The Complainant is Frumecar, S.L. of San Ginés (Murcia), Spain, represented internally.
The Respondent is Intercont, S.R .L. of Iasi, Romania, represented by Mrs. Doina-Laila Giurcanu, Romania. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with RNC.ro (“Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2010. On August 18, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 19, 2010, the Registrar 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”).
On August 24, 2010 the Center forwarded a notice to the Complainant stating that the Complainant should either: (a) provide evidence of an agreement between the parties that the proceeding should be in the English language; or (b) translate the Complaint into Romanian; or (c) submit a request for English to be the language of the proceedings. On August 31, 2010, the Complainant requested an extension of time to submit a Romanian translation of the Complaint and on August 31, 2010 the Center granted the Complainant 14 days to translate the Complaint into Romanian. On September 13, 2010 the Complainant filed a Romanian translation of the Complaint. 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 September 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2010. The Response was filed with the Center on October 1, 2010.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on October 12, 2010. The Panel finds that it was properly constituted.
On October 20, 2010, the Complainant filed with the Center supplemental submissions in reply to the Respondent's Response and on October 21, 2010 the Panel accepted the Complainant's supplementary submissions. Language of the proceedings
The Panel notes that paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Although the Registrar informed the Center that the language of the relevant registration agreement was Romanian, the Panel considers that the language of the present proceedings should be English, mainly because an applicant for the registration of a domain name with RNC.ro has no choice between the Romanian and English language as both may be legitimately used under the terms of the applicable RNC.ro rules for registration. By registering the Domain Name with RNC.ro, the Respondent accepted the use of both languages in dealing with the Domain Name. In addition, both the Respondent’s Response and the Complainant’s supplementary submissions were filed solely in the English language, which indicates that both parties understand the English language.
In the circumstances, the Panel determines under paragraph 11(a) of the Rules that the language of these proceedings be English. 4. Factual Background
The Complainant is a Spanish company which supplies machinery and technology to the concrete industry. The Complainant the owner of two trade mark registrations in Spain as well as a Community Trade Mark (CTM) registration for the FRUMECAR mark, which cover inter alia, metallic silos, metals, other alloy components, transportable metallic buildings, industrial machinery, machines and machine tools, vehicles, building construction.
The Respondent registered the Domain Name on May 18, 2007. As at the date of the Complaint, the Domain Name was pointed to a parking page featuring the Complainant’s FRUMECAR trade mark indicating that the website is under construction (the “'Website”). The Website also contains contact details for “Frumecar Romania”, being identical to the contact details of the Respondent.
On September 5, 2008, the Complainant entered into an agreement for representation and trade agency with SC Forum Invest SRL (“Forum Invest”) whereby Forum Invest was to assist the Complainant with the sale of a concrete batching plant. The agreement commenced on September 5, 2008 and terminated upon payment of the commission payable by the Complainant to Forum Invest under the agreement. The agreement did not contemplate the use of the FRUMACAR trade mark by Forum Invest. Neither party has provided evidence relating to the relationship between the Respondent and Forum Invest. The Respondent made reference to having “ceded usage of the domain name” to Forum Invest and both parties refer to the Forum Invest and the Respondent interchangeably. From this it is assumed that Forum Invest is a related company of the Respondent. However, the exact relationship between the Respondent and Forum Invest is unclear from the evidence and the submissions of the parties. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
(a) the Domain Name is confusingly similar to the Complainant’s FRUMECAR trade mark.
(b) the Respondent registered and used the Domain Name with knowledge of the Complainant and its FRUMECAR trade mark;
(c) the Complainant and the Respondent had a temporary collaboration whereby the Respondent was to distribute the Complainant’s goods, but this relationship was terminated in 2008;
(d) the Respondent is using the Domain Name in bad faith as evidenced by the association between the FRUMECAR trade mark and the Respondent;
(e) the Respondent commercialises products which are directly competitive to the Complainant’s and the association on the website to the FRUMECAR trade mark will mislead consumers as to the origin of the goods;
(f) the Complainant did not consent to the Respondent using its FRUMECAR trade mark in a domain name in Romania or elsewhere;
(g) the Complainant has not provided the Respondent data or other content for use on the Website; and
(h) the representation and agency agreement entered into between the parties is exclusively limited to the sale of a concrete batching plant. B. Respondent
The Respondent’s contentions can be summarized as follows:
(a) the Respondent ceded use of the domain name to Forum Invest (a company that collaborated with the Complainant);
(b) the Website was constructed with full knowledge and approval of the Complainant’s legal representative and the Website was operated by Forum Invest for two years without objection from the Complainant;
(c) the content for the Website was provided by the Complainant; and
(d) the Complainant offered to purchase the Domain Name and consequently the Respondent offered to sell the Domain Name to the Complainant for EUR 20,000. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the FRUMECAR trade mark on the basis of the three trade mark registrations owned by the Complainant for FRUMECAR, including the Community Trade Mark registration, which as of January 1, 2007 (the date of Romania’s accession to the European Union) extended to cover Romania.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain name extension, in this case “.ro” should be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Panel notes that the Complainant’s CTM trade mark registration for FRUMECAR is a composite word and device mark (featuring the stylised word “FRUMECAR” along with a device featuring two letter “F”s), and this is the form that the trade mark is displayed on the Complainant’s website. While the Domain Name is therefore not identical to the Complainant’s trade mark, this is of no practical significance given that it is not possible for domain names to include design elements, and Internet users seek websites by typing in familiar words or names: Park Place Entertainment Corporation v. Mike Gorman, WIPO Case No. D2000-0699.
