The Complainant is Racing Planet OHG of Magdala, Germany, represented by SCP Leaua & Asociatii, Romania.
The Respondent is Tuca Impex SRL of Giurgiu, Romania, represented by Nomenius SRL, Romania. 2. The Domain Name and Registrar
The disputed domain name is registered with ZOOKU Solutions SRL – RoTLD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2018. On August 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 2018, 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. On August 21, 2018, the Center informed the Complainant that the Complaint exceeded the 5,000-word limit specified in paragraph 11(a) of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”), and invited the Complainant to submit a word-count compliant Complaint by August 26, 2018. On August 23, 2018, the Complainant submitted a word-count compliant Complaint.
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 Supplemental Rules.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in Romanian of the Complaint, and the proceedings commenced on August 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2018. The Response was filed with the Center on September 18, 2018.
The Center appointed David Perkins, Carol Anne Been and Assen Alexiev as Panelists in this matter on October 15, 2018. The Panel finds that it was properly constituted. Each Panelist 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 October 12, 2018, the Complainant submitted a supplemental filing. On October 18, 2018, the Panel issued its Procedural Order No.1, by which it invited the Respondent to submit comments to the Complainant’s supplemental filing by October 25, 2018. On October 23, 2018, the Respondent submitted a response to the Complainant’s supplemental filing. 4. Factual Background
The Complainant operates an online store under the brand RACING PLANET where it offers spare parts and accessories for scooters and mopeds of various third-party manufacturers as well as goods under its own brand NARAKU. The Complainant’s website opened in 2006 and is located at the domain name .
The Complainant is the owner of the following trademark registrations for RACING PLANET (the “RACING PLANET trademark”):
- the trademark RACING PLANET with registration No. 305414356, registered in Germany on August 30, 2005, for goods in International Classes 7, 11 and 12; and
- the European Union (“EU”) trademark RACING PLANET with registration No. 010878271, registered on October 20, 2015, for goods and services in International Classes 7, 9, 11, 12, 35, 37 and 39.
The Respondent registered the disputed domain name on January 17, 2011. It currently resolves to a website that offers for sale various motorcycle spare parts of different brands.
The Respondent has filed a trademark application for the territory of Romania for the trademark RACING-PLANET.RO with application No. M 2017 01387 of March 2, 2017, for services in International Classes 35 and 39. This trademark application is currently pending. 5. Parties’ Contentions A. Complainant
The Complainant submits that it began to use its RACING PLANET brand in Romania in 2007. In the beginning of 2011, the Respondent became one of its clients in Romania, and the first invoice to it was issued by the Complainant on January 13, 2011. On January 17, 2011, the Respondent registered the disputed domain name without the consent of the Complainant and without its prior knowledge.
According to the Complainant, in the early 2011 the Parties discussed the possibility the Respondent to open a RACING PLANET franchise, but the Respondent did not accept the commercial terms for it. In the context of these discussions, the Respondent informed the Complainant of the registration of the disputed domain name. On January 24, 2011, the Complainant informed the Respondent that it was not allowed to use the RACING PLANET brand for its online store, and on February 12, 2011, the Complainant requested the Respondent to cease the use of the Complainant’s RACING PLANET trademark and logo for its website. The Complainant also stated that RACING PLANET was a protected trademark and that if the Respondent did not cease to use it, the matter would need to be referred to the courts. In its response of February 13, 2011, the Respondent stated that it had made a mistake and that it had no interest in using the Complainant’s RACING PLANET trademark and logo. However, the Respondent continued the unauthorized use of the disputed domain name.
The Complainant submits that the website at the disputed domain name offers products for scooters, including the products offered by the Complainant on its official website and the products of other manufacturers, which products are not offered by the Complainant. The Respondent’s website has until recently offered products bearing the Complainant’s trademark NARAKU, and contains links to other websites controlled by the Respondent that also offer scooter parts.
