The Complainant is Tomtom International B.V. of Amsterdam, the Netherlands, internally represented.
The Respondent is Web Tailors S.R.L. of Bucuresti, Romania. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with ICI-ROTLD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2015. On June 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 12, 2015, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 23, 2015.
On June 22, 2015, the Center informed the Parties that the Complaint had been submitted in English and that according to information received from the Registrar, the language of the Registration Agreement for the Disputed Domain Name is Romanian. The Center requested the Complainant to provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or (2) submit the Complaint translated into Romanian; or (3) submit a request for English to be the language of the administrative proceedings. On June 23, 2015, the Complainant requested the language of the proceedings to be English. The Respondent submitted no response in relation to this request.
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 in English and Romanian, and the proceedings commenced on July 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 23, 2015.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on July 29, 2015. 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. 4. Language of Proceedings
The Complainant submitted a request on June 23, 2015 that the language of the proceedings be English rather than Romanian. Paragraph 11(a) of the Rules provides that, unless otherwise agreed by the Parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement, subject to the discretion of the Panel to determine otherwise. The language of the Registration Agreement in this case is Romanian. However, the Panel determines that the language of these proceedings shall be English, taking into account the following factors:
(i) the Complainant has submitted evidence of correspondence between the parties, in English as well as postings on the website to which the Disputed Domain Name resolves (the “Website”) in English, demonstrating that the Respondent is sufficiently familiar with the English language; and
(ii) paragraph 10(c) of the Rules provides that the Panel shall ensure that the administrative proceedings take place with due expedition, and given that there appears to be no reason for the proceedings not to continue in English. The Panel concludes that the proceedings would be unnecessarily delayed if the Complainant were requested to resubmit its Complaint in Romanian. 5. Factual Background
The Complainant is a private company incorporated under the laws of the Netherlands. On May 7, 2013, the Complaint acquired assets from Gobandit GmbH in order to launch a new line of sports equipment products. The assets acquired included international and German registrations for the word mark GOBANDIT (registration numbers 1045030 and 302009070843, respectively), together the GOBANDIT Mark, the first registration of which was May 18, 2010. In relation to the international registration, the designated trademark offices included under the registration are the European Community OHIM, the United States USPTO, Switzerland IGEIPI and China SAIC.
The Respondent is a company based in Romania. The Respondent registered the Disputed Domain Name on November 3, 2010. 6. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
(i) The rights to the GOBANDIT Mark were acquired by the Complainant in May 2013. As such, the Disputed Domain Name is identical to a trademark in which the Complainant has rights.
(ii) The Respondent has not been authorised to use the GOBANDIT Mark, nor does it hold any trademarks, registered or unregistered, that can be said to be relevant to the Disputed Domain Name. Further, the Disputed Domain Name is not connected to the name of the Respondent, and there is no legitimate basis for the Respondent’s registration of the Disputed Domain Name.
(iii) There is also no evidence that the Respondent is using or has made any preparations to use the Disputed Domain Name for a bona fide offering of goods or services.
(iv) The Respondent has not been making a legitimate, noncommercial or fair use of the Disputed Domain Name. There are claims on the Website in the “About Us” section that the Website is the Romanian website for Gobandit GmbH. However, the Respondent has no affiliation with either the Complainant or Gobandit GmbH and has been granted no permission from either entity to operate the Website under the Disputed Domain Name. The Website features advertisements to products which were previously sold by Gobandit GmbH, but have been out of production for over two years, thereby tarnishing the reputation of the GOBANDIT Mark. Accordingly, the Website is operated deliberately in order to mislead Internet users into believing that it is actually operated by Gobandit GmbH or the Complainant or that it is otherwise associated with them.
(v) The Respondent registered the Disputed Domain Name in a bad faith attempt to attract Internet users by creating a false affiliation, a false endorsement of and/or a likelihood of confusion with the Gobandit brand.
(vi) The Respondent is clearly aware of the Complainant’s rights in the GOBANDIT Mark, and was reminded of such on several occasions through emails sent by the Complainant’s legal representatives prior to the commencement of the current proceedings. Although in response to communication from the Complainant, the Respondent informed the Complainant that the Disputed Domain Name was to be used for a bicycle contest to be held in Romania, it is clear from copies of pages on the Website that the Disputed Domain Name is, in fact, being used to lead Internet users into believing that the Website is operated by Gobandit GmbH. B. Respondent
The Respondent did not reply to the Complainant’s contentions. Whilst failure to file a Response does not automatically result in a decision in favour of the Complainant, it may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403). 7. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
Although it is not clear from the evidence provided by the Complainant, the Panel has (pursuant to its powers as described in paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)) established, via trademark registry database searches, that the Complainant is the owner on record of the German trademark registration number 302009070843 for the GOBANDIT Mark, registered on May 18, 2010. As such, the Panel accepts that the Complainant holds registered trademark rights in the GOBANDIT Mark. Further, the Complainant, via the Assignment Agreement annexed to the Complaint, holds rights in the international trademark registration number 1045030, but does not yet appear to be listed as its owner on trademark registry databases.
The Disputed Domain Name incorporates the GOBANDIT Mark in its entirety, the only difference being the suffix “.ro” that appears after the word “gobandit” in the Disputed Domain Name. It is a well-established rule that in making an enquiry as to whether a trademark is identical or confusingly similar to a domain name, the generic or country code Top-Level Domain extension, in this case “.ro”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd., WIPO Case No. D2006-0762).
The Panel, accordingly, finds that the Disputed Domain Name is identical to the Complainant’s GOBANDIT Mark in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 2.1 of the WIPO Overview 2.0, the Complainant is required to establish a prima facie case in respect of the lack of rights or legitimate interests of the Respondent in the Disputed Domain Name. Once a prima facie case is established, the Respondent then bears the burden of proving otherwise, failing which, paragraph 4(a)(ii) of the Policy shall be deemed to have been satisfied (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 and Accor v. Eren Atesmen,WIPO Case No. D2009-0701).
