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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Weby.Slovenska.SK spol. s r.o. v. Ivan Pekarovic/Tripsoft

Case No. D2005-1058

 

1. The Parties

The Complainant is Weby.Slovenska.SK spol. s r.o., Zvolen, Slovakia, represented by Ivan Belicka, Slovakia.

The Respondent is Ivan Pekarovic/Tripsoft, Trnava, Slovakia, unrepresented.

 

2. The Domain Names and Registrar

The disputed domain names <webyslovakia.com> and <webyslovenska.com> are registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2005. On October 6, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On October 7, 2005, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 31, 2005. The Center verified that the Complaint, together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced November 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response November 24, 2005. The Response was filed with the Center November 22, 2005.

The Center appointed Peter G. Nitter, Ladislav Jakl and David E. Sorkin as panelists in this matter on December 21, 2005. The Panel finds that it was properly constituted. Each member of 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 Respondent registered the domain <webyslovakia.com> on March 5, 2005, and the domain <webyslovenska.com> on April 22, 2005.

The Complainant is the owner of the Slovak trademark “weby.slovenska.sk” reg. No. 203156. This trademark was registered in June 2003.

The trademark is registered for the following classes: 35, 36, 37, 38, 41 and 42.

 

5. Parties’ Contentions

A. Complainant

In addition to the trademark WEBY.SLOVENSKA.SK the Complainant is the holder of the domain name <weby.slovenska.sk>, which is a sub-domain of “www.slovenska.sk”.

The Complainant also uses the name “weby.slovenska.sk” as an unregistered name.

From a phonetic, semantic and visual aspect the names “webyslovneska.com” and “weby.slovenska.sk” are identical because the only difference is the dot after the word “weby”.

The use of the trademark of the Complainant is connected with the use of the disputed domain names.

Both Complainant and Respondent are companies which operates in the field of web-space providing, registration and administration of the domains for their clients.

The market of both companies’ clients represents customer with adequate English language knowledge, who might believe that “webyslovakia” is just an English version of “weby.slovenska”.

The Slovak word “weby slovenska” can be translated to English language as “websites of Slovakia”.

The present trade name of the Complainant is identical with the disputed domains. Complainant’s trade name was registered in March 2001 when the company was founded.

The Respondent registered the domains at issue, for the purpose of taking advantage of the goodwill of the Complainant or for the purpose of selling the disputed domains to the Complainant and has no legitimate rights to the domain names.

The Respondent tries to take advantage of misspellings of the domain name of the Complainant where the consumers forget to use dot after the word “weby”, and thereafter are immediately redirected to websites of the Respondent.

The addition of “.com” in the domain names has no distinguishing capacity.

The registration and use of the domain names violates Complainant’s trademark rights.

The Respondent had many other options but by the registration of the domains he prospers mainly from mistakes of consumers.

Complainant notified the Respondent of the illegitimate domain name use in a letter dated May 9, 2005, and demanded Respondent to settle the situation.

The Respondent did not cease from the use of the domains, and with a letter dated June 9, 2005, the Respondent informed the Complainant that the use of the domain names would not cease, but that Respondent was willing to sell them for a price and conditions determined by Respondent.

There have been negotiations between the parties regarding a sale of the domain names. Respondent’s last offer was to sell four domain names, including the two at issue in this case, for 170.000 SKK. This supports a finding of bad faith.

Respondent has filed a trademark application in the Slovak republic No. POZ 986-2005 “Weby’s LOVE N.S.K.A” (transliteration: webyslovenska) for the purpose of registering a domain with the “.eu” suffix, an EU domain, where a trademark is requested. The trademark application was filed for class 45 which has no connection with the services of the Respondent.

The Respondent offers his services under the name TRIPSOFT and his registered domains are used for the same. The Respondent’s domain name registrations indicate that the Respondent’s business strategy is to register a domain with an interesting name and then sell it to customers with a higher margin.

B. Respondent

Respondent registered the two domain names at issue at different times and with different aims.

Neither of the domain names is identical nor confusingly similar to Complainant’s trademark.

The domain name <webyslovenska.com> was registered for the purpose of creating a non-profit dating portal “Weby’s Love N.S.K.A” with the original English designation. The meaning and phonetic reading of this domain name is absolutely different from the Slovak name “Weby.slovenska.sk”.

“Weby” is the name of a small frog, which guides a user through a portal. “Love” is a common English word, closely connected with the portal’s aim (dating). “N.S.K.A” is an abbreviation of words “Natural Sweet Kissing Anytime”, which is also closely connected to dating.

When Respondent registered the domain names, the Respondent had no knowledge about the small and unknown firm “Weby.Slovenska.SK, s.r.o.” which at that time had existed for about 2 years.

Respondent registered the domain name <webyslovenska.com> as an extension of the domain name webyslovenska.sk, to get the dating portal more accessible, also for foreign users.

