The Complainant is Valtra Oy Ab of Suolahti, Finland, represented by AGCO Ltd, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Narcis Somesfalean of Cluj Napoca, Romania, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with ROTLD. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2013. On March 22 and 26, 2013, the Center transmitted by email to ROTLD a request for registrar verification in connection with the disputed domain name. On March 27, 2013, ROTLD transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on April 8, 2013.
On April 4, 2013 the Center notified the Parties that the Complaint was filed in English but that, according to the information received from ROTLD the language of the Registration Agreement is Romanian. Accordingly, the Complainant submitted a request for English to be the language of the proceedings on April 5, 2013. The Respondent replied on April 9, 2013. The Center thus informed the Parties that it would send all case-related communications in both English and Romanian, that it would accept a Response filed in either language, and that the language of the proceeding would be decided by the Panel once appointed.
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, in Romanian and English, of the Complaint with the amendment to the Complaint, and the proceedings commenced on April 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2013. The Response was filed in English only on May 1, 2013.
The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on May 10, 2013. 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.
On May 16, 2013, the Complainant submitted Supplemental Fillings. 4. Factual Background
Valtra Oy Ab and Valtra Inc are Finnish subsidiaries of AGCO Corporation, a global manufacturer of agricultural machinery and equipment.
The Complainant is the holder of multiple countries trademark registrations for VALTRA. The Complainant is the holder of the VALTRA Community trademark no. 005455175 which was registered on August 24, 2007.
The Complainant is the holder of multiple domain name registrations containing its trademark VALTRA.
The Complainant concluded with Valtec Tractoare Transilvania SRL a Distribution Agreement on May 9, 2003, which was terminated in June 2010.
The disputed domain name was registered on February 18, 2003 by an individual Narcis Somesfalean, with his address in Cluj Napoca, Romania. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
- The disputed domain name is identical to the Complainant’s trademark VALTRA.
- The Respondent was the Managing Director of the Valtec Tractoare SRL.
- Valtec Tractoare SRL had been an official distributor for Valtra Inc in Romania from 2003, based on a Distribution Agreement concluded between the two companies.
- The said distribution contract was terminated on June 1, 2010.
- At the termination of the Distribution Agreement, the Complainant asked the assignment of the disputed domain name back to the Complainant, which was refused by the Respondent.
- The disputed domain name is now directed to a website owned by Valtec Tractoare Transilivania SRL, which is a member of the Valtec Group, which is, as the Complainant, a manufacturer of tractors under the trademark VALTEC.
- The disputed domain name is now attracting customers and directing them to a competitor of the Respondent.
- The Respondent has no rights or legitimate interests in respect of the trademark VALTRA, or the disputed domain name .
- The Respondent registered the disputed domain name in bad faith, contrary to the terms of the Distribution Agreement and is using the disputed domain name in bad faith to attract potential customers to its website.
- The Respondent has refused to transfer the disputed domain name back to its rightful owner Valtra Oy Ab. B. Respondent
By its Response, the Respondent requests the Panel to deny the remedies requested by the
Complainant, because the Complainant did not prove, beyond any reasonable doubt, that the disputed domain name was registered in bad faith.
By its Response, the Respondent:
- agrees that the disputed domain name is identical to the Complainant's trade mark, but contends that the Complainant's trademark was not in force when the disputed domain name was registered and at that time, the Respondent didn’t have any opposition from the Complainant;
- states that as Managing Director of Valtec Tractoare Transilvania SRL, he used all his efforts to develop the VALTRA brand in Romania and the market share, the disputed domain name , becoming active on June 13, 2003 by a Marketing Agreement concluded between the Respondent and Valtec Tractoare Transilvania SRL;
- states that Valtra Oy Ab was not incorporated as company at the moment of the Distribution Agreement’s signature, the date of the incorporation of the said company being December 12, 2003;
- states that the Respondent had and has rights to use the disputed domain name according to the Marketing Agreement signed between the Respondent and Valtec Tractoare Transilvania SRL;
- states that Valtra Oy Ab gave to Valtec Tractoare Transilvania SRL the full rights to use the disputed domain name starting with the Distribution Agreement’s signature in order to promote Valtra products in the Territory;
- states that Valtec Tractoare Transilvania SRL and Valtra Oy Ab have overdue unpaid amount of money according to the Marketing Agreement in amount of EUR 169,733.00;
- states that the Respondent has the right to hold the disputed domain name until the complete payment of the Marketing Agreement amount will be effective in the Respondent’s Bank Account, according to the Romanian Law;
- states that Valtra Oy Ab should undertake any legal proceedings in the Court of the Distributor's domicile, according to article 17.3 from the Distribution Agreement, which clearly stated that WIPO is not the competent authority to solve the domain name dispute referring to ;
- states that the Distribution Agreement was terminated on June 1, 2010 and the Respondent didn’t use the disputed domain name for any commercial gain misleadingly to divert customers or affecting VALTRA trademark;
- states that the Complainant and the Respondent at the time of registration of the disputed domain name were not competitors;
- states that the Respondent researched VALTRA trademark existence before registration of the disputed domain name, as stated in Article 3 from the Registration Agreement, and the registration did not infringe legal rights of others;
- states that, on February 18, 2003 the disputed domain name was registered by the Respondent primarily to promote the Complainant’s business and increase VALTRA’s sales because as the Complainant states on paragraph 2 from page 7, “Valtec Tractoare was an official Valtra distributor in Romania for Valtra Inc in Romania from May 9, 2003”;
- states that the disputed domain name was registered four years before the Complainant had the right of trademark. 6. Discussion and Findings A. Preliminary Issue – The Application of the Distribution Agreement Provisions – the Scope of the Dispute
Both parties to the dispute referred in their submissions to the Distribution Agreement concluded on May 9, 2003 between Valtra Inc and Valtec Tractoare Transilvania SRL and its application to the grounding or ungrounding of any rights of the Respondent in connection to the registration and use of the disputed domain name.
