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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Mirela Zoita and Florin Popescu v. Westaco S.R.L.

Case No. DRO2007-0008

 

1. The Parties

The Complainants are Mirela Zoita and Florin Popescu, Zoetermeer, the Netherlands, represented by Cunescu, Balaciu & Associates, SCA, Romania.

The Respondent is Westaco S.R.L., Bucharest, Romania.

 

2. The Domain Name and Registrar

The disputed domain name, <desprecopii.ro> (the “Domain Name”) is registered with RNC.ro (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2007, in the English language with a translation in Romanian. On October 11, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 31, 2007, the Registrar 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”).

On November 5, 2007, the Complainants wrote to the Center requesting that the language of this proceeding be English, pointing out that the Registrar’s website appears to recognize both Romanian and English. There was no agreement between the parties as to the appropriate language, so the Center indicated to the parties that it would accept a Response in either English or Romanian. The Respondent objected to that decision and the Center stated that the Respondent’s objection would be notified to the Panel.

The Panel endorses the line taken by the Center in relation to the language of this proceeding and notes that all communications in the proceeding have in fact been successfully conducted in English.

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 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2007. The Response was filed with the Center on November 27, 2007, and in the English language.

The Center appointed Tony Willoughby as the sole panelist in this matter on December 4, 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.

On December 7, 2007, the Panel issued Procedural Order No. 1 in the following terms:

“The Panel has now read the papers through and it is plain that, while both parties are able to communicate satisfactorily in English, English is not their first language. The Panel is concerned to ensure that he has understood fully the parties’ positions.

In the Complaint, there is a particular contention to which the Respondent has not responded, namely: the Complainant contends that the Respondent acquired the domain name, <bebelusulmeu.ro>, in order to take advantage of the confusion caused with <bebelusultau.ro> and that this is a similar situation to the present one.

Ordinarily, the Panel would have been inclined to infer from the Respondent’s silence on this point that the Respondent does not challenge that contention. However, given the language issue, the Panel is reluctant to draw that inference without having heard further from the Respondent on that contention.

If the Respondent wishes to respond to this procedural order, the Respondent must do so by Sunday December 9, 2007. If the Complainant wishes to file a further submission in response, it must be filed with the Center by no later than Wednesday 12, 2007.

The decision date is hereby extended to December 24, 2007.”

On December 9, 2007, the Respondent filed its response to the Panel’s Procedural Order No. 1.

On December 10, 2007, the Complainants emailed the Center asking the Center to make a screen print of the Respondent’s site. The Center responded by suggesting that the Complainants make their own screen print and append it to the Complainants’ response to the Procedural Order.

On December 12, 2007, the Complainants filed their response to the Respondent’s submission of December 9, 2007.

On December 12 and 13, 2007, the Respondent sent further emails to the Center providing technical information relating to certain hotly disputed allegations made by the Complainants to the effect that the Respondent had tampered with DNS records in order to mislead the Panel.

On December 13, 2007, the Respondent again emailed the Center, this time objecting to aspects of the Complainants’ latest submission and seeking permission to file a further submission. The Panel acceded to that request, giving the Respondent until December 17, 2007, to do so.

On December 14, 2007, the Respondent emailed the Center seeking to put before the Panel confidential material, which was not to be disclosed to the Complainants. The request was forwarded to the Panel. The Panel refused the request on the basis that the norms of natural justice require that parties to an adversarial proceeding of this kind must see all the evidence upon which the ultimate decision is based.

On December 17, 2007, the Respondent filed its response.

There then followed two further submissions from the parties dated December 17, 2007 (from the Complainants) and December 19, 2007 (from the Respondent). The Panel read them, but they were unsolicited and the Panel did not find them of any assistance.

 

4. Factual Background

Since at least mid-June, 2001 the Complainants have operated a website connected to the domain name, <desprecopii.com>, a domain name which they registered on November 6, 2000. The website is a Romanian language website providing a variety of information relating to children, parenting and the like.

The English translation of “Desprecopii” is “aboutchildren”.

On November 26, 2001, the Respondent registered the Domain Name and linked it to its website at “www.copilulmeu.ro”, which features content similar to that of the Complainants’ website. The English translation of “copilulmeu” is “mychild”.

The Complainants are the proprietors of Romanian trade mark registration number 59251 DESPRE COPII (words) dated August 8, 2003 in classes 25 (clothing), 28 (toys) and 42 (certain website services).

On April 4, 2005 the Complainants wrote to the Respondent drawing the Respondent’s attention to their rights and demanding transfer of the Domain Name. The Respondent did not reply.

 

5. Parties’ Contentions

A. Complainants

The Complainants contend that the Domain Name is identical to their Romanian registered trade mark, DESPRE COPII.

They contend that by the time the Respondent registered the Domain Name the Complainants’ website was very well-known in Romania and that they had by then acquired exclusive rights (albeit not registered rights) in relation to the mark DESPRE COPII.