The Panel considers that the word “frumecar” is the distinctive and dominant portion of the Complainant’s trade mark and is the term that consumers would likely use when referring to the Complainant. The Panel finds that the Domain Name is identical to the dominant portion of the Complainant’s FRUMECAR trade mark and Internet users who are familiar with the Complainant’s trade mark would be likely to assume that the Domain Name is related to the Complainant in some way. See Mentor ADI Recruitment Ltd (trading as Mentor Group) v. Teaching Driving Ltd., WIPO Case No. D2003-0654.
The Panel accordingly finds that the Domain Name is confusingly similar to the FRUMECAR mark in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that the evidence submitted by the Respondent is insufficient to show that the Respondent has any rights in any trade marks or service marks which are identical, similar or related to the Domain Name. Therefore, the Panel will assess the Respondent’s rights in the Domain Name (or lack thereof) based on the Respondent’s use of the Domain Name in accordance with the available record.
The Respondent contends that the as part of the commercial agreement with Forum Invest, the Complainant authorised the use of the FRUMECAR trade mark for the Domain Name. The Complainant denies that it provided any such approval or authorisation to use the FRUMECAR mark. The only evidence provided to the Panel in this respect is the agency agreement between the Complainant and Forum Invest, which is limited to a single transaction and which does not contemplate Forum Invest’s use of the FRUMECAR mark.
Based on this, the Panel accepts that the Complainant has not authorised the Respondent to use the FRUMECAR trade mark and that any connection that may have existed between the Complainant and the Respondent by virtue of the Complainant’s agreement with Forum Invest (the nature of which is unclear based on lack of evidence) was restricted to commercial distribution of a concrete plant and did not confer a right for Forum Invest (or the Respondent) to use the FRUMACAR trade mark. The Panel further accepts that there is insufficient evidence of record that the Respondent has become commonly known by the Domain Name.
Accordingly the only way for the Respondent to acquire rights or legitimate rights in the Domain Name for the purposes of 4(a)(ii) of the Policy would be through use of the Domain Name for legitimate noncommercial purposes or in connection with a bona fide offering of goods or services.
The Panel notes that the Domain Name was registered by the Respondent prior to the registration of the Complainant’s FRUMAECAR community trademark. However, the Complainant had applied to register its FRUMECAR community trade mark prior to the Respondent’s registration of the Domain Name and held two Spanish registrations for the FRUMECAR mark for a number of years prior. In any event, by the Respondent’s own admission, it was aware of the Complainant’s FRUMECAR trade mark when registering the Domain Name.
At the time of the Complaint, the Domain Name resolved to a website which was under construction. The Website contained contact details identical to those of the Respondent, while referring to the Respondent as “Frumecar Romania”. In addition, the Website contained numerous representations of the Complainant’s composite word and device trade mark along side the words “concrete plant”, “mixers” and “automation”. The fact that the Respondent refers to itself as Frumecar Romania and lists products similar to the Complainant, while using identical device and word marks would suggest that the Website was being used in order to create an impression of association or affiliation with the Complainant, its marks and the goodwill attached to them. Using a domain name to intentionally trade on the fame or reputation of another constitutes unfair use, and cannot amount to a bona fide offering of goods or services: Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”, WIPO Case No. D2000-0847.
The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the Domain Name. C. Registered and Used in Bad Faith
Evidence of bad faith includes actual or constructive notice of a well-known trade mark at the time of registration of a domain name by the respondent. See Samsonite Corporation v. Colony Holding, Claim No. FA94313 (Nat. Arb. Forum April 17, 2000). By the Respondent’s own submissions, it was aware of the Complainant and its FRUMECAR trade mark at the time of registering the Domain Name.
The Panel finds that there is insufficient evidence of record that the Complainant authorised the registration of the Domain Name by the Respondent and therefore rejects the Respondent’s submission that the Domain Name was registered in good faith.
According to the Respondent’s own submissions, it continues to hold the dormant Website with a view to publish negative statements about the Complainant and its business. This clearly shows an intention to disrupt the business of the Complainant due to bad feelings as a result of the termination of a commercial relationship between the parties. This is certainly not consistent with using the Domain Name in good faith.
It is also relevant to the issue of bad faith that the Respondent offered to sell the Domain Name to the Complainant for an amount exceeding the Respondent’s out of pocket expenses in relation to the Domain Name. While the Complainant did not refer to this offer in its Complaint or submit any evidence suggesting that such an offer was made by the Respondent, the Respondent submitted that it offered to sell the Domain Name to the Complainant for EUR 20,000. The Panel rejects the Respondent’s submission that this amount is only intended to cover its expenses. It is well established that the offer to sell a domain name in excess of the out of pocket expenses of the respondent can be compelling evidence of bad faith. See The Board of Regents of the University of Nebraska v. Bill Saedlo,WIPO Case No. D2000-0154; and Adamovske Strojirny v. Tatu Rautiainen, WIPO Case No. D2000-1394.
The Panel also finds that the Respondent, in reproducing the Complainant’s word and device mark and in referring to itself as “Frumecar Romania”, is attempting to attract Internet users to the Website by creating a likelihood of confusion with the Complainant’s FRUMECAR trade mark as to the source, sponsorship and affiliation of the Website and with a view to attracting business from the Complainant’s potential customers due to a perceived connection with the Complainant.
In the circumstances, the Panel finds that there is no basis on which to infer that the Respondent has used the Domain Name in any manner or for any purpose other than in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied. 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.
Gabriela Kennedy
Sole Panelist
Dated: October 26, 2010
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