The Complainant further submits that in 2013 it ceased its commercial relations with the Respondent due to the unauthorized copying by the latter of the Complainant’s website and the RACING PLANET trademark, and on February 24, 2017, it sent a cease and desist letter to the Respondent. Rather than complying with the Complainant’s request, on March 2, 2017 the Respondent applied for registration in Romania of the RACING-PLANET.RO trademark, to which application the Complainant filed an opposition based on its earlier rights to the EU trademark RACING PLANET. On May 12, 2017, the Respondent filed an application for the invalidation of the Complainant’s EU trademark RACING PLANET, which led to the suspension of the Complainant’s opposition to the Respondent’s application for registration of the trademark RACING-PLANET.RO.
According to the Complainant, the disputed domain name is confusingly similar to the RACING PLANET trademark, as it fully incorporates it. The separation by a hyphen of the elements “racing” and “planet” of the disputed domain name does not eliminate its confusing similarity with the RACING PLANET trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In this regard, the Complainant submits that the Respondent is not known by the disputed domain name and that it has never authorized the Respondent or given its consent for the use of the disputed domain name. In its correspondence with the Respondent, the Complainant has expressly prohibited it to use of the RACING PLANET trademark. The Complainant also points out that the Respondent has never been an authorized agent of the Complainant or otherwise affiliated to it, and the only link between the Parties was that the Respondent was one of the Complainant’s clients in Romania for a limited period of time in 2011-2013, the Complainant having many other customers there both before and after this period.
The Complainant further states that the Respondent does not legitimately use the disputed domain name for a bona fide offering of goods or services, as the website at the disputed domain name has a similar appearance to the official website of the Complainant and falsely suggests an affiliation with the Complainant without including any disclaimer of it. In addition, the unauthorized sale of products bearing the Complainant’s trademark NARAKU is a counterfeiting activity that cannot generate legitimate rights or interests of the Respondent in the disputed domain name.
The Complainant also refers to the UDRP decision in the case Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (the “Oki Data decision”), and maintains that the Respondent’s conduct does not satisfy the criteria developed in this decision and is therefore not legitimate. The Respondent does not disclose the lack of relationship with the Complainant, and uses its website to also offer goods that are not offered by the Complainant. The Complainant adds that the criteria set out in the Oki Data decision are not satisfied also because there is a previous agreement between the Parties that expressly prohibits the registration and use of the disputed domain name incorporating the Complainant’s RACING PLANET trademark.
According to the Complainant, the application of the Respondent for registration of the RACING-PLANET.RO trademark shortly after receiving the cease and desist letter from the Complainant does not establish rights and legitimate interests of the Respondent in the disputed domain name, but rather shows an attempt to strengthen its position in this dispute.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent was aware of the Complainant’s RACING PLANET trademark when it registered the disputed domain name, because its registration was made shortly after the Respondent purchased goods from the Complainant for the first time. The registration and use of the disputed domain name were made in an attempt to benefit from the goodwill of the Complainant by attracting Internet users looking for the Complainant’s products to the Respondent’s website, which offers also goods that are not offered by the Complainant, and contains links to other websites without displaying any information about the Complainant or about its RACING PLANET trademark. The Respondent continued to hold the disputed domain name despite the Complainant’s request not to use its RACING PLANET trademark for the Respondent’s online store.
In its supplemental filing, the Complainant maintains that the jurisdiction where a trademark is registered is irrelevant for the analysis of the identity or confusing similarity between the RACING PLANET trademark and the disputed domain name.
The Complainant also points out that the Respondent has not provided any explanation in the Response for the absence of any disclaimer on its website for the lack of relationship between the Parties.
The Complainant denies the Respondent’s statement that it does not target the German market, and points out that the Respondent’s website included links to other websites controlled by the Respondent which are directed at the markets in Germany and Italy, and after the filing of the Complaint, these links were removed and the possibility to view the archived pages was blocked with the use of the robots exclusion protocol robots.txt, which allegedly shows an attempt of the Respondent to destroy evidence of its conduct. The Complainant points out that the Respondent’s website is also available in English and Bulgarian versions, and competes with the Complainant by sending messages to various potential clients in Germany, France and Italy with offers to sell Racing Planet products, found on the website at the disputed domain name and referring to a Racing Planet catalog.