The Panel accepts that the Respondent is not a licensee, nor is it associated with the Complainant or Gobandit GmbH in any way that could give, or could have given, rise to any licence, permission or other right by which the Respondent could own or legitimately use the GOBANDIT Mark or Gobandit brand material. The Panel further accepts that, while the Respondent claimed in an email of May 8, 2015 to the Complainant that it owns Romanian trademark registration rights in the GOBANDIT Mark, the Respondent has not provided any evidence to demonstrate a registration of the GOBANDIT Mark anywhere in the world, or any evidence that it has become commonly known by the Disputed Domain Name. Further, the Panel carried out its own investigations which confirmed that there are no trademarks belonging to the Respondent for the GOBANDIT Mark or any similar mark which are registered with any of those trademark offices covered by the “TM View” database (including the Romanian trademark office OSIM). Accordingly, the Panel is of the view that a prima facie case is established and that the onus now shifts to the Respondent to prove it has rights or legitimate interests in the Disputed Domain Name. However, as no Response was filed by the Respondent, the Panel will assess whether or not the Respondent has any rights in the Disputed Domain Name based on the inferences that can be reasonably drawn from the Complainant’s evidence and the Website.
The Website includes: (a) information relating to Gobandit GmbH and Gobandit GmbH products (including products which have not been in production for over two years); (b) references to Gobandit GmbH (including the claim that the Website is operated by Gobandit GmbH in the “About Us” section of the Website); (c) the GOBANDIT Mark; and (d) imagery lifted from the official 2010 Gobandit GmbH advertising campaign (including identical photographs, words, maps and layout etc.). Based on the contents of the Website and the confusing similarity of the Disputed Domain Name to the GOBANDIT Mark, the Panel finds that the Respondent has been using the Disputed Domain Name to mislead Internet users into believing it is associated with the Complainant and/or Gobandit GmbH, which cannot confer any rights or legitimate interests to the Respondent in the Disputed Domain Name.
It is open to the Panel to infer that the Respondent does not dispute the Complainant’s contentions. In view of this and the Complainant’s contentions, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of the Disputed Domain Name in bad faith. Those circumstances are:
(i) circumstances indicating that the Respondent has registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) the Respondent has registered the Disputed Domain Name in order to prevent the Complainant from reflecting the Complainant’s trademark or service mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 Respondent’s Website or location, or of a product or service on the Respondent’s Website or location.
The Disputed Domain Name was registered nearly 6 months after the first registration of the GOBANDIT Mark. Further, it is clear from the contents of the Website that the Respondent must have been aware of the GOBANDIT Mark when the Respondent registered the Disputed Domain Name. The Website is dedicated to providing information in relation to Gobandit GmbH, the assets of which now belong to the Complainants, and Gobandit GmbH products sold under the GOBANDIT Mark, which have been out of production for over two years. The content of the “Contact Us” page of the Website falsely suggests that the operator of the Website is the exclusive Romanian distributor for GOBANDIT products.
As noted at paragraph 3.1 of the WIPO Overview 2.0, panels have taken into consideration the effect of the requirement of paragraph 2 of the UDRP, which states: “By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that [...] (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.” This provision suggests that there is a duty on the part of the registrant to conduct an investigation at the time of registration, and also includes a representation and warranty by the registrant that it will not now or in the future use the Disputed Domain Name in violation of any laws or regulations. This effectively imposes on the registrant a continuing duty to ensure that the Disputed Domain Name is not used in violation of another’s rights.
As noted above, the Website includes the following: (a) information relating to Gobandit GmbH and Gobandit GmbH products; (b) references to Gobandit GmbH (including the claim that the Website is operated by Gobandit GmbH in the “About Us” section of the Website); (c) the GOBANDIT Mark; and (d) imagery lifted from the official 2010 Gobandit GmbH advertising compaign. The Respondent neither has, nor has it ever been given, any licence or authorisation from the Complainant or Gobandit GmbH to make such references, or include such material on the Website. As such, the contents of the Website are a clear indication of bad faith use of the Disputed Domain Name.
In light of the use of the Disputed Domain Name, and the confusing similarity between the Disputed Domain Name and the GOBANDIT Mark, together with the fact that the Respondent must have been aware of the GOBANDIT Mark at the time it registered the Disputed Domain Name, the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith to mislead and confuse Internet users into falsely believing that the Disputed Domain Name is associated with the Complainant (and/or Gobandit GmbH) and the Complainant’s GOBANDIT Mark, when this is not the case, in order to divert Internet traffic to the Website.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied. 8. 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.
Gabriela Kennedy
Sole Panelist
Date: August 14, 2015
1 Austria OPA; Bulgaria BPO; Benelux BOIP; Cyprus DRCOR; Czech Republic (IPOCZ); Germany DPMA; Denmark DKPTO; Estonia EPA; Spain OEPM; Finland PRH; France INPI; United Kingdom of Great Britain and Northern Ireland UKIPO; Greece GGE; Croatia DZIV; Hungary HIPO; Ireland IEIPO; Iceland ELSIPO; Italy UIBM; Republic of Korea KIPO; Lithuania VPB; Latvia LRPV; Morocco OMPIC; FYROM SOIP; Malta CDIPRD; Mexico IMPI; Norway NIPO; Philippines IPOPHIL; Poland PPO; Portugal INPIPT; Romania OSIM; Serbia IPORS; Russian Federation ROSPATENT; Sweden PRV; Slovenia SIPO; Tunisia INNORPI; Turkey TPI; United States of America USPTO; European Community OHIM; WIPO.
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