WIPO Domain Name Decision DRO2019-0017 for my-skoda.ro

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Skoda Auto a.s. v. GlobeHosting, Inc.; Bogdan Hasnes, Evox Protrade SRL Case No. DRO2019-0017 1. The Partiesa

The Complainant is Skoda Auto a.s., Czech Republic, represented by Baker & McKenzie, Czech Republic.

The Respondent is GlobeHosting, Inc., United States of America (“United States”); Bogdan Hasnes, Evox Protrade SRL, Romania. 2. The Domain Name and Registrar

The disputed domain name is registered with ROTLD (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2019. On December 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 2019, the Registrar transmitted by email to the Center its verification response confirming that the GlobeHosting, Inc. is listed as the registrant and providing the contact details.

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 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 December 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2020. On January 8, 2020 the Center received an email from “Bogdan Hasnes, Evox Protrade SRL” containing what was described as a “Response” to the filed Complaint. The Center sent an email communication on January 15, 2020, requesting Bogdan Hasnes, Evox Protrade SRL, to identify himself, clarifying his relationship (if any) to the Respondent, and provide information sufficient to establish the legitimacy of his submission in the context of the current proceedings.

On January 17, 2020, Bogdan Hasnes resubmitted its response indicating that it had registered the disputed domain name via GlobeHosting Inc. On the same day, GlobeHosting confirmed that Bogdan Hasnes was its client and the “domain owner”.

The Center appointed Knud Wallberg as the sole panelist in this matter on January 27, 2020. 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, Skoda Auto a.s., is a Czech car manufacturer that has conducted business under this name since 1925. The Complainant is currently a well-known passenger car manufacturer in the world.

The Complainant holds worldwide trademark registrations for SKODA including the following:

- the International trademark registration number 144637A designating among others Romania, registered on December 23, 1949, for goods in class 12;

- the International trademark registration no. 1265214 designating among others the European Union, registered on May 4, 2015, for goods in class 4; and

The Complainant also holds European Union Trademark registration number 018007941 for the word MYŠKODA filed on January 10, 2019, and registered on May 7, 2019, for goods and services in classes 9, 12, 36, 37, 38, and 39.

Finally, the Complainant offers its clients an Internet application in connection with the sale and use of their Skoda cars under the designation “MyŠkoda”.

The disputed domain name was registered on April 28, 2009. The disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its well-known trademark SKODA, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent

As mentioned above, the named Respondent, GlobeHosting, Inc, did not file a response before the set deadline January 5, 2020. However, Bogdan Hasnes, Evox Protrade SRL, submitted what was described as a “Response” to the filed Complaint on January 8, 2020. The Center requested Bogdan Hasnes to clarify his relationship to the named Respondent in the Complaint on January 15, 2020. On January 17, 2020, Bogdan Hasnes resubmitted its response indicating that it had registered the disputed domain name via GlobeHosting Inc. On the same day, GlobeHosting confirmed that Bogdan Hasnes was its client and the “domain owner”.

In his late Response, Bogdan Hasnes stated that:

- the disputed domain name was registered in 2009 via GlobeHosting with only one purpose, namely “to develop and offer Romanian Skoda car owners & Skoda fans a professional online platform [forum] where they can share opinions, ask for professional or experienced advice regarding their cars & problems”;

- “the internet platform is intended to be offered for free use of any person interested”;

- it is evident that since the platform “targets the products and services of Skoda, the domain name should refer to the name Skoda”;

- “preparations to develop the platform started in 2010, but due to the economic situation, [the Respondent] was not able to finish this project”; and,

- the disputed domain name was never offered for sale, trade, or exchange. 6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:

(i) that the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(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.

Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Preliminary procedural issues.

I) True Identity of Respondent

As mentioned above, a late Response was submitted to the Center by Bogdan Hasnes, Evox Protrade SRL, who was later confirmed by GlobeHosting, Inc. to be the actual holder of the disputed domain name.

The Panel notes that paragraph 1 of the Rules defines Respondent as “the holder of a domain-name registration against which a complaint is initiated”. The Panel further notes that the Registrar identified GlobeHosting, Inc. as the registrant of the disputed domain name.

Previous panels have occasionally been required to consider respondent identity questions in the context of the agent/beneficial holder relationship. See Facebook, Inc., Instagram, LLC, WhatsAPP Inc. v. Osbil Technology, Osbil Technology Ltd.,WIPO Case No. D2018-2906, where the Panel stated that “UDRP panels have held that the registrant as listed in the WhoIs is a properly-named Respondent but that the submissions of other interested parties may be considered for purposes of the panel’s decision. See The Proprietors of Strata Plan No. 36, A Turks and Caicos Corporation v. Gift2Gift Corp.,WIPO Case No. D2010-2180”. In view of the circumstances of the case, noting the submissions by both the named Respondent and Bogdan Hanes as to his ownership of the disputed domain name, the Panel has decided to treat Bogdan Hasnes, Evox Protrade SRL, along with the named Respondent GlobeHosting, Inc. as the Respondent in this case. Therefore, any reference to “the Respondent” in this decision shall be read as referred to both of them.