One of Respondent’s business activities is providing of web-hosting services. Respondent has got, within Slovakia, a sizeable web-hosting company which is still growing. This is why the Respondent constantly looks for new and suitable portal names. Respondent uses the domain <webyslovakia.com> for the web-hosting services.

The domain names at issue includes two common words – “weby” (translated from Slovak this means “websites”) and “Slovakia”. Both terms are basic, common, generic and very often used on Internet.

The Respondent can demonstrate rights to and legitimate interests in the domain names.

The domain names should not be transferred where Respondent provided bona fide goods and services prior to any notification of dispute.

Complainant has never sent a cease or desist letter regarding the disputed domain names to the Respondent.

Complainant and Respondent met once, on August 18, 2005, to discuss the domain names without reaching any solution.

The Respondent began to use the disputed domain names 4 months before this meeting with the Complainant.

The Respondent used the domain names not in the trademark sense, but in the descriptive sense, describing the types of business, related to web-hosting in Slovakia.

It is not correct that Respondent registered the domain names for the purpose of using Complainant’s goodwill.

The dating portal “Weby’s Love N.S.K.A” content has no connection with Complainant’s business activity.

The Respondent began to provide web-hosting services in 1999, more than 2 years before Complainant’s firm was established.

The Respondent owns more than 20 similar portals, where he provides web-hosting services. The domain names, which leads to these portals often consists of common and often used names. Respondent also owns domains for the purpose of business extension. The Respondent has been doing business continuously since its incorporation in 1999, and has been using, and continued to use, the disputed domain name <webyslovakia.com>, shortly after its registration, as a vital part of Respondent’s business.

The Complainant exploits the goodwill of the Respondent. When the Respondent’s portal “Weby Slovakia” has been running up, the Complainant registered the domain WebySlvoensko.sk (Slovensko means Slovakia) in bad faith and forwarded it to Respondent for presentation.

The term “Weby Slovenska SK” is a common descriptive term. One cannot, by registering the term as a trademark, usurp the rights of all others to use the term.

The disputed domain names were not registered in bad faith and are not being used in bad faith.

The domain name <webyslovenska.com> is the most suitable domain name for the Respondent, who operates the portal named “Weby’s Love N.S.K.A”.

It is not correct that Respondent informed the Complainant in his letter of June 9, 2005, that he would sell the domain names. Respondent’s letter of the mentioned date was a response to Complainant’s letter of May 9, 2005. Respondent never offered the disputed domain names, or any other domain names, to Complainant.

There was never any email communication between the Complainant and the Respondent, but Complainant phoned Respondent about the domain names at issue, and Respondent told him that they were not for sale.

After this phone call the Complainant initiated a dialogue on August 18, 2005, at Respondent’s bureau. Complainant proposed to buy the domain names at issue because of the similarity with his own sites. The Complainant said he made a mistake when he did not register the domain names sooner. He accepted his difficult position, and then he appealed Respondent to consider the possibility of a domain sale, and said he had 75,000 SKK but later increased his bid to 100,000 SKK. Respondent refused to sell.

Respondent never offered to sell the domains, but used the amount of 200,000 SKK as an argument when he declined several offers from the Complainant to sell the domains. The Respondent said “I wouldn’t sell it for 200,000 SKK”.

The Respondent refers to the fact that the Complainant has not produced any evidence of the alleged offer from Respondent to sell the domain names.

Respondent has applied for the registration of the “Weby’s Love N.S.K.A” trademark, but not to register the domain webyslovenska.eu. The application has no connection to the Complainant.

It is not correct that Respondent’s business strategy is to register a domain with an interesting name and sell it at a higher margin. By this statement the Complainant has damaged Respondent’s reputation. The fact is that Respondent has registered more than 2.000 “.sk” domain names. There are two reasons for this:

(1) Foreign companies and individuals can not be the owners of domain names with a “.sk” suffix. Therefore the Respondent lend out such domain names.

(2) The Respondent also registers domain names in Respondent’s name for many Slovakian companies and individuals.

The Respondent is the world’s largest .SK domain names registrant.

Respondent has requested the Panel to make a finding of reverse domain names hijacking.

Complainant wishes to acquire the domain <webyslovakia.com> because this is a domain name which is operated by one of the 3 largest Slovak web-hosting providers. Complainant’s aim is to obtain illegal profit.

In this administrative proceeding the Complainant has presented information which is not correct. Complainant has never sent a cease and desist letter or similar to Respondent regarding the disputed domain names.

Because the Respondent is a large firm and Complainant is a small firm, the complainant wants to profit on Respondent’s success.

Complainant’s attempt to monopolize the generic and descriptive term “Weby Slovakia” through the use of a UDRP proceeding constitutes bad faith and reverse domain name hijacking.

Instead of registering domains which respond to his trademark the Complainant wants to take profit from Respondent’s business.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain names at issue are <webyslovakia.com> and <webyslovenska.com>.

The Complainant is the owner of the Slovak trademark WEBY.SLOVENSKA.SK. The trademark was registered in 2003 with registration number 203156.