They further contend that the Respondent has no rights or legitimate interests in respect of the Domain Name. They contend that the Respondent selected the Domain Name in order to ride on the back of the Complainants’ goodwill generated through their website at “www.desprecopii.com”. They state that the Respondent has not developed its own website under and by reference to the Domain Name, but simply linked it to the Respondent’s website at “www.copilulmeu.ro”. The Complainants produce evidence to show that confusion has occurred and claim that this is what the Respondent intended.

The Complainants contend that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. They assert that this is not the only occasion upon which the Respondent has done this kind of thing. They contend that the Respondent registered the domain name, <bebelusulmeu.ro> in order to take advantage of another established website connected to the domain name, <bebelusultau.ro>, a website for a leading online shop for parents.

In a submission filed following the Procedural Order the Complainants produce in evidence a statement from the owner of the <bebelusultau.ro> domain name, in which the owner of that domain name complains that the Respondent’s domain name <bebelusulmeu.ro> (registered a year later and used in relation to a substantially identical business) is causing confusion.

The Complainants contend that they have tried to settle the dispute amicably, pointing to their letter of demand sent to the Respondent in April, 2005, but that the Respondent did not reply.

B. Respondent

The Respondent was incorporated on October 17, 2001, and shortly thereafter on November 26, 2001, registered three domain names all associated with children with a view to developing a business related to children. The other domain names (apart from the Domain Name) were <copilulmeu.ro> (“mychild”) and <prenatal.ro>.

In February, 2003 the Respondent registered two more domain names, <bebelsulmeu.ro> (“mybaby”) and <copilultau.ro> (“yourchild”). In the same month, the Respondent registered COPILUL MEU as a trade mark in Romania in classes 16, 35, 39, 40, 41 and 42.

The Respondent contends that the fact that the Complainants did not register the Domain Name when they had the opportunity to do so, is a clear indication that the Complainants were not interested in the Domain Name.

The Respondent asserts that the term, “despre copii” is very descriptive and apt to describe its business. The Respondent asserts that when it registered the Domain Name it did not have the Complainants in mind. It also points out that at that time the Complainants did not have a registered trade mark.

The Respondent contends that it does have rights and legitimate interests in respect of the Domain Name. It reiterates that the term “despre copii” is very descriptive and a legitimate term for it to use in relation to its business devoted to everything to do with children. The very descriptiveness of the term is such as to give the Respondent “irrevocable rights and legitimate interest” in respect of the Domain Name at point of registration.

The Respondent observes that the Complainants’ trade mark registration only covers three classes, thereby leaving it open to others to make legitimate use of the mark in other classes such as 16 (publications), 40 (printing and editing) and 35 (advertising and travel services).

The Respondent points to the lack of any evidence that it knew of the Complainants or their website when it registered the Domain Name. It denies all knowledge of the press article about the Complainants, which is exhibited to the Complaint. The Respondent contends that all it had in mind at time of registration of the Domain Name was the descriptive meaning of the term.

The Respondent casts doubt on the evidence put before the Panel as to the fame of the Complainants’ website in 2001.

The Respondent denies that it registered and is using the Domain Name in bad faith. It registered the Domain Name for the good faith purpose for which it is using it, namely as a descriptive term apt to describe the nature of its business.

The Respondent denies that there is any likelihood of confusion. The Respondent points to the different liveries of the websites and the fact that on its website its COPILUL MEU trade mark is prominently featured.

In its response to the Procedural Order the Respondent denies the Complainants’ allegation regarding the Respondent’s registration of the domain name, <bebelulsulmeu.ro> (“my child”). The Respondent states that that meaning is noticeably different from “bebelsultau” which translates as “your child”. The Respondent claims that in this case too it simply registered the domain name for its descriptive meaning along with its other domain names of a similar kind. The Respondent denies all possibility of confusion.

The Respondent then goes on to point out other examples of common descriptive terms, which are registered by different people in different domains or in slightly different forms (e.g. ‘parinti’ (“parents”) in both ‘.ro’ and ‘.com’ and ‘copii’ (“children”) and ‘copiii’ (“the children”) both in ‘.ro’).

The Respondent contends that the Complaint should be dismissed and that there should be a finding of Reverse Domain Name Hijacking.

C. Post-Procedural Order Submissions

The submissions, which the Panel proposes to take into consideration, are set out above. To the extent that the parties’ post-Procedural Order submissions go into other matters, not anticipated and/or rehearsed in the Complaint and the Response, the Panel proposes to ignore them.

 

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainants must prove that

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

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

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

If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:

“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding.”

Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”

B. Identical or Confusingly Similar

It is not in dispute that the Complainants have a Romanian trade mark registration of the mark, DESPRE COPII. Accordingly, given that for the purposes of paragraph 4(a)(i) of the Policy the space and the generic domain suffix may be ignored, the Panel has no hesitation in finding that the Domain Name is identical to a trade mark in which the Complainants have rights.