The Complainant also submits that the Respondent has attempted to disrupt the Complainant’s business by the filing of an application for invalidation of the Complainant’s EU trademark RACING PLANET and filing of the trademark application for RACINGPLANET.RO in Romania.
The Complainant refers to the correspondence from the Respondent of January 24, 2011, where it praised the Complainant and stated that it wished to build a website like Racing Planet and to sell the Complainant’s goods in Romania. According to the Complainant, this correspondence is evidence that the Respondent knew the Complainant’s RACING PLANET trademark, did not create the disputed domain name independently, and anticipated the benefits it could get from registering and using a domain name that is identical to the Complainant’s trademark and using a website that is similar to the website of the Complainant. The Complainant also points out that the Respondent has not denied its knowledge at the time of registration of the disputed domain name of the Complainant’s RACING PLANET trademark registered in Germany.
The Complainant denies the Respondent’s allegation that the Complainant has agreed to the use of the disputed domain name by the Respondent through the continuation of the commercial relations between the Parties for a long period of time after the registration of the disputed domain name. In this regard, the Complainant states that the Respondent has submitted twice the same evidence, and submits that it had commercial relations with the Respondent only in 2011 and 2012, in the course of which it had supplied goods of limited value to the Respondent, which was a small percentage of its total sales to all customers in Romania in the same period. The Complainant further denies that by their correspondence in 2011 the Parties had reached an agreement authorizing the use of the disputed domain name by the Respondent, and submits that this correspondence actually represented an agreement that the Respondent will stop using the Complainant’s RACING PLANET for its domain name and website. This agreement was not complied with, and when the Complainant understood this, it stopped making sales to the Respondent.
The Complainant also denies the Respondent’s allegations that the Complaint was brought in bad faith. B. Respondent
The Respondent submits that the Complainant’s RACING PLANET trademark was registered only in Germany in 2005, and the Complainant’s trademark rights extended only to this jurisdiction. The Complainant’s EU trademark RACING PLANET was applied for and registered after the registration of the disputed domain name.
The Respondent points out that it informed the Complainant that it had registered the disputed domain name only one week after its registration, so the Complainant had knowledge of this registration and agreed to the use of the disputed domain name by the Respondent under certain conditions, which included the non-use by the Respondent of the logo and commercial name “Racing Planet”. After the Complainant was satisfied that these conditions were complied with, it agreed to the use of the disputed domain name and effectively supported it by delivering goods to the Respondent for many years. The Complainant filed the Complaint seven years after it became aware of the registration of the disputed domain name.
According to the Respondent, the Complainant registered its EU trademark RACING PLANET to unduly obtain the transfer the disputed domain name from the Respondent, and its RACING PLANET trademark was not known in Romania before the registration of the disputed domain name.
The Respondent contends that the disputed domain name is not identical or confusingly similar to the Complainant’s RACING PLANET trademark, as this trademark was not registered in Romania and was not known to the Romanian public at the time of registration of the disputed domain name, and is currently not associated with the Complainant, but only with the online store of the Respondent.
The Respondent maintains that the registration of the disputed domain name was not made in bad faith, because at that time the Complainant did not have trademark rights for RACING PLANET for the territory of Romania, and the Complainant’s EU trademark RACING PLANET was registered after the registration of the disputed domain name. By registering the disputed domain name, the Respondent did not infringe any trademark rights of the Complainant for the territory of Romania, and its registration was not made with the intention to take advantage of the Complainant’s RACING PLANET trademark.
The Respondent further states that its activities do not disrupt the business of the Complainant, and refers in this regard to the fact that the Complainant waited for seven years to initiate the present proceeding and has not presented evidence of such disruption. According to the Respondent, the Parties operate in different markets, and the Respondent’s website is directed only to the Romanian public, since it is available only in the Romanian language. The Respondent also states that it has continuously advertised online and used the disputed domain name for its retail trade business, and has become popular among Romanian consumers who associate it with the Respondent and not with the Complainant. The Respondent submits that all its revenues are not obtained from the association with the Complainant’s RACING PLANET trademark, but only because of the Respondent’s efforts for the promotion and use of the disputed domain name, and the economic behavior of the Romanian public is not based on the association with the Complainant’s RACING PLANET trademark.
