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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lamy S.A. v. Renalo Investments Limited

Case No. DRO2007-0003

 

1. The Parties

The Complainant is Lamy S.A., of Ruell-Malmaison, France, represented by Valentin Berea, Romania.

The Respondent is Renalo Investments Limited, of Nicosia, Cyprus, of Cyprus, represented by Iulian-Lucian Maidanuc, Romania.

 

2. The Domain Name and Registrar

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

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2007. On April 26, 2007, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the domain name at issue. On May 14, 2007, RNC.ro transmitted by email to the Center its verification response confirming that the Respondent 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”), 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 May 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2007. The Response was filed with the Center on June 8, 2007.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on June 20, 2007. 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 Panel concludes that, according to Rules, paragraph 11(b), the language of the proceedings shall be English for the following reasons:

- the Complainant requested the English language be used in these proceedings;

- there are no provisions on the Registrar’s website for a domain name applicant to choose between English or Romanian as the controlling language of the registration agreement. In the past, this Panel has made the same factual finding, see: Inter IKEA Systems B.V. v. SC Agis International Sport S.R.L. WIPO Case No. DRO2006-0001, DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA, WIPO Case No. DRO2006-0003, WIPO Case No. DRO2006-0006, Prelatura Del Opus Dei, Region de Espaсa v. Sebastian Koga;

- the registration agreement was available both in English and Romanian, and in the absence of any statement to the contrary from the Respondent the Panel draws the inference that the domain name applicant accepts the use of both languages;

- neither the Complainant nor the Respondent are Romanian companies, or Romanian residents;

- in addition, the Respondent filled its Response both in English and Romanian language. The Respondent did not object to the use of English as the language of these proceedings.

 

4. Factual Background

The Complainant is LAMY SA, a company having its headquarters in France.

The Complainant is the registered owner of several international trademarks named TELEROUTE registered in 1987 and 1990, according to the Madrid Protocol and having Romania as the designated country, for products and services of classes 16, 35, 38, 39, 41

The Complainant has also registered TELEROUTE as community trademark under No. 004097234 and 00409726 for the classes 9, 35, 38, 39, 42 and also as a national mark in France since 1985 under the No.1299672.

The disputed domain name is <teleroute.ro> and is registered under the name of Renalo Investments limited since 2005, a Cypriot company. The disputed domain name is linked to a website that appears to be operated by a Romanian company called Active Soft SRL.

 

5. Parties’ Contentions

A. Complainant

The Complainant alleges that:

- The disputed domain name is identical to several trademarks owned by the Complainant;

- The Respondent cannot justify any rights or legitimate interests in the disputed domain name as it is not commonly known or identified by the name TELEROUTE. Furthermore, the Respondent is not the holder of any trademark or other intellectual property right consisting of or comprising the name TELEROUTE;

- The Respondent has allowed the Romanian company Active Soft SRL to operate a website linked to the domain name at issue;

- The use of the disputed domain name by the Respondent through Active Soft SRL is made with the intention of obtaining commercial gain by diverting and misleading consumers to believe that the services offered under the disputed domain name came from the same source (or are related) to the services offered by the Complainant under the TELEROUTE marks;

- The disputed domain name was registered and has been used in bad faith, as the Respondent and the actual user of the disputed domain name knew about the online UK-Europe freight exchange offered under the TELEROUTE marks by the Complainant. Hence, the Respondent intended to benefit from the notoriety of the Complainant’s marks.

B. Respondent

In response to the Complainant’s allegations, the Respondent contends that:

- Despite that the disputed domain name is identical to the Complainant’s trademarks, the Respondent has a legitimate interest in the disputed domain name. Before any notice of the dispute, the Respondent through Active Soft SRL has used the disputed domain name to offer to Internet users a service which is different from the services offered by the Complainant through its TELEROUTE trademarks and its website “www.teleroute.com”;

- TELEROUTE comprises two generic terms which cannot entitle the Complainant to absolute protection for its marks;

- The disputed domain name has not been registered and is not being used in bad faith, and the Complainant has not brought any strong evidence for neither of the circumstances provided by the Policy, para.4.(b) which, if demonstrated could prove the Respondent’s bad faith;

- The Complainant does not bring convincing evidence of the notoriety in Romania of the Complainant’s of the TELEROUTE mark.

 

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) that the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) that Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant alleges and the Respondent agrees that the disputed domain name is identical to the Complainant’s TELEROUTE mark.

The Panel agrees, and finds the disputed domain name identical to a mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent has never been known by the disputed domain name, which the Respondent does not deny.

In addition, the Respondent appears to have granted the use of the disputed domain name to a Romanian company — Active Soft SRL for administration, operation and development of the websites of this company. This fact, itself, cannot be interpreted as constituting a bona fide offering of services before any notice of the dispute.

From the fact of giving the use to a third party, the Panel infers that the Respondent is aware and agrees (expressly or implicitly) with the use and content of the website where the disputed domain name resolves.

Such use is, according to the Respondent’s allegation, in connection with an Active Soft website at “www.e-transport.ro” which offers an electronic auction system for road freight transport. Such services are obviously similar to the services of freight exchange in Europe and internationally offered by the Complainant under the TELEROUTE mark.

From the evidence submitted by the Complainant, appendix 7 to the Complaint, it appears that on the website “www.teleroute.ro”, edited by Active Soft SRL, the TELEROUTE mark is reproduced next to expression “www.e-transport.ro”, Active Soft SRL’s website, where the services of this company, electronic auction system for road freight transport, are promoted.

None of these circumstances in the Panel’s view constitute bona fide preparation to use or use of the disputed domain name, as the Panel sees a strong intent of the Respondent to benefit from the Complainant’s TELEROUTE trademark.

The explanations of the Respondent as to the process by which it came to the use of disputed domain name do not satisfy the Panel. The Panel does not find evidence on the record availing the Respondent’s alleged lack of knowledge of the Complainant’s trademark used for freight exchange services in Europe and internationally.

As for the allegations that the TELEROUTE mark is generic and not known in the Romanian market, the Panel considers that operating the disputed domain name on the Internet undermines such reasoning. The Internet has no geographical boundaries and the use of a trademark can be easily checked online.

After taking into account all the above considerations the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name

C. Registered and Used in Bad Faith

There is no denial from the Respondent that the disputed domain name is used in connection with a website at “www.e-transport.ro” which generates commercial gain to the Respondent through the use of Complainant’s trademark.

In addition, as stated above, there is no doubt that the Respondent and the actual user of the disputed domain name knew that the domain name at issue is identical to the Complainant’s trademark TELEROUTE.

The Panel is satisfied from the available evidence that the disputed domain name is intentionally being used to attract Internet users to the associated website for commercial gain by creating a likelihood of confusion with the Complainant’s mark; free-riding in essence on the good-will in that mark.

In these circumstances, the Panel finds that the disputed domain name was registered and is being used in bad faith.

 

7. 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 <teteroute.ro> be transferred to the Complainant.

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Beatrice Onica Jarka
Sole Panelist

Date: July 4, 2007