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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

OMV AG v. SC Mondokommerz SRL

Case No. DRO2005-0005

 

1. The Parties

The Complainant is OMV AG, Austria, represented by Schцnherr Rechtsanwдlte OEG, Austria.

The Respondent is SC Mondokommerz SRL, Romania, represented by Bejenaru & Asociatii, Romania.

 

2. The Domain Name and Registry

The disputed domain name <omv.ro> is registered with RNC.ro.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2005. On October 7, 2005, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the domain name at issue. On November 16, 2005, RNC.ro transmitted by email to the Center its last 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 November 15, 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 on November 16, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2005. No Response was filed by the Respondent within the time specified in the Notification of Complaint. Accordingly, the Center notified the Respondent and the Complainant’s representative that the Respondent had failed to comply with the deadline indicated in the Notification of Complaint and that it would proceed to appoint an Administrative Panel. On December 14, 2005, the Center received Respondent’s response. On December 16, 2005, the Center acknowledged Respondent’s late Response.

The Center appointed Dr. Fabrizio Bedarida as the Sole Panelist in this matter on December 22, 2005. 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.

The language of the proceeding is English.

 

4. Procedural Matters

It is convenient before setting out the submissions of the parties and the factual background to this Complaint, to deal with the procedural issue in this case i.e. to what extent the Panel should take into account the late Response submitted by the Respondent.

Respondent filed a late Response on December 14, 2005, i.e. 8 days after the time limit of December 6, 2005, one week after he had received WIPO Notification of Respondent Default and almost a month after he had received WIPO Notification of Complaint and Commencement of Administrative Proceeding. On December 14, 2005, Respondent sent an email to Complainant requesting the Complainant to agree, with a written stipulation, to extend the period of time for the filing of a late response. Proposal that was refused by Complainant. In the above said email, Respondent claimed that the late filing was due to exceptional circumstances.

The Center received the Respondent’s Response after the deadline indicated in the Notification of Complaint. The Panel therefore finds that it does not comply with paragraph 5 of the Rules. Respondent has not given any proof of the alleged existence of exceptional circumstances that could justify the late filing. Respondent’s claimed exceptional circumstances consist in: the misplacement of files in the Respondent’s archive and the need to extensively research the complex case-law surrounding the subject. The panel has no possibility to verify the Respondent’s contentions Although the late Response, if considered, would not have had in any way changed the reasoning and the outcome of this decision, the panel finds that the Respondent’s contentions do not represent an exceptional case pursuant to Paragraph 14 of the Rules and thus has decided to refuse the Respondent’s submissions.

In this sense a number of previous decisions, see DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers, WIPO Case No. D2003-0780 and 1099 Pro, Inc. v. Convey Compliance Systems, Inc., WIPO Case No. D2003-0033 where panels have held that late responses should be disregarded “absent good cause”. And Fashiontv.com GmbH v. Mr. Chris Olic, WIPO Case No. D2005-0994 the panel also addressed the issue of late responses in its decision in HQUK Limited v Head Quarters, WIPO Case No. D2003-0942. In that decision the panel noted that an “exceptional case” was required under paragraph 10(c) of the Rules for extensions of time under the Rules and expressed the view that the circumstances that must be shown for a late submission to be accepted are at least as strict. In that decision the panel went on to note as follows: “Further, the comments of the majority of the panelists in 1099 Pro, Inc. v. Convey Compliance Systems, Inc., WIPO Case No. D2003-0033 would seem to suggest that panels are now likely to take a stricter view on whether a party has shown good cause than might have been the case when the UDRP process was still relatively new”. Indeed, as was more recently pointed out by the panel in the case of Museum of Science v. Jason Dare, WIPO Case No. D2004-0614, “many panels have disregarded late filed responses making clear that it is important to apply the Rules as written, absent a good reason, otherwise parties will feel free to disregard deadlines and Respondents will regularly submit late responses”. It is for the party seeking to submit a late submission to provide justification for doing so. So has the Respondent shown good cause or exceptional circumstances in this case? The Respondent claims that it has “encountered difficulty in locating the materials provided as evidence hereto under the ‘bad faith’ criterion within the 20 days permitted by the Policy”. Further it argues that the delay was not material since the Response was filed prior to any consideration of the Complaint by the anel and that the harm on the Respondent should the Response not be considered by the anel outweighs any harm to the Complainant should the Response be taken into consideration. Whilst the lack of impact on the Complainant is an important factor, in the view of the Panel this is not sufficient. The Respondent must also give reasons for the delay and the greater the delay the more compelling those reasons. The Panel believes that a mere assertion by the Respondent of “difficulties” in obtaining evidence, without any explanation of what those “difficulties” were, is not sufficient. Further the materials proffered by the Respondent as “evidence … under the ‘bad faith’ criterion” are limited (i.e. a two page domain name transfer agreement and a receipt) and it is certainly not apparent on the face of these documents why they would be “difficult” to locate.

 

5. Factual Background

Complainant is the owner of several trademark registrations among them there is also the International trademark OMV registered since 1985 in connection with. Moreover Complainant and its subsidiaries are the registrants of several country-related domain names such as: <omv.com>, <omv.at>, <omv.cz> and <omv.sk>.

Complainant’s trademark registrations predate the registration of the Respondent’s domain name <omv.ro>.

 

6. Parties’ Contentions

A. Complainant’s submissions

The Complainant argues that the domain name <omv.ro> reproduces entirely the Complainant’s trademark OMV, since it is well established that the mere adjunction of the ccTLD “.ro” is not a distinguishing feature and does not change the likelihood of confusion. As a result, the domain name is confusingly similar to the numerous trademarks registered by the Complainant.

The Complainant submits that the Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register its trademark and service marks, or to seek the registration of any domain name incorporating the Complainant’s trademarks.

Furthermore, the Respondent has no prior rights or legitimate interests in the domain name and he is not known under the name “OMV” or any similar term.

The domain name was registered and used in bad faith.

The Respondent has not used the domain name in connection with a bona fide offering of goods or services. The website under the disputed domain name is not active, hence is a passive holding case.

Respondent offered the disputed domain name for sale to Complainant for an amount in excess of his out of pocket costs directly related to the disputed domain name.

Respondent has registered the domain name in dispute to create the impression that his business is in some way associated with Complainant.

As Respondent’s representative Mr. Horvath assisted Complainant in finding dealers that were to operate OMV filling stations in Cluj-Napoca and the surrounding area, Respondent was well aware of Complainant’s activities and trademark.

On February 8, 2005, the website under the disputed domain name showed an explicit pornographic content with animated pornographic thumbnails that linked to pornographic videos and pictures and to a website hosting a sex-shop. The display of pornographic content on the website under the disputed domain name shows Respondent’s intention to disrupt Complainant’s business.

B. Respondent

No Response was filed by the Respondent within the time specified in the Notification of Complaint.

 

7. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain names registered by the Respondent be transferred to the Complainant:

(1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds the disputed domain name <omv.ro> to be confusingly similar to the trademark OMV owned by the Complainant. As indicated by the Complainant and in accordance with many decisions rendered under the Policy the addition of the country code TLD “.ro” is not a distinguishing feature. In other words, the mere addition of this term does not have such an influence upon the overall impression that it would exclude the likelihood of confusion between the domain name and the Complainant’s trademark (see Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199).

The Complainant has thus succeeded in demonstrating the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

(a) that before any notice to the respondent of the dispute, he or she used or made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(b) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or

(c) that the respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Respondent does not appear to have any connection or affiliation with the Complainant, who has not licensed or otherwise authorised Respondent to use or apply for any domain name incorporating the OMV trademark. Respondent has not been known under this domain name. Respondent does not appear to make any legitimate use of the domain name for his own commercial or non-commercial activities, in fact the domain name <omv.ro> is not active. Respondent has not filed any Response within the time specified in the Notification of Complaint and has not given proof of exceptional circumstances to justify the late response. Therefore, the Panel concludes that the absence of any legitimate use and the Respondent’s failure to justify the use of the disputed domain name, constitutes prima facie evidence of a lack of rights to or legitimate interests in the domain name.

Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

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

(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 holder’s website or location or of a product or service on the holder’s website or location.

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

In the absence of contrary evidence, the Panel considering that

Complainant has given proof through signed Affidavits that in the spring of 1999 Respondent’s representative assisted Complainant in finding dealers that were to operate OMV filling stations in Cluj-Napoca and that the same representative offered to sell the domain name <omv.ro> to Complainant for a sum ranging between 800 United States dollars and 1,000 United States dollars. Complainant has also shown that on February 8, 2005, the website under the disputed domain name showed an explicit pornographic content with animated pornographic thumbnails that linked to pornographic videos and pictures and to a website hosting a sex- shop while the website is now not active.

The Panel finds that Respondent had actual knowledge of Complainant’s rights when he registered the disputed domain name. The Panel, in accordance with previous decisions issued under the UDRP, is of the opinion that actual knowledge of Complainant’s trademark and activities at the time of the registration of the disputed domain can be considered an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

Moreover, the Panel agrees with Complainant’s allegations that the display of pornographic contents on the website under the disputed domain name is a clear indication that the Respondent is using the domain name at issue in order to disrupt Complainant business and or to force Complainant to buy the disputed domain name.

In addition, the offer to sell the disputed domain name for an amount exceeding the holder’s documented out-of-pocket costs directly related to the domain name is further inference of bad faith registration and use of the domain name.

 

8. Decision

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, <omv.ro> be transferred to the Complainant.

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Fabrizio Bedarida
Sole Panelist

Dated: January 5, 2006