While that is sufficient for the Complainants to overcome the first hurdle of paragraph 4(a) of the Policy, they do nonetheless face a difficulty in that the trade mark registration in question post-dates the date of registration of the Domain Name and this could have an impact on their ability to overcome the third hurdle, namely proving that when the Respondent registered the Domain Name, he did so with knowledge of the Complainants’ rights and with bad faith intent.

This issue is dealt with below.

C. Rights or Legitimate Interests

It is not in dispute that the Respondent runs an online business concerned with matters relating to children and their upbringing and that he does so directly or indirectly through a number of domain names, all of which are, on their face, descriptive references to children in Romanian or English. The Domain Name is Romanian for “about children”. Other domain names of the Respondent are “my baby” in both Romanian and English, “my child” in Romanian, “your child” in Romanian and “pre natal”.

Whether or not the Respondent’s use of the Domain Name constitutes a bona fide offering of goods and services for the purposes of paragraph 4(c)(i) of the Policy depends to a very large extent upon the Respondent’s state of knowledge/mind at the time it registered the Domain Name.

If, for example, the Respondent registered the Domain Name ignorant of the Complainants’ website, then it is difficult to suggest that by its use of the Domain Name in relation to a Romanian website “about children” it has not established at the very least a legitimate interest in respect of the Domain Name. In that event, to the extent that there has been confusion, it has simply been the natural consequence of two competitors trading under and by reference to an apt description of their business activity.

If, on the other hand, at time of registration of the Domain Name the Respondent was well aware of the Complainants’ website and the reputation and goodwill that the Complainants were in the process of developing, then the situation is very different. The severe risk of confusion will have been obvious to the Respondent and he must in such circumstances be taken to have intended the confusion, which has resulted. A business built up under the Domain Name in such circumstances cannot sensibly give rise to the establishing of any right or legitimate interest in respect of the Domain Name.

In the Response, the Respondent makes the following statements:

1. “The Respondent registered the domain name without having the Complainant in mind, simply because it incorporates a common descriptive expression.”

2. “…. There is no evidence that the Respondent knew about the Complainant or his website at the moment he registered the domain name …”

3. “… the website ‘desprecopii.com’ was just launched at that time and the Respondent did not read or had been aware about the newspaper article presented by the Complainant.”

None of these statements is a categoric denial of any knowledge of the Complainants at the time that the Domain Name was registered. The first statement says that the Respondent did not have the Complainants in mind at that time, the second is merely a comment on the lack of any evidence and the third is a denial of knowledge of a newspaper article about the Complainants, which pre-dated registration of the Domain Name.

The absence of a clear denial of knowledge of the Complainants’ website weighs against the Respondent.

Another factor, which weighs against the Respondent is that the Panel regards it as almost inconceivable that the Respondent could have set up his online business and registered his domain names without being aware of what was already available in the Romanian marketplace. The Panel is satisfied that had he made the barest of enquiries, he would have come across the Complainants’ website, whether it was a search against the name Despre Copii (or desprecopii) or whether it was an investigation into the Romanian language websites in the Respondent’s planned field of activity.

A further factor is the issue over the <bebelusulmeu.ro> and <bebelusultau.ro> domain names. The Respondent explains that it is a completely different situation from the one the subject of this dispute because the Respondent had registered the English language equivalent of <bebelusulmeu.ro> (i.e. <mybaby.ro>) well before the domain name <bebelusultau.ro> was registered. The Respondent also contends that in any event those two domain names are completely different with clearly differing meanings (“mybaby” and “yourbaby”). Nonetheless, as the Complainants point out, in the world of domain names the beginning of a name is likely to register more prominently in the mind of an Internet user than the tail end of the name. The statement from the owner of the <bebelusultau.ro> domain name as to the confusion, which has resulted from the Respondent’s registration of such a similar name, does not strike the Panel as surprising. Here again, there is no denial of any knowledge of the existence of the online shop at <bebelusultau.ro> website and the Panel cannot accept the Respondent’s protestations as to the lack of any likelihood of confusion resulting from his selection of <bebelusulmeu.ro> as the domain name for a similar website.

Finally, there is the failure of the Respondent to respond to the Complainants’ letter of demand in April, 2005. On its own, perhaps, it does not amount to much, but it is nonetheless a factor for the Panel to weigh in the balance.

The combination of factors weighing against the Complainants are (i) the very nature of the domain name, which, although it is now a registered trade mark, is very descriptive and might reasonably and justifiably have been wanted for use by anyone operating in the field; (ii) while the Complainants’ domain name had been registered about one year ahead of the Respondent’s registration of the Domain Name, according to Annex 4 to the Complaint the Complainants’ website only appeared about 5 months ahead of the Respondent’s registration of the Domain Name; (iii) the Complainants’ evidence as to the fame of their website as at the date of the Respondent’s registration of the Domain Name is very sparse.

The Panel has come to the conclusion that the Complainants have made out a prima facie case under this head and that the Respondent’s answer is insufficient.

Accordingly, the Panel finds on balance that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

The Panel has concluded that the Respondent has no rights or legitimate interests in respect of the Domