WIPO Domain Name Decision DRO2009-0009 for vitex.ro

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Yannidis Brothers SA, and SC Vitex Hermes SRL v. SC IOANNINA PRODUCT SRL Case No. DRO2009-0009 1. The Parties

The Complainants are Yannidis Brothers SA (Complainant 1) and SC Vitex Hermes SRL (Complainant 2), the subsidiary in Romania of the Complainant 1, of Aspropyrgos, Greece and Bucharest, Romania, represented by Iulia Burbea Intellectual Property & Law Office, Bucharest, Romania.

The Respondent is SC IOANNINA PRODUCT SRL of Bucuresti, Romania, represented by Munjea Adrian Gheorghe, 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 August 4, 2009. On August 5, 2009, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the disputed domain name. On August 5, 2009, 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” 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 August 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 7, 2009. The Response was filed with the Center on September 5, 2009.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on September 18, 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.

In connection to the language of these proceedings the Panel finds that:

- the Complainants has filed the Complaint in English;

- following the Language of Proceedings Notification of the Center dated August 10, 2009, the Complainants provided on August 14, 2009 a request for English be the language of the proceedings based on the fact that the administrator of the Respondent is of Greek citizenship and the entire correspondence between the parties is in English,

- the Respondent submitted on September 5, 2009 a Response in the Romanian language,

Based on:

- the Complainants' request for English as the language of the proceedings

- the current circumstances including the existence of correspondence between the parties in English and the non existence on the Registrar's website, at the disputed domain name registration time with RNC.ro (June 28, 2005), of provisions for a domain name applicant to choose between English or Romanian as the controlling language of the registration agreement at this moment (see Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L., WIPO Case No. DRO2006-0001; DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA,WIPO Case No. DRO2006-0003; Companie Générale des Établissements Michelin - Michelin & Cie. v. IPSOS New Media Research SRL,WIPO Case No. DRO2006-0004; Dell Inc. v. C.I.T. GRUP SRL,WIPO Case No. DRO2007-0007)

the Panel concludes that, according to Rules, paragraph 11(b), the language of the proceedings shall be English.

The Complainant submitted on September 20, 2009 a document called Arguments against the response, together with a table reflecting the payment situation of the invoices issued by the Complainants to the Respondent during the agency relationship. The document is an unsolicited statement. Nevertheless, in the view of the fact that the said document does not bring any new facts or statements in connection to these proceedings, the Panel decided to consider it.

On September 25, 2009, the Panel issued the Administrative Panel Order No. 1, by which it requested to both parties to submit the Agency Agreement which was concluded between the two. The deadline for submitting the agreement was set for both parties on September 26, 2009 at close of business. The Complainants submitted on September 25, 2009 clarifications regarding the Agency Agreement by which they state that while an exclusive agency to sell Complainant's products existed this agreement did not extend to registering the Complainant's mark as a domain name. The Respondent submitted its Response on September 28, 2009, long after the stipulated deadline. The Panel however notes that the Respondent's response does not disclose any new documentation that has not already been included in its Response of September 25, 2009 (specifically copies of yearly agreements to nominate the Respondent as the exclusive agent to sell the Complainant's products. 4. Factual Background

The Complainant 1 is the holder of the trademark VITEX in Greece and it has been using this trademark in connection with a wide range of products including in the paint industry and other services in Greece since at least as early as 1960. The Complainant 1 owns also a community trademark, VITEX for goods and services in the classes 1, 2, 3, 4, 16, 17, 19, since 1999 under number 001162940, and different trademarks which include the word “vitex” as community trademarks or through the Complainant 2 in Romania. The Complainant 2 is the subsidiary of the Complainant 1 in Romania established in November 2005.

The Respondent used to be, from 2001 until December 31, 2005, the exclusive agent for Romania of the products produced by the Complainant 1 under VITEX trademarks. 5. Parties' Contentions A. Complainants

The Complainants contend that:

- The disputed domain name is identical with the Complainants' trademarks VITEX,

- The Respondent is not a licensee of the Complainants,

- The Respondent does not make any legitimate use of the disputed domain name for its own commercial or noncommercial activities;

- The Respondent has not been known under the disputed domain name;

- The Respondent knew or should have known of the use of the VITEX trademark prior the registration of the disputed domain name, as it was the exclusive agent of products under VITEX trademarks for the Complainant from 2001 until 2005 and this evidences bad faith registration of the disputed domain name;

- In an attempt to remove the Complainants from the Romanian market, the Respondent has tried to register the VITEX trademark in Romania in 2005, but its application was rejected;

- The Respondent's bad faith is obvious from its conduct in using the trademarks VITEX to promote its own business by misleading the Complainants' clients as to the Respondent's affiliation to the Complainant.

