WIPO Domain Name Decision DRO2009-0007 for nilfisk.ro

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Nilfisk-Advance A/S v. SC Getic Decor SRL Case No. DRO2009-0007 1. The Parties

The Complainant is Nilfisk-Advance A/S of Brondby, Denmark, represented internally.

The Respondent is SC Getic Decor SRL of Bucharest, Romania. 2. The Domain Name and Registrar

The disputed domain name is registered with Romarg SRL Auto. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2009. On June 8, 2009, the Center transmitted by email to Romarg SRL Auto a request for registrar verification in connection with the disputed domain name. On June 11, 2009, Romarg SRL Auto transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 15, 2009. The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2009. The Response was filed with the Center on July 9, 2009.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on July 24, 2009. 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 finds that the language of the present proceeding should be English, although the Registrar of the disputed domain name has informed the Center that the language of the relevant registration agreement was Romanian.

The Panel concludes that, according to Rules, paragraph 11(b), based on the circumstances of this case, the language of the proceedings shall be English for the following reasons:

- The Complainant requested for English to be the language of the administrative proceedings based on the following reasoning:

1. English was the language of the pre-Complaint correspondence, without protest from the Respondent,

2. English is obviously not unknown to the Respondent, as the current screen print of the website with the disputed domain name attached to the Complaint is in English,

3. English is a standard language in the Internet field, according to item 10 from the Rules of Registration concerning the registration of domain names in Romania,

4. The Respondent's action has been in bad faith.

- On July 9, 2009, the Respondent filed with the Center a statement in English language by which it asserts legitimate rights to using the NILFISK trademark;

- The statement is an indication that the Respondent is familiar with English language;

- In said statement, the Respondent does not oppose that English be the language of the proceedings;

- According to Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004: “Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” 4. Factual Background

The Complainant is a world-wide manufacturer of household, commercial and professional cleaning machines and equipment ranging from household vacuum cleaners, all kinds of scrubber/dryers to road sweepers, with approximately 5000 employees and a turnover in the first quarter of 2009 of Euro 173.000.000.

The Complainant is the owner of trademark NILFISK, which is registered nationally in 56 countries and regionally in EU in 27 countries. The first Danish registration date is November 26, 1910 and the national Romanian registration date is April 9, 1989.

The trademark NILFISK was created as a telegram address of the original company name FISKER&NIELSEN.

The Complainant has registered the the term “nilfisk” as a domain name in 61 level variants and the term “nilfisk” in combination with other elements in 237 variants.

The Respondent registered the disputed domain name on July 22, 2008, and since then the website to which the domain name resolves to, has been under construction. 5. Parties' Contentions A. Complainant

The Complainant contends that:

- The disputed domain name is identical with its trademark NILFISK;

- The Respondent has no rights nor legitimate interests in the disputed domain name as initially it showed the logo and photos of the Complainant's products, creating the impression that the Complainant owns the website under construction;

- Even in the case of a possible arrangement to sell the Complainant's products, there was no authorization whatsoever to register the Complainant's trademark as domain name;

- The disputed domain name was registered and is used in bad faith, as the Respondent knew or should have known that NILFISK trademark belongs to the Complainant;

- The intention of the Respondent, while registering and using the disputed domain name is obvious; the Respondent is intentionally attempting to attract for commercial gain Internet users to its website;

- The Respondent never replied to the letters sent by the Complainant, who tried to solve the dispute informally, but the Respondent changed the appearance of the website under the disputed domain name from the initial appearance, when it was showing the logo and photos of the Complainant's products. B. Respondent

The Respondent sent to the Center a simple email communication with no attachments stating the following:

“In this way we would like to inform you that at the date of the purchase of the domain name we are not aware of this belonging to another legal person in Romania or in another country. SC GETIC DÉCOR is a company that exists on the Romanian market since 2001. In 2003, it started its activity in the field of trade and service of professional cleaning equipments. We can prove with documents that in this period of time we have sold on the Romanian market including Nilfisk equipments that were bought from several dealers. We can demonstrate that we have ongoing contracts with multinational companies that service professional cleaning equipments, including Nilfisk. We would like to mention that until now we haven't taken into consideration Nilfisk's intercession because we consider it to be offensive and incongruent to EU's laws as they have proposed to us to buy the domain name. Also we can prove that we have a collaboration and Nilfisk offers from one of your dealers. We demonstrate with documents that the current Nilfisk dealers have been our employees and that we have trained and specialized them for this job. With the hope of a good understanding of our situation and a possible collaboration.

Sincerely yours,

Bogdan Luta” 6. Discussion and Findings A. Identical or Confusingly Similar

The Complainant is the owner of the NILFISK trademark, registered in several countries including Romania since 1989.

The Respondent registered the disputed domain name which includes in its entirety the Complainant's trademark NILFISK and it adds only the specific top level domain “.ro”.

The Panel finds that the disputed domain name is identical with the Complainant's trademark NILFISK.

It is well established that the specific top level of the domain name such as “.com” or “.ro” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to a trademark (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. & Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488; Auchan v. Web4comm Srl Romania,WIPO Case No. DRO2005-0001; and OSRAM GmbH, v. web4COMM SRL Romania, WIPO Case No. DRO2005-0004).

For these reasons, the Panel finds that the Complainant has established the first element of the Policy. 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 NILFISK.

In its email communication, the Respondent is contradicting itself by saying that when buying the disputed domain name it was “not aware of this belonging to another legal person in Romania or in another country”, while a few lines later it states that it “can prove with documents that in this period of time we have sold on the Romanian market including Nilfisk equipments that were bought from several dealers”.

Moreover, the Respondent is stating that it had “a collaboration and Nilfisk offers from one of NILFISK dealers”; a relation which could be demonstrated with documents, but no evidence was provided to the Panel. The Panel finds such undocumented statements unconvincing in the circumstances of this case.

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, as from the date of registration until today the website to which the disputed domain name resolves is under construction.

In these circumstances, and in light of the Panel's finding below, the Panel finds that the Respondent has no rights or legitimate interests in the domain name and the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith

The Complainant contends that the Respondent knew or should have known about the Complainant's trademark when it registered the disputed domain name.

As considered above, the Respondent in its email communication first denies that it knew about the Complainant's trademark NILFISK when it registered the disputed domain name, while later recognizes that the company Getic Décor SRL started its activity in the field of trade and service of professional cleaning equipments since 2003, and again a few lines later it states that it used in its activities also Nilfisk equipment. The disputed domain name was registered in 2008. From the Respondent's argument, the Panel can draw only the conclusion that the Respondent knew about the Complainant's trademark NILFISK at the time it registered the disputed domain name.

As to bad faith the record presented by the Complainant shows the initial appearance of the website to which the disputed domain name resolves to. The Panel notes that even though the website with the disputed domain name was under construction, the website did display the Complainant's logo and trademark and equally disclosed the Respondent's contact details. As such, the Panel finds that it was the intent of the Respondent to take advantage of the Complainant's trademark by registering the disputed domain name. In this sense, the Panel agrees with the Complainant that, the intention of the Respondent, while registering and using the disputed domain name was to intentionally attempt to attract for commercial gain Internet users to its website.

The Panel further notes that after the Complainant sent several letters to the Respondent in an attempt to solve amicably the matter, the website at the disputed domain name was altered to refer merely to “under construction”. It is the opinion of the Panel that this further indicates the bad faith of the Respondent.

Moreover, the Panel finds the lack of reply of the Respondent to the letters sent by the Complainant may also be considered a further indication of bad faith.

Even though in some circumstances the simple maintenance of a website as a site “under construction” may not represent in itself indication of a respondent's bad faith, see Rádio Globo S.A. v. The Paradigm Corporation,WIPO Case No. D2000-1704, the Panel finds, based on the overall circumstances of this case that both the registration and use of the disputed domain name have been in bad faith.

For these reasons, the Panel finds the Complainant has established the third element of the Policy. 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: August 6, 2009

Full & Egal Universal Law Academy