The Complainant is IIC-INTERSPORT International Corporation GmbH of Bern, Switzerland, represented by Bourgeois Avocats, Switzerland.
The Respondent is Cutinov Vasile Adrian of Constanta, Romania. 2. The Domain Name and Registrar
The disputed domain name is registered with RoTLD (the “Registry”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2017. On January 13, 2017, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On January 16, 2017, the Registry transmitted by email to the Center its verification response 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 16, 2017 providing the registrant and contact information disclosed by the Registry, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 18, 2017.
The Center sent an email communication to the Parties in English and Romanian on January 16, 2017, regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Romanian. The Complainant submitted a request for English to be the language of the proceeding on January 18, 2017. The Respondent did not submit any communication regarding the language of the proceeding.
The Center verified that the Complaint together with the amended Complaint (hereinafter referred both together as 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2017.
The Center appointed Marilena Comanescu as the sole panelist in this matter on March 3, 2017. 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. Factual Background
The Complainant is a global retailer for athletic footwear and apparel, having 475 stores located in 27 countries worldwide. The Complainant holds trademark registrations for THE ATHLETE’S FOOT in various countries and jurisdictions, such as the European Union under registration number 430744 for the words THE ATHLETE’S FOOT filed on October 31, 1996, registered on November 17, 1998, covering goods and services in classes 25, 35 and 42.
The disputed domain name was registered on February 24, 2006, and at the time of filing the Complaint, on the website corresponding to the disputed domain name was a banner stating “site under construction”, in Romanian and an email address. Also, on the browser tab corresponding to the disputed domain name, there was a post reading “if you are interested to purchase” in Romanian. 5. Parties’ Contentions A. Complainant
The Complainant asserts the disputed domain name is identical to its word mark no. 430744 for THE ATHLETE’S FOOT and confusingly similar to its composite marks THE ATHLETE’S FOOT; the Respondent has no rights or legitimate interests in the disputed domain name; and the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy is directed towards resolving disputes concerning allegations of abusive domain name registration.
As part of the process, the Complainant must provide evidence and submissions in support of its Complaint. The expectation is that the Complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The Respondent is given full opportunity to respond. In this instance, the Respondent is in default.
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and to obtain relief. These elements are that:
(i) The disputed domain name is identical or confusingly similar to a trade mark 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 in bad faith.
Each of three elements must be established by the Complainant to warrant relief. A. Procedural Issue: Language of Proceeding
The Complainant has asked the language of proceeding be English and the Respondent did not react to the Center’s email related to the language of the proceeding, nor provided any Response in any language whatsoever.
Under paragraph 11 of the Rules, the language of the proceeding is the language of the registration agreement of the disputed domain name, unless both parties agree otherwise, or the Panel determines otherwise based on one party’s request. The Panel decides that proceeding should be conducted in another language generally when it is necessary due to different nationalities of the parties and when the complainant does not understand the language of the registration agreement and it would therefore be unfairly disadvantaged by the fact that it must translate all the documents involved in such proceeding.
In the present proceeding, the Complainant does not understand Romanian. The Respondent, having been notified of the present proceeding in both English and Romanian, has failed to file a Response, or to comment on the language of the proceeding. The Panel considers that the Complainant will only be disadvantaged if required to translate the Complaint into Romanian and the proceeding will be unduly delayed.
For all the above, the Panel decides that English is the language of the proceedings. B. Identical or Confusingly Similar
The Complainant holds trademark and word mark registrations for THE ATHLETE’S FOOT. The disputed domain name incorporates the Complainant’s word trademark in its entirety, without the spaces between the words and the apostrophe.
It is well established in decisions under the UDRP that the presence or absence of spaces and characters (e.g., apostrophe in this case, dots, hyphens) in a domain name and indicators for country code or generic Top-Level Domains (e.g., “.ro”, “.it”, “.com”, “.org”) are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain name is virtually identical to the Complainant’s trademark THE ATHLETE’S FOOT, pursuant to Policy, paragraph 4(a)(i). C. Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interests in respect to the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or a bona fide offering of goods or services. In line with the previous UDRP decisions, the Panel accepts that the Complainant has provided a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, and the burden of production shifts to the Respondent. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Respondent chose not to challenge the Complainant’s allegations. There is no evidence before the Panel to support the contrary, and therefore the Panel accepts these arguments as facts.
Further, according to the available record, at the time of fling the Complaint the disputed domain name was “under construction” although it was already registered for more than ten years. Also, on the browser tab corresponding to the disputed domain name, there was a general offer to sell the disputed domain name.
These facts cannot constitute a legitimate noncommercial or a bona fide offering of goods or services in relation to the disputed domain name.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to Policy, paragraph 4(a)(ii). D. Registered and Used in Bad Faith
The Complainant holds trademark registrations for THE ATHLETE’S FOOT in many jurisdictions worldwide, including the European Union since 1998. The disputed domain name was registered on February 24, 2006, and incorporates the THE ATHLETE’S FOOT trademark in its entirety. Romania became a full member of the European Union in January 2007, but it started to prepare for the European Union accession even since 2000.
THE ATHLETE’S FOOT has no meaning in Romanian and there is no evidence before the Panel that the Respondent has registered or used it for its dictionary meaning in English or for any other meaning or reason.
For the above, the Panel concludes that the Respondent was aware of and was targeting the Complainant’s trademark at the time it registered the disputed domain name.
At the time of filing of the Complaint, the disputed domain name was not actively used, the website corresponding to the disputed domain name displayed an email address and an announcement that the website was under construction. Further, the browser tab corresponding to the disputed domain name posted a general offer to sell the disputed domain name.
According to the consensus view of UDRP Panels summarized in the WIPO Overview 2.0, “panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity.”
In the present case, the Respondent was offering the disputed domain name for sale, the website corresponding to the disputed domain name was apparently held inactive for almost ten years, the Complainant’s trademark is distinctive and the Respondent did not formally respond to the Complaint.
Further, the Respondent provided apparently false contact details in the WhoIs, since the courier was unable to deliver the written notice of the proceedings to the Respondent’s physical address as listed in the WhoIs. Given the other circumstances of the case, such behavior of the Respondent may be considered as further evidence of bad faith in registering and using the disputed domain name.
For the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to Policy, paragraph 4(a)(iii). 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.
Marilena Comanescu
Sole Panelist
Date: March 14, 2017
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