The Distribution Agreement concluded on May 9, 2003 does not refer directly to the parties to this dispute and therefore, the Panel considers it inapplicable to this dispute. As a consequence, any inference which the Respondent had drawn from the said agreement as to an exclusive arbitration jurisdiction provided in the said agreement as applicable to this dispute, is rejected as ungrounded.
The jurisdiction of this Panel derives from the Registration Agreement concluded between the Respondent and ROTLD and had not been superseded by any other further agreement.
As a conclusion, the Panel finds that this dispute is within the scope of the UDRP as provided in the registration agreement for the disputed domain name. B. Language of the Proceedings
Although ROTLD has informed the Center that the language of the relevant registration agreement was Romanian, the Panel considers that, in the circumstances, the language of the present proceedings should be English.
The Panel has considered a number of reasons, among which that the Complainant opted for the English language to be used in these proceedings, that the Respondent replied in English and filed a Response in English, and that the language of the correspondence between the Parties has been English. In the Panel’s view, the Respondent can apparently understand the language of the Complaint and he will not be prejudiced by a decision issued in English. The Panel concludes that, according to the Rules, paragraph 11(a), the language of the proceedings shall be English. C. Supplemental Filings
The Rules do not contain any express provision for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of Supplemental Filings (including further statements or documents) received from either Party. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 4.2, the party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Under these proceedings, the Supplemental Filings provided by the Complainant fail, in the opinion of the Panel, to show further relevance. Mainly, the Supplemental Fillings reiterate the same submissions made in the Complaint. Therefore, the Panel decides not to accept the Supplemental Fillings submitted by the Complainant. D. Identical or Confusingly Similar
The Complainant is the holder of multiple countries trademark registrations for VALTRA, some of them dating back in 1981. The Complainant is also the holder of the VALTRA Community trademark no. 005455175 which was registered on August 24, 2007.
The disputed domain name is identical with the Complainant’s trademark VALTRA, as the Respondent itself recognizes in its Response.
The Panel also considers that the suffix “.ro” does not render the disputed domain name distinctive.
Therefore, the Panel finds that the disputed domain name is identical to the Complainant’s VALTRA trademark and that the Complainant has proven the first element of the Policy. E. Rights or Legitimate Interests
The Complainant alleges that the Respondent is or has been the Managing Director of its former Distributor in Romania VALTEC Tractoare SRL, and that, at the termination of the Distribution Agreement, the Respondent was asked to assign back the disputed domain name to the Complainant. The Respondent refused this request.
On the other side, the Respondent contends that he had and has rights to use the disputed domain name according to the Marketing Agreement signed by the Respondent and Valtec Tractoare Transilvania SRL, to which the Complainant gave full rights to use the disputed domain name starting with the Distribution Agreement’s signature, in order to promote Valtra products in the Territory.
Moreover, the Respondent states that Valtec Tractoare Transilvania SRL and Valtra Oy Ab have overdue unpaid amount of money according to the said Marketing Agreement in amount of EUR 169,733.00.
According to prior URDP panel decisions the Complainant is required to make out a prima facie case, the Respondent carrying the burden of demonstrating rights or legitimate interests in the domain name. (WIPO Overview 2.0, paragraph 2.1).
Although the Complainant allegations seem not to be very strong, the contracts provided by both parties as supporting their rights leads by themselves the Panel into finding in favor of the Complainant on the second element of the Policy.
The Respondent grounds his rights and legitimate interests on the Marketing, Promotion, Rental and Commission Agreement concluded between the Respondent and Valtec Tractoare Transilvania SRL – the former distributor of the Complainant. The said agreement was concluded on June 13, 2003. By the said agreement, it is the Respondent who is renting the disputed domain name to Valtec Tractoare Transilvania and engages himself to provide against payment of a commission, different services in connection to the disputed domain name operation.
