domain Name and Registrar
The disputed domain name is registered with RNC.ro.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2008. On July 3, 2008, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the disputed domain name. On July 8, 2008, RNC.ro 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 Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 15, 2008.
The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on August 27, 2008. 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.
The Panel notes that while the registration agreement appears to be available on-line in both English and Romanian, the Registrar has advised that the language of the Registration Agreement for the disputed domain name is Romanian. The Panel further notes that the Complaint has been submitted in English and that the Complainant has requested and provided arguments that the language of proceedings be English.
The Respondent uses the English language to offer the domain name for sale (as evidenced by Annex VIII to the Complaint), which is an indication that the Respondent is likely familiar with English. In addition, following the proper notification of the proceeding to the Respondent, the Respondent has not filed a Response.
Having considered all the circumstances of the case, the Panel is satisfied that English is an appropriate language for use in these proceedings, and that the Respondent will not be disadvantaged by such use.
4. Factual Background
The Complainant is a Japanese corporation established in the 1970’s and became a worldwide manufacturer and distributor of, inter alia, sportswear, apparel and equipment.
The Complainant is the owner of the well-known ASICS trademark, registered in almost all of the countries of the world, including Romania. The first registration of an ASICS trademark in Romania is dated from December 14, 1981 for classes 18, 25, and 28.
The disputed domain name was registered by the Respondent on January 23, 2007. The Respondent is a Romanian company, Gaticonstruct SRL, whose second field of business includes, inter alia, the manufacturing and sale of leather apparel and footwear.
5. Parties’ Contentions
A. Complainant
The Complainant contends:
- the disputed domain name is identical with the ASICS trademarks registered all over the world, including Romania;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name, as it is not using the disputed domain name for any bona fide offering of products;
- in addition, the Respondent has offered the disputed domain name for sale for as much as 10,000 Euros;
- the disputed domain name was registered and is being used in bad faith as the Respondent had constructive knowledge and actual knowledge of the Complainant’s trademark at the time of its registration of the disputed domain name and is actually taking advantage of the well-known ASICS trademarks;
- the Respondent did not answer the cease and desist letter sent to it by the Complainant.
B. Respondent
The Respondent did not file a Response or otherwise reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The record shows that the Complainant holds registrations worldwide in the mark ASICS (alone or with other elements, verbal and combined).
These registrations serve as conclusive evidence of Complainant’s exclusive rights in the mark for the goods and services listed in the registrations.
The Complainant contends the disputed domain name is identical to the ASICS trademarks of the Complainant, as it incorporates in its entirety the trademarks of the Complainant.
The Panel does not further discuss the differences between the disputed domain name and the Complainant’s trademark namely because the addition of a specific top level domain name suffix, i.e., “.ro”, which is without legal significance and certainly does not render the disputed domain name different from the Complainant’s trademark.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark ASICS.
B. Rights or Legitimate Interests
From the record, the Respondent does not appear to have rights or legitimate interests in respect of the disputed domain name, and has not been authorized by the Complainant to use its mark ASICS.
From the record, the Respondent does not appear to have been known by the disputed domain name.
The Respondent is not using the disputed domain name for a bona fide offering of any products or services and no evidence of preparation for such an offering has been presented. In fact, the disputed domain name is offered for sale for an amount which appears to be for valuable consideration in excess of the Respondents out-of-pocket costs directly related to the disputed domain name.
These circumstances and the fact that one of the Respondent’s secondary objects of activity are in the same field as that where the Complainant operates and is well-known is a strong indication that the Respondent has no rights or legitimate interest in the disputed domain name, and the Panel so finds.
C. Registered and Used in Bad Faith
The circumstances of the case strongly indicate also that the disputed domain name was registered in bad faith and is being used in bad faith, as follows:
There is little doubt that the Respondent had actual knowledge about the Complainant’s trademarks ASICS when registered the disputed domain name. The ASICS trademarks have been registered all over the world, including Romania, for a long time.
In light of existing domain name registration regulations and the body of Policy-based administrative decisions, the Panel considers that before registration of a domain name there exists a reasonable due diligence obligation of the registrant to check whether the domain name to be registered infringes a third party’s trademark rights. In this case the exercise of such due diligence would have revealed the existence of the Complainant’s ASICS trademarks and the potential for infringement of such trademarks rights by registering a domain name comprising this trademark.
Further, the offer for sale of the disputed domain name for sale for 10,000 Euros, an amount which clearly appears to be valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name, in the present circumstances, gives rise to a clear case of bad faith use under the Policy.
Having considered the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Beatrice Onica Jarka
Sole Panelist
Dated: September 10, 2008
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