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WIPO Arbitration and
Belupo d.d. v. WACHEM d.o.o.
Case No. D2004-0110
1. The Parties
Complainant is Belupo d.d., Koprivnica, Croatia, represented by Mirna Biocina.
Respondent is WACHEM d.o.o., Trnovec, Croatia, represented by Branko Smrcek.
2. The Domain Name and Registrar
The disputed domain name <belupo.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 11, 2004. On February 13, 2004, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On February 13, 2004, Register.com transmitted by email to the Center its verification response. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 Respondent of the Complaint, and the proceedings commenced on February 18, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2004. The Response was filed with the Center on March 8, 2004.
The Center appointed Madeleine De Cock Buning as the sole panelist in this matter on March 31, 2004. 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 following non-contested facts are derived from the Complaint and the Response, both submitted with supporting evidence.
Complainant in these administrative proceedings is Belupo d.d. ("Belupo"). Belupo, established in 1971, is Croatia's second largest pharmaceutical manufacturer with over 800 employees and representative offices in countries throughout the region including Slovenia, Bosnia, the Czech Republic, Macedonia, Slovakia, Russia and Yugoslavia. Respondent in these administrative proceedings is Wachem d.o.o. ("Wachem") established in Trnovec, Croatia. Complainant and Respondent had at least since 1989 a business relation. Respondent was one of the suppliers of Complainant.
Complainant bases its complaints on the trademark BELUPO, that is registered in the following countries in the following trademark classes, according to Nice Classification:
Croatia (class 1, 2, 3, 5, 10, 17, 30 and 31), Slovenia (class 1, 2, 3, 5, 10, 17, 30 and 31), Russia (class 5), Kazakhstan (class 5), Belarus (class 5), Ukraine (class 5), Macedonia (class 1, 2, 3, 5, 10, 17, 30 and 31), Bosnia and Herzegovina (class 1, 2, 3, 5, 10, 17, 30 and 31), Serbia and Montenegro (class 1, 2, 3, 5, 10, 17, 30 and 31).
The disputed domain name <belupo.com> was registered by Respondent on February 26, 2000. At that time Respondent was aware of Complainant's company.
The domain name is presently connected to a website that shows pictures of Podravina, a part of Croatia where both Complainant and the Defendant have their principal establishment, under the heading "Beautiful Landscapes of Upper Podravina".
5. Parties’ Contentions
1. The domain name <belupo.com> is identical to Complainant's trademark. The trademark has distinguishing power and is well known in Croatia.
2. Respondent has no rights or legitimate interests in respect of the domain name.
It is inconceivable that Respondent uses the word BELUPO in connection with a bona fide offering of goods or services. The trademark is a fanciful, coined and therefore unique word without any descriptive meaning, invented by employees of Complainant.
Respondent has not been commonly known by the domain name. Respondent is not using and never used Complainant's trademark in connection with its business, its goods or services, neither prior to, nor during their co-operation with Complainant.
The website remained empty for a long time since its registration on February 26, 2000. Respondent only activated the domain name in 2003. Since then Respondent did not change the content of the website. The Complainant contents that the website therefore solely serves as "placeholder".
3. The domain name was registered and used in bad faith.
Respondent registered the domain name primarily for the purpose of selling renting or otherwise transferring the domain name registration to Complainant or a competitor of Complainant, for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the domain name. According to Complainant, Respondent's refusal to consider Complainant's offer to transfer the domain name to Complainant for an amount of 10.000,00 kunas (approximately 1300 Euros), is evidence of this bad faith.
Respondent registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name, thereby disrupting the business of Complainant. Such is confirmed by the fact that Respondent failed to make consistent or continuous active use of the website.
Respondent's use of the domain is misleading, as it confuses (potential) customers of Complainant.
Respondent knew of the trademark of Complainant at the time of registration of the domain name.
Registration of the domain name in bad faith results into use in bad faith by Respondent. The trademark has a strong reputation and is widely known, it is therefore inconceivable that Respondent can use the domain in a legitimate way.
1. The domain name is identical to Complainant's trademark, but the meaning of the domain name is completely different.
2. Respondent has a legitimate interest in respect of the domain name.
Respondent makes legitimate non-commercial and fair use of the domain name, without intention for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Without submitting evidence, Respondent states that the domain name was used before the year 2003 (when Respondent received first notice of the dispute), but availability was interrupted due to a change of the hosting service provider.