It has to be mentioned, that nowhere in this marketing agreement is provided any reference to the right of the Respondent to register and use the disputed domain name, right which would have been granted by the Complainant or its affiliates. It is the opinion of this Panel that, by registering the disputed domain name in the absence of any authorization from the Complainant or its affiliates and renting it to the distributor of the Complainant against payment cannot create any right or legitimate interest for the Respondent. It is clear that a possible authorization to use the Complainant’s trademarks for the distribution in Romania of the Complainant’s or its affiliates’ products could be inferred from the Distribution Agreement in favor of the Distributor appointed – the company Valtec Tractoare Transilvania SRL. However, no such rights or authorization could be inferred in favor of third parties. As the Distribution Agreement provides at article 10.2 “the Distributor will not use or allow any third party under its direct or indirect control to use the trademarks or tradenames of Manufacturer”. For the purposes of the Distribution Agreement, in the opinion of this Panel, the Respondent is third party. The Panel notes that the disputed domain name was registered in February 18, 2003, before even the Distribution Agreement between the Complainant’s affiliate and Valtec Tractoare Transilvania SRL was concluded. It is evident for the Panel, that the Respondent having knowledge about the negotiation of the Distribution Agreement, as Managing Director of the next to be Distributor, had intentionally registered the Complainant’s trademark as a domain name in order to further create a potential financial gain from the use of such domain name in the future in connection with the distribution business of VALTRA equipment in Romania or other way.
The Respondent’s initial intent is confirmed further, when after the Distribution Agreement was terminated, being requested to assign the disputed domain name to the Complainant, the Respondent stated that he would be selling the disputed domain name, since two other third parties were interested in buying it.
Moreover, the present redirection of the disputed domain name to the website of a competitor in the opinion of this Panel, is adding more weight prior to the findings of lack of bona fide offering of goods and services under the disputed domain name, prior to any notice of this dispute.
In light of the foregoing, the Panel is satisfied that the Complainant has proven also the second element of the Policy. F. Registered and Used in Bad Faith
From the allegations of both parties and the evidences submitted by them, it can be inferred beyond any doubt the bad faith use of the disputed domain name by the Respondent. The Respondent refused to assign back the disputed domain name to the Complainant, offering to sell it to the Complainant or other third parties. The Respondent used the disputed domain name in order to be directed to a website owned by Valtec Tractoare Transilivania SRL, which is a manufacturer of tractors under the trademark VALTEC and a direct competitor of the Complainant. The disputed domain name has been used by the Respondent in order to attract customers and direct them to a competitor of the Respondent. All these circumstances are evidences of bad faith use of the disputed domain name.
Considering the allegations of the Respondent that the Complainant had not proved beyond anty doubt the bad faith registration of the disputed domain name, it appears that the Panel remains confronted with the question, whether bad faith use alone is sufficient to satisfy the bad faith requirement of the Policy. However, how tempting this analysis would look as it did to other UDRP panels before this one (see City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE,WIPO Case No. D2009-0643, and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions,WIPO Case No. D2009-0786 and also Phillip Securities Pte Ltd v. Yue Hoong Leong, ADNDRC Decision DE-0900226), this Panel considers that the further bad faith use of the disputed domain name is not the only element from which bad faith registration could be derived. As mentioned above, despite even the Complainant’s submissions in the Complaint as to an eventual authorization given to the Respondent from its affiliate’s side to register the disputed domain name, authorization implied in the language of the Distribution Agreement, this Panel makes its own judgment as to the rights or authorisation provided in the said agreement.
In the Panel’s view, there is no doubt that according to the Distribution Agreement, article 10.1 there is clear recognition of the VALTRA trademarks belonging at that moment to the Complainant’s affiliate. The further registration by the Complainant of the VALTRA Community trademark later after the conclusion of the Distribution Agreement does not deny the Complainant’s affiliate’s rights in the said trademark. Moreover, in the Panel’s view, the setting up of the Complainant after the Distribution Agreement conclusion is also irrelevant from the point of view of the Complainant’s rights in VALTRA trademarks registrations. The Complainant and its affiliates have been holders of VALTRA trademark registrations all over the world since as early as 1981. In addition, in the Marketing Agreement, is expressly provided a direct reference to the Complainant.
Considering what has already been mentioned above with regard to the second element, the parties to the Marketing Agreement, the registration of the disputed domain name before the Distribution Agreement conclusion, it is the opinion of this Panel, that the Respondent had registered the disputed domain name in bad faith with the purpose of benefiting from the trademark of the Complainant or the Complainant’s affiliate.
The Panel is satisfied that the Complainant has proven also the third element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Beatrice Onica Jarka
Sole Panelist
Date: May 24, 2013
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