The Respondent further states that the Parties had a good faith collaborative relationship, and the Complainant was selling products to the Respondent for the purpose of reselling them in Romania in the period 2010-2012. According to the Respondent, by its correspondence to it the Complainant approved the disputed domain name, and the Parties reached a tacit agreement for the use of the disputed domain name by the Respondent, since the Complainant tolerated this use for a long period of time.
The Respondent also states that the disputed domain name was not registered for the purpose of selling, renting or transferring to the Complainant in order to obtain an undue financial benefit, and the Respondent has never asked the Complainant to make a monetary payment for the transfer, sale or renting of the disputed domain name.
The Respondent requests a finding of reverse domain name hijacking against the Complainant.
In its supplemental filing, the Respondent maintains that the supplemental filing of the Complainant should not be admitted by the Panel. The Respondent disputes the authenticity of the evidence submitted by the Complainant with its supplemental filing, and states that it is not necessary to include a disclaimer on its website for the absence of an affiliation with the Complainant. The Respondent denies that it has taken steps to block the access to archived pages of its website, and disputes the relevance of the materials from the Wayback Machine submitted by the Complainant. The Respondent also states that in 2013 it informed a number of third parties of its legitimate interests in the disputed domain name. 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith. A. Procedural issues A.1. Language of the proceeding
In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Romanian. Under paragraph 11 of the Rules, 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.
The Parties have made their submissions in the Romanian language. The Center has sent all its messages to the Parties in both English and Romanian, and the Respondent has expressed its readiness to submit its Response in English. The members of the Panel do not speak Romanian.
In these circumstances, it appears to the Panel that using the English language for the decision in this proceeding would be fair and efficient and would not put either of the parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the decision in the present proceeding will be made in the English language. A.2. Supplemental filings
Paragraph 10 of the Rules vests the Panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition, while Paragraph 12 of the Rules expressly provides that it is for the Panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case.
In the present case, the Panel is satisfied that the Complainant has shown the relevance of its supplemental filing to the case and that it should be allowed to address the allegations contained in the Response, including those of reverse domain name hijacking. Similarly, the Respondent should be allowed to comment on the supplemental filing of the Complainant. Therefore, the Panel has decided to accept the supplemental filings of both Parties and take them into account for its decision on the dispute. B. Identical or Confusingly Similar
The Complainant has provided evidence of its rights in the RACING PLANET trademark, registered in Germany and in the European Union.
The Respondent contends that the disputed domain name is not identical or confusingly similar to the Complainant’s RACING PLANET trademark, as this trademark was not registered in Romania and was not known to the Romanian public in 2011 when the disputed domain name was registered, and that it is currently not associated with the Complainant, but only with the online store of the Respondent.
The Panel notes in this regard that as summarized in section 1.1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “[n]oting in particular the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element.” Further, issues such as the strength of the Complainant’s trademark or its popularity are considered under the second and third elements of the test under the Policy. Therefore, the Panel accepts that the Complainant has established relevant trademark rights in the RACING PLANET trademark and will proceed to examine whether the disputed domain name is identical or confusingly similar to it.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the Top-Level Domain (“TLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.ro” TLD section of the disputed domain name. The relevant part of the disputed domain name is therefore the section “racing-planet”, which contains the elements “racing” and “planet”, separated by a hyphen. The Complainant’s RACING PLANET trademark is easily recognizable within the disputed domain name and the addition of the hyphen does not prevent a finding of confusing similarity.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the RACING PLANET trademark in which the Complainant has rights. C. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not known by the disputed domain name, that the Complainant has prohibited the Respondent to use the RACING PLANET trademark, that the Respondent has never been an authorized agent of the Complainant, but was one of the many clients of the Complainant in Romania in 2011-2013, and that there is an agreement between the Parties that prohibits the registration and use of the disputed domain name by the Respondent.