3. Respondent did not register and use the disputed domain name in bad faith.
Respondent did not register the domain name for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, or a competitor of Complainant, for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name. According to Respondent, this is proven by the fact that Respondent did not react to Complainant's offer to transfer the domain name to Complainant on payment of a financial compensation that was higher than the domain registration costs.
Respondent did not register the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name nor did it engage in a pattern of such conduct.
The registration and use of the domain name by Respondent does not prevent Complainant from reflecting the trademark in other available domain names, such as <belupo.net> and <belupo.hr>. Respondent did not register the other domain names that are connected with the trade name, which were available at that time.
Respondent did not register the domain name to disrupt Complainant’s business. Complainant and Respondent are no competitors.
Respondent did not register the domain name as an intentional attempt to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location of a product or service on Respondent’s website or location. Respondent's use of the domain name is non-commercial.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, Complainant must prove that each of the three following elements are satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights (see below, section 6.A);
2. Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.B); and
3. The domain name has been registered and is being used in bad faith (see below, section 6.C).
Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The Policy requires that the disputed domain name is "identical or confusingly similar" to Complainant’s trademark.
The disputed domain name is <belupo.com>.
Complainant has provided sufficient evidence of its rights to the BELUPO trademark, registered both nationally and internationally and well known in Central and Eastern Europe.
The Panel establishes that the domain name is identical to Complainant's trademarks.
B. Rights or Legitimate Interests
While the overall burden of proof is on Complainant, the element of possible
rights or legitimate interests of Respondent in the disputed domain name involves
Complainant proving matters, which are peculiarly within the knowledge of Respondent.
It involves the Complaint in the often impossible task of proving the negative.
This should, as indicated correctly in WIPO
Case No. D2001-0121, Julian Barnes v. Old Barn Studios, be approached
as follows: Complainant makes the allegation and puts forward what he can in
support (e.g. he has rights to the name, Respondent has no rights to the name
of which he is aware, he has not given any permission to Respondent). Unless
the allegation is manifestly misconceived, Respondent has to demonstrate his
rights or legitimate interests in respect of the domain name under paragraph
4 (c) of the Policy.
Respondent has not provided any other evidence or circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. Complainant has not licensed or otherwise permitted Respondent to use the trademark or to apply for use of any domain name incorporating the trademark.
Respondent claims that the disputed domain name <belupo.com> is an abbreviation of "Beautiful Landscapes of Upper Podravina". A name which appearantly was only published on Respondent's website around the time that Respondent was contacted by Complainant and of which (earlier) use Respondent did not submit any evidence, although – if its assertions were true - Respondent would have been in the position, and had indeed the responsibility, to submit such evidence.
Furthermore Respondent's use of the domain name cannot be justified by its explanation that the word BELUPO is an abbreviation of "Beautiful Landscapes of Upper Podravina". The abbreviation is illogical and the words seem to be chosen at random. The word BELUPO does not constitute a logical, easy traceable, indication for a non-commercial website showing landscapes of Podravina.
For all of the above, the Panel is of the opinion that Respondent did not give evidence to justify his legitimate interest in the disputed domain name. The Complaint has met the second element of the Policy.
C. Registered and Used in Bad Faith
Policy paragraph 4(a)(iii) requires Complainant to show, on the balance of probabilities, that Respondent registered and is using the domain name in bad faith.
For the purposes of Paragraph 4(a)(iii), several circumstances are listed in the Policy that can give an indication to be evidence of the registration and use of a domain name in bad faith. These circumstances are explicitly listed without limitation. Also other circumstances, or a combination of the listed circumstances, can indicate use and registration in bad faith. Such is the case in the present dispute.
Respondent was well aware of the trademark of Complainant prior to registration
of the domain name, given the fact that Respondent used to be Complainant's
supplier. Furthermore the trademark BELUPO is well known in Croatia, where both
Complainant and Respondent conduct their business. It is therefore hard to conceive
of a plausible circumstance in which this Respondent could legitimately use
the domain name <belupo.com> (WIPO Case
No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows).
Respondent has furthermore not substantiated with credible evidence that he has legitimate interest in the disputed domain name. Even more, the present use of the website has all the appearance to be fabricated solely to develop some kind of argument in Respondent's defence. The fact that Respondent chose a ".com" extension from all the extensions that were still available in 2000 to launch its non-commercial website with pictures of Podravina only in 2003, further adds to this impression.
These findings, lead the Panel to conclude that Complainant has established that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy paragraph 4 (b)(i).
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <belupo.com> is transferred to Complainant.
Madeleine De Cock Buning
Date: April 14, 2004