- There are pending litigations between the parties referring to pecuniary claims resulting from the exclusive agency agreement, including an unpaid invoice dating from 2005. B. Respondent

The Respondent states that:

- In its capacity as the exclusive agent of the Complainants in Romania, it has the contractual obligation to promote and protect on its own expense the VITEX trademarks;

- The disputed domain name is confusingly similar with the VITEX trademarks, but the Respondent holds an exclusive right over VITEX trademarks;

- It has a right to use the disputed domain name as it is the owner of it,

- It did not register the disputed domain name in bad faith as it had the contractual obligation to protect and promote the VITEX trademarks in Romania 6. Discussion and Findings A. Identical or Confusingly Similar

The Panel is persuaded by evidence presented in these proceedings that the Complainants are the holders of the VITEX trademarks for different products among including paint, varnishes, lacquers. The trademarks VITEX enjoy protection in Romania and the entire Community territory by means of registration of the word VITEX alone or in verbal or figurative combination with other words. Complainant 2 is the subsidiary of the Complainant 1 in Romania and enjoys also the use of the Complainant 1's trademarks registration.

The disputed domain name is identical and confusingly similar with the Complainants' trademarks as it includes in its entirety the Complainant 1's trademark VITEX, which is also the main verbal element in all other Complainants' trademarks which contain the word “vitex”.

In addition, as it is well established in UDRP cases, the generic top level of a domain name such as “.com” or “.info” 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 the Complainant has established the first element of the Policy. B. Rights or Legitimate Interests

The Complainant asserts that there is no indication of legitimate rights or interests of the Respondent in the use of the disputed domain name by the latter. The Respondent is not known by the disputed domain name and it does not make a legitimate use of the disputed domain name.

The Respondent answers that it registered the disputed domain name while it was the exclusive agent for Romania for the Complainants' VITEX products according to its contractual agency obligations to promote and protect the VITEX trademarks on its own expense.

Nevertheless, according to the Complainants answer to the Administrative Panel Order No. 1, such contract does not exist in a written form. The only evidence of such contract is represented by the written statements made by the Complainant 1 reflecting its designation of the Respondent as its exclusive agent to sell the Complainant's products, renewed each year until 2005.

On the website resolving under the disputed domain name, information is displayed regarding the Respondent and its products. No mention is made either to the VITEX products or to the Complainants.

The majority view of WIPO panels is that, in order to prove the use of a domain name by a reseller to be bona fide offering, such use should pass the Oki Data test (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903):

- Respondent must actually be offering the goods or services at issue.

- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.

- The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.

- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

In this case, the Respondent's conduct does not meet all these factors. The Respondent used to be an authorized seller of the VITEX products when it registered the disputed domain name but there is no evidence that the Respondent was authorized to register a domain name incorporating Complainant's mark. Nevertheless, there is no evidence whatsoever that, at time of registration, the disputed domain name was used to sell only the trademarked goods or that it accurately disclosed the registrant's relationship with the Complainant.

As mentioned above, the Panel finds that on the website resolving under the disputed domain name only information regarding the Respondent and its products is displayed. No mention is made either to the VITEX products or to the Complainants

Considering the above said, the Panel finds that, in these proceedings, the Complainant established a prima facie showing that the Respondent has no rights to or legitimate interests in the disputed domain name. The Panel, referring to the Respondent, has no indication whatsoever of any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Therefore, the Panel concludes that the Complainant has proved the second element of the Policy. C. Registered and Used in Bad Faith

The Complainant asserts that the Respondent has registered the disputed domain name in order to take advantage of the Complainants' trademarks VITEX , as there is no doubt that at the registration time the Respondent knew about the rights of the Complainants in the VITEX trademark, as the exclusive agent for Romania for VITEX products.

It results from the evidence produced both by the Complainants and the Respondent, that the Respondent had known about the rights in VITEX trademark of the Complainant 1 as it was, at that time, reselling the VITEX products. Moreover, the Respondent states in its Response, that it registered the disputed domain name in order to promote and protect the Complainant 1's VITEX trademarks. The Respondent even alleges the existence of a contractual obligation resulting from the agency agreement regarding the promotion and protection of the Complainant 1' s trademarks VITEX.

As mentioned above, there is no such contractual obligation for the Respondent as the agency contract exists only in the form of the Respondent tacit acceptance of the Complainant 1's written statement designating the Respondent as the Complainant's exclusive agent to sell Complainant's products issued for each year starting with 2001 until 2005.

Considering the actual content of the website resolving to the disputed domain name, the Panel is persuaded to find that the intention of the Respondent was not to promote and protect the Complainant 1's trademarks VITEX but rather to benefit from these trademarks in order to promote its own business, by registering the Complainant 1's trademark VITEX as a domain name.

The Panel also notes that registration date of the disputed domain name coincides with the date of damaging of the agency relationship, when the Respondent decided not to pay several invoices to the Complainant 1 and with the date of the Respondent's attempt to appropriate the Complainant 1's trademark VITEX by way of registration with the Romanian State Office for Inventions and Trademarks.

All these circumstances, in the absence of other evidences, are supporting, in the opinion of this Panel, the finding of both registration and use of the disputed domain name 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 2 – SC Vitex Hermes SRL, as requested in the Complaint.

Beatrice Onica Jarka
Sole Panelist

Dated: September 26, 2009

Full & Egal Universal Law Academy