The Complainant is Castrol Limited of Wiltshire, United Kingdom of Great Britain and Northern Ireland, represented by BP Group Trade Marks, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Nicolae Ganea of Malmoe of Sweden. 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 January 10, 2011. On January 11, 2011, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the disputed domain name. On January 12, 2011, RNC.ro transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 18, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 18, 2011.
The Center verified that the Complaint together with the amended 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 January 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2011.
The Center appointed Mihaela Maravela as the sole panelist in this matter on March 9, 2011. 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. Language of the proceedings
As regards the question of the language applicable to this dispute, 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.”
RNC.ro has informed the Center that the language of the relevant registration agreement is Romanian.
As the Complaint had been submitted in English, on January 10, 2010, the Center forwarded a notice to the parties stating that the Complainant should (a) provide evidence of an agreement between the parties that proceedings be in English; (b) translate the Complaint into Romanian; or (c) submit a request that English be the language of the proceedings. On January 18, 2011 the Complainant filed a request that the language of the proceedings be English.
Although properly notified, at the contact details provided by the registrar, in both languages on the commencement of the proceedings, the Respondent chose not to object the Complainant’s request that English be the language of the proceedings and not to participate in the proceedings.
In accordance with previous decisions (see e.g., 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; Alphyra Romania S.A. v. Redpoint Software Impex S.R.L.,WIPO Case No. DRO2008-0001; Advanced Micro Devices, Inc. v. Softconcept SRL, Suciu Alexandru,WIPO Case No. DRO2008-0002; SC Tip Top Food Industry SRL v. S.C. WEB4COMM SRL/ web4COMM S.R.L. Romania,WIPO Case No. DRO2008-0013; Symantec Corporation v. SC SOFTCONCEPT S.R.L.,WIPO Case No. DRO2008-0014), the Panel determines according to the Rules under paragraph 11(a) that the language of these proceedings be English for the following reasons:
- The Center sent all the communications in both languages, Romanian and English. Further, the Center specifically advised the Respondent that if no objections were filed until January 23, 2011 it shall be proceeded on the basis that the Respondent had raised no objections to the Complainant’s request that English be the language of the proceedings;
- At the registration date of the disputed domain name - January 1, 1996 (according to the concerned registrar’s verification reply) - there were no possibility for a domain name applicant to choose between English or Romanian as the controlling language of the registration agreement, as other Panels found in other previous cases (see Symantec Corporation v. SC SOFTCONCEPT S.R.L.,WIPO Case No. DRO2008-0014 and the decisions cited therein);
- Despite the fact of being properly notified, the Respondent did not provide any Response and did not file any objection to English as the language of these proceedings;
- The Respondent was party to other cases solved under the Policy (e.g. Skandia Insurance Company Ltd v. Nicoleae Ganea,WIPO Case No. DRO2008-0009; Billa Aktiengesellschaft v. Ganea Nicolae,WIPO Case No. DRO2002-0001), where the language of the proceedings was English. 4. Factual Background
The Complainant in this administrative proceeding is Castrol Limited, a company part of the Castrol group of companies which has been selling lubricants under the Castrol brand for over 100 years and is one of the world’s leading manufacturers of lubricants and related products to the automotive, industrial, marine and energy markets around the world.
The Respondent in this administrative proceeding is Nicolae Ganea and the disputed domain name was registered on January 1, 1996. 5. Parties’ Contentions A. Complainant
The Complainant contends that it owns numerous trade mark registrations for the trademark CASTROL worldwide. These include the Romanian trade registration no. 13016 and 1507. CASTROL products are widely available in Romania and the public are likely to be aware of the CASTROL trade mark both through contact with CASTROL and the advertising of the brand. As a result of the use and promotion of the CASTROL trademark in Romania the trademark has become well known in Romania. The disputed domain name is identical to the Complainant’s trade mark CASTROL.
The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent is not commonly known by the name CASTROL, and there is no evidence that the Respondent has used, or made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods and services.