II) Late Filing of the Response

As detailed in the Procedural History, Bogdan Hasnes submitted what was described as a “Response” to the filed Complaint on January 8, 2020 – that is 3 days after the deadline of January 5, 2020, and the day after the “Notification of Respondent Default” was issued by the Center. In the accompanying email, Bogdan Hasnes stated: “I was out off office since December 15 until January 6, without possibility to respond to the complain.”

The Panel notes that, in the event of a late Response, the default course of action pursuant to paragraph 14(a) of the Rules, is to proceed to decision based only on the Complaint.

However, the Panel may, in its discretion, consider the response if “exceptional circumstances” exist. As highlighted in AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr.,WIPO Case No. D2005-0485, late responses were taken into account by the panels in cases in which:

“ - the response was filed before commencement of the decision-making process by the panel (see J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing,WIPO Case No. D2000-0035 - );
- the lateness did not delay the decision (see Young Genius Software AB v. MWD, James Vargas,WIPO Case No. D2000-0591 - );
- respondent was able to rely on a medical emergency (see Khoral Research, Inc. v. Alexy V. Khrabrov, National Arbitration Forum Case No. FA 94269 - );
- failure to take into account would have led to a “miscarriage of justice” (see Collegetown Relocation, L.L.C. v John Mamminga, National Arbitration, Forum Case No. FA 95003 - );
- response was late only by one day (see Kate Spade, LLC v. Darmstadter Designs,WIPO Case No. D2001-1384 and Arthur Guinness Son & Co. (Dublin) Limited v. Feeney O’Donnell and John O’Donnell,WIPO Case No. D2000-1710 - )
- although there were no exceptional circumstances, a late response was taken into account on the basis of the panel’s ‘general powers’ pursuant to paragraph 10(b) of the Rules (‘equality and that each party is given a fair opportunity’) on the grounds that failure to take the response into account ‘would be a rather drastic step and should be undertaken with great care.’ (AT&T Corp. v. Randy Thompson,WIPO Case No. D2001-0830 - ).
In contrast, responses submitted after the expiry of the deadline were dismissed by the panel where the period set was exceeded by two weeks, since the respondent could have applied for an extension and was represented by counsel (Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009, ).”

In the case at hand, the Response was de facto filed only three days after the expiry of the Response due date and immediately after the “Notification of Respondent Default” and since the late Response has not procedurally prejudiced the Complainant nor has it delayed the Decision in this administrative proceeding, the Panel has decided to admit and consider the Response. See, Vincle Internacional de Tecnologia y Sistemas, S.A. v. Warren Weitzman, Caramba LLC,WIPO Case No. D2018-1182, and Philip Morris USA Inc. v. Mette Rasmussen, BornBring,WIPO Case No. D2016-0233, with references to a number of previous decisions along the same lines. B. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark SKODA because it contains the mark in its entirety with the addition of the term “my-” as suffix. The country code Top-Level Domain (“ccTLD”) “.ro” does not dispel a finding of confusing similarity in the present case.

The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name. C. Rights or Legitimate Interests

It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark. It is also clear that the Respondent is not commonly known by the disputed domain name, and given the fact that the disputed domain name has not been used actively in more than 10 years, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

In the Response, the Respondent claims that the disputed domain name was registered with the purpose “to develop and offer Romanian Skoda car owners & Skoda fans a professional online platform where they can share opinions, ask for professional or experienced advice regarding their cars & problems”. The Respondent has however not submitted any evidence or information to support this claim nor is there evidence of the other types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings.

Moreover, the Panel finds that the composition of the disputed domain name is such that it effectively suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled. D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires a complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the respondent has registered or has acquired the disputed 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the disputed 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 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 its website or other online 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 websites or location.

Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.

It is clear from the content of the Response, that the Respondent was fully aware of the Complainant and of the Complainant’s rights to the trademark SKODA, when he registered the disputed domain name. In the Response it is thus stated that “it is evident that since the platform targets the products and services of Skoda, the domain name should refer to the name Skoda”.

The Panel therefore finds that the disputed domain name was registered in bad faith.

The disputed domain name has never been used and it currently resolves to a blank, inactive website. However, as first stated in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and repeated in many subsequent decisions under the UDRP: “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”. See also section 3.3 of the WIPO Overview 3.0 .

Noting that the disputed domain name incorporates the Complainant’s distinctive trademark and the ccTLD “.ro”, that the disputed domain name effectively prevents the Complainant from registering an almost identical domain name, that the disputed domain name has been registered for more than 10 years without being used, that the Respondent has not provided any evidence to support the stated purpose behind the registration of the disputed domain name, and considering all the facts and evidence, the Panel finds that the disputed domain name has been registered and used in bad faith. Therefore, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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.

Knud Wallberg
Sole Panelist
Date: February 23, 2020

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