The Complainant further contends that the Respondent does not carry out a bona fide offering of goods, since its website has a similar appearance to the official website of the Complainant and falsely suggests an affiliation with the Complainant, without including any disclaimer of such affiliation. According to the Complainant, the Respondent competes with the Complainant and its conduct is not directed only at the Romanian public, because its website is available in Romanian, English and Bulgarian versions and includes links to other websites controlled by the Respondent which offer the same goods and are directed at the markets in Germany and Italy, and because the Respondent sends messages to various potential clients in Germany, France and Italy with offers to sell Racing Planet products, featured on the website at the disputed domain name and referring to a Racing Planet catalog. In view of all the above, the Complainant also maintains that the Respondent’s conduct does not satisfy the so-called Oki Data criteria.
The Respondent maintains that it has rights and legitimate interests in the disputed domain name, because the Complainant did not have trademark rights in the RACING PLANET trademark for the territory of Romania at the time of the registration of the disputed domain name, and because the Complainant had knowledge of this registration, agreed to the use of the disputed domain name by the Respondent under conditions that were complied with by the Respondent, and supported the Respondent by delivering goods to it for many years. According to the Respondent, the Parties have reached a tacit agreement for the use of the disputed domain name by the Respondent, since the Complainant tolerated this use for seven years and only filed the Complaint afterwards.
The Respondent also maintains that it operates only in Romania and its website is available only in the Romanian language, that it has continuously advertised online and used the disputed domain name for its retail trade business, and has become popular among Romanian consumers who associate it with the Respondent and not with the Complainant.
Having considered the contentions of the Parties and the evidence submitted by them, the Panel has reached the conclusions that follow.
The Complainant started selling goods to clients in Romania in 2007. The first transaction between the Complainant and the Respondent took place on January 13, 2011. On January 17, 2011, the Respondent registered the disputed domain name. It fully incorporates the RACING PLANET trademark with the addition of the country code Top-Level Domain (“ccTLD”) “.ro” for Romania, and is thus likely to be viewed by consumers as an official online location of the Complainant for Romania.
On January 24, 2011, the Respondent stated to the Complainant that it did not have the funds to buy a franchise from the Complainant, but it wanted to build a site like Racing Planet to buy from the Complainant and sell in Romania. The Respondent also acknowledged that the Complainant was a big company, while the Respondent was a small business, and informed the Complainant that it had registered the disputed domain name. On February 12, 2011, the Complainant requested the Respondent to stop using the Complainant’s name and logos, informed the Respondent that “Racing Planet” is a protected name, and stated that if the Respondent did not stop using it within 7 days, the matter would have to be referred to the court. The Complainant stated that it would supply the Respondent with scooter parts, but it did not want the Respondent to call its company “Racing Planet”. On February 13, 2011, the Respondent asked the Complainant to excuse this mistake and that it had no interest to use the Complainant’s logo.
The above correspondence shows that the Respondent chose and registered the disputed domain name being well aware of the Complainant and with the idea to replicate the Complainant’s website and use it for selling scooter parts. It is obvious that the Respondent acknowledged the popularity of the Complainant’s RACING PLANET trademark and wanted to use it to attract customers to its own website while undertaking to sell the Complainant’s products through it. The above correspondence also shows that the Respondent accepted the Complainant’s request not to use the RACING PLANET trademark and logo.
The Respondent does not dispute that it offers on its website also goods that are not offered by the Complainant and that its website has a similar appearance to that of the Complainant and does not include a disclaimer for the lack of affiliation to the Complainant. The Respondent attempts to discredit the evidence submitted by the Complainant that until recently the website at the disputed domain name contained links to other websites of the Respondent that also offer scooter parts and are directed at the German and Italian markets, but it is notable that it does not dispute the very fact that such links existed at its website. The Respondent also does not dispute that in 2013 it sent an offer to German, Italian and French companies for the sale of scooter parts, presenting itself by the disputed domain name and without mentioning that it was not affiliated to the Complainant. This shows that through the disputed domain name and the associated website the Respondent has attempted to attract customers not only from Romania, as it states, but also from Germany, Italy and France, without disclosing the lack of relationship with the Complainant.