Also, the Complainant contends that the disputed domain name was registered and is being used in bad faith because it is implausible that the Respondent was not aware of the Complainant’s trademark CASTROL when he registered the disputed domain name, and that the Respondent has not used or undertaken any demonstrable preparations to use the disputed domain name in relation to a bona fide offering of goods or services. The Complainant also argues that the effect of the Respondent’s registration of the disputed domain name was to prevent the Complainant reflecting its CASTROL trademark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct, registering domain names corresponding to well-known trademarks. Also, the Respondent failed to respond to the request of the Complainant to voluntarily transfer the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.
Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel must find that the Complainant has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark.
Here, the Complainant has proved it has rights in the Romanian trademark No. 013016 for the mark CASTROL from December 1, 1981, in the Romanian trademark No. 001507 from April 6, 1988, prior to the registration of the disputed domain name.
The question of resemblance for the purpose of the Policy requires a comparison of the disputed domain name to the trademark rights which have been proved.
Here, the disputed domain name fully incorporates the Complainant’s prior trademark CASTROL. It is well accepted that a country-code top-level domain, is to be ignored when assessing identity or confusing similarity of a trademark and a domain name (See, e.g. VAT Holding AG v. V,WIPO Case No. D2000-0607; Billa Aktiengesellschaft v. Ganea Nicolae,WIPO Case No. DRO2002-0001; Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L.,WIPO Case No. DRO2006-0001; Auchan v. Web4comm Srl Romania,WIPO Case No. DRO2005-0001).
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by a panel, may demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of WIPO panelists concerning the burden of establishing lack of rights or legitimate interests in respect of a domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.)
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. (See, e.g., Barbara Brennan Inc. v. Texas International Property Associates,WIPO Case No. D2008-0351; Sanford Winery Company v. Matt Geiser,WIPO Case No. D2008-0210). The Complainant alleges that the Respondent’s only reason in registering and using the disputed domain name is to prevent the Complainant to reflect its CASTROL trademark in a corresponding domain name.
By not submitting a Response, the Respondent has failed to invoke any circumstances, which could demonstrate any rights or legitimate interests in the domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a number of circumstances that shall, in particular but without limitation, be evidence of registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant who is the owner of the trademark, or to a competitor of the Complainant, for a valuable consideration in excess of the Respondents documented out-of-pocket costs directly related to the domain name.
(ii) Circumstances indicating that the Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct.
(iii) Circumstances indicating that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the said website location or of a product or service on that website location.
However, the requirement of the Policy of a domain name “being used in bad faith” is not limited to positive actions (see, e.g. Beiersdorf AG v. Web4comm Srl Romania,WIPO Case No. DRO2005-0002). In this particular case, the following actions are considered as further evidence of registration and use in bad faith:
- The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name,
- The Respondent has not contested any of the allegations made by the Complainant,
In the Panel’s view, any use of the disputed domain name would likely lead the public to the conclusion that it, and its connecting websites, is associated with the Complainant.
Also, the passive holding of the disputed domain name by the Respondent for more than 15 years since its registration together with the circumstances of the case represent, in the opinion of the Panel, bad faith registration and use (see also Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L., WIPO Case No. DRO2006-0001; Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055).
The Respondent was found engaged in cybersquatting in other WIPO cases. E.g. See Skandia Insurance Company Ltd v. Nicoleae Ganea,WIPO Case No. DRO2008-0009; Billa Aktiengesellschaft v. Ganea Nicolae,WIPO Case No. DRO2002-0001). This is UDRP indicative of the Respondent’s cybersquatting, and it is widely accepted that the Policy, applicable to this case has specifically been designed to resolve abusive registration of trademarks as domain names (see Société BIC v. LaPorte Holdings, LLC,WIPO Case No. D2005-0342). The Respondent has been involved in numerous such attempts and consequently condemned by various “panels, which in this Panel’s view amount to the Respondent being engaged in a pattern of conduct sanctioned by paragraph 4(b)(ii) of the Policy and with that the Panel finds that the Complainant has made out the third element of the Policy (paragraph 4(a)(iii). See also NBTY, Inc. v. LaPorte Holdings,WIPO Case No. D2005-0835.
In light of these particular circumstances, the Panel concludes that the Respondent has registered the disputed domain name in bad faith and that Respondent’s passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name “is being used in bad faith” by the Respondent. 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.
Mihaela Maravela
Sole Panelist
Dated: March 23, 2011
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