The Panel finds that the trademark and the domain name <webyslovenska.com> are confusingly similar as they only differ by a dot when one disregards the suffix “.com”.

There are more differences between the trademark and the domain name <webyslovakia.com>. If one disregards the dot in the trademark the first parts of the trademark and the domain name, “weby”, are identical. The last parts are different “slovenska” and “slovakia”. According to the Complainant the word “webyslovakia” is only an English version of the word “webyslovenska”. Due to this fact, and to the fact that the first parts of the trademark and the domain name are identical, the Panel finds that also the domain name <webyslovakia.com> is confusingly similar to Complainant’s trademark.

The Panel therefore concludes that both domain names at issue are confusingly similar to Complainant’s trademark.

B. Rights or Legitimate Interests

Respondent’s rights to and legitimate interest in a domain name can be proved if, before any notice to Respondent of the dispute, Respondent uses the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Reference is made to Paragraph 4c)(i) of the Policy.

The Respondent registered the domain names in March and April 2005 and appears to have used them at least 4 months before the meeting with the Complainant in August 2005. It is not presented evidence which show that Respondent did receive any notice of the dispute from Complainant before the mentioned meeting in August 2005.

The Panel notes the Respondent’s contradicting explanations of why the domain names were registered.

One of the Respondent’s explanations for using the domain name <webyslovenska.com> for a dating portal is that the portal is named “Weby’s Love N.S.K.A”. The Respondent claims that “Weby” is the name of a small frog, and that N.S.K.A is an abbreviation for “Natrual Sweet Kissing Anytime”. The Panel finds this explanation dubious at best.

The other explanation sounds more plausible to this Panel; the Respondent registered the domain names in relation to its offering of Internet services including web-hosting in Slovakia. Respondent has described his business as a web-hosting company which constantly looks for some new and suitable portal names. It is unclear what the precise intention the Respondent had with the two disputed domain names when they were registered (discussed more in detail below). Under the second element of the Policy it suffices to note that it may be natural to use the geographical terms “slovenska” and “slovakia” in domain names which leads to websites of a firm that mainly has customers within Slovakia.

Be that as it may, as the Complainant must prove all three elements under the Policy, but fails under the third element (see below), it is not necessary for this Panel to conclude on whether the Respondent has a legitimate interest in the domain names or not.

C. Registered and Used in Bad Faith

It seems clear that there have been negotiations between the parties regarding the domain names at issue. There is, however, no documentation which is accessible to the Panel that Respondent registered the domain names “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant” as described by paragraph 4(b)(i) of the Policy.

It does not appear from the evidence submitted that Respondent registered the domain name for the purpose of disrupting the business of a competitor, or to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, or that Respondent has engaged in a pattern of such conduct.

As stated above under section 6 B, it seems likely that the Respondent registered the domain names in relation to its offering of Internet services including web-hosting in Slovakia. Because the Respondent offers a contradicting explanation, it is not completely clear what the Respondent wanted to do with the domain names. Did the Respondent plan to use the domain names for its own business, or was the intention to sell to the highest bidder? Either way, based on the case file and the generic character of the domain names, it seems likely the domain names initially appealed to the Respondent because of their generic character. In other words, to this Panel it does not seem likely that the Respondent had the Complainant and its trademark in mind when the Respondent registered the disputed domain names. In any event, there is no evidence from the Complainant firmly refuting the Respondent’s claim that it had not heard of the Complainant at the time the domain names were registered. Nor is there evidence in the case file refuting the claim that the Respondent chose the domain names because they consist of two common words which also describe Respondent’s business. Moreover, the Panel finally notes that Respondent has registered a large number of domain names, but there is no evidence in the case linking these registrations to activity that could indicate bad faith under the Policy.

Based on the above the Panel finds that the domain names were not registered and used in bad faith.

D. Reverse domain name hijacking

The final matter we are required to consider is whether the Complainant’s activities constitute reverse domain name hijacking which is defined under the Rules Paragraph 1 as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.

The Panel has considered this issue. Respondent has presented a number of matters relied upon in this regard, in particular:

(a) Complainant wishes to acquire the domain names because they are operated by the third largest Slovak web-hosting provider, and to thereby obtain illegal profit.

(b) Complainant has presented information which is not correct.

(c) Complainant attempts to monopolize the generic and descriptive term “Weby Slovakia”.

(d) Instead of registering domains which correspond to his trademark the Complainant wants to take profit from Respondent’s business.

Regarding the last mentioned issues the Panel will point out that it is not prohibited to register generic and descriptive terms as domain names. It is also allowed, in principle, to register domain names that do not correspond to the registrant’s trademarks.

Regarding the other matters, Respondent has not presented enough evidence. As mentioned above, one can also question the Respondent’s own account of the reasons justifying its registration of the domain name <webyslovenska.com>.

On basis on the above we decline to find that the Complainant’s activities constitute reverse domain name hijacking.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.


Peter G. Nitter
Presiding Panelist

Ladislav Jakl
Panelist

David E. Sorkin
Panelist

Dated: January 29, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1058.html

 

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