In these circumstances, the Panel finds that the conduct of the Respondent does not meet the criteria set out in the Oki Data decision, summarized in section 2.8 of WIPO Overview 3.0. The disputed domain name, the associated website and conduct of the Respondent may well confuse Internet users into believing that they are dealing with the Complainant, and the Respondent is also offering goods that do not originate from the Complainant. Moreover, as summarized in section 2.8.2 of WIPO Overview 3.0, the cases that apply the Oki Data test usually involve a domain name comprising a trademark plus a descriptive term (e.g., “parts”, “repairs”, or “location”), while the risk of misrepresentation has led panels to find that a respondent lacks rights or legitimate interests in cases involving a domain name identical to the complainant’s trademark. The disputed domain name in the present case is closer to the second category, as it does not include a descriptive term and the only element in it that is not present in the RACING PLANET trademark is the hyphen linking these two words in the disputed domain name.
The Complainant denies having explicitly authorized the use of its RACING PLANET trademark by the Respondent for the disputed domain name, and the case file does not contain evidence to the contrary. The Respondent’s allegation that the Complainant has tacitly consented to the registration and use by the Respondent of the disputed domain name through the maintenance of the commercial relations between the Parties for a number of years is not supported by the evidence in the case file, which shows that these relations were maintained only in 2011 and 2012 and the transactions were of an insignificant value, and the Respondent does not deny the Complainant’s statement that the Complainant terminated its dealings with the Respondent when it understood that the Respondent had continued to use the disputed domain name.
The Respondent’s reference to the seven years period of time between the registration of the disputed domain name and the filing of the Complaint does not change the above conclusions. As summarized in section 4.17 of the WIPO Overview 3.0, the mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits, and panels have therefore declined to specifically adopt concepts such as laches or its equivalent in UDRP cases.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
As discussed above, the disputed domain name fully incorporates the RACING PLANET trademark with the addition of the TLD “.ro” for Romania, and is thus likely to be viewed by consumers as an official online location of the Complainant for Romania. The likelihood of confusion of Internet users is increased by the design of the website at the disputed domain name, which is similar to the official website of the Complainant, and contains no disclaimer.
The correspondence between the Parties shows that the Respondent was well aware of the Complainant when it registered the disputed domain name and that it acknowledged its plan to make a website like the Complainant’s and to use it for selling scooter parts. This registration was made without the consent of the Complainant. The Respondent also accepted the Complainant’s request not to use the RACING PLANET trademark and logo. The Panel regards this as an agreement between the Parties.
The Panel is not convinced by the Respondent’s allegations that its activities do not disrupt the business of the Complainant, because the Parties operate in different markets, and the Respondent’s website is directed only to the Romanian public, since it is available only in the Romanian language. These allegations are contradicted by the evidence in the case file, showing that the Respondent has made its website available in English, Romanian and Bulgarian versions, and has made attempts to attract customers from Germany, Italy, France and Bulgaria, where the RACING PLANET is registered, without disclaiming an affiliation to the Complainant.
On the basis of the above, and in view of the considerations of the Panel set out in the section related to rights and legitimate interests, the Panel accepts that the Respondent has registered and used the disputed domain name with knowledge of the Complainant and targeting the RACING PLANET trademark in an attempt for commercial gain to attract Internet users to its website by confusing them that they are dealing with the Complainant.
The facts that the Complainant did not have trademark rights for RACING PLANET for the territory of Romania at the time when the disputed domain name was registered, and that the Complainant’s EU trademark RACING PLANET was registered later, do not alter the Panel’s conclusions. As discussed above, the Respondent’s conduct is not limited to Romania, but targets customers from Germany, where the RACING PLANET was registered years before the registration of the disputed domain name.
Taking all the above into account, the Panel accepts that the Respondent’s conduct amounts to bad faith registration and use of the disputed domain name. E. Reverse Domain Name Hijacking
Since the Complainant has established all elements of the test under the Policy, the Respondent’s request for a finding of reverse domain name hijacking has to be rejected. 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.
David Perkins
Panelist
Carol Anne Been
Panelist
Assen Alexiev
Presiding Panelist
Date: November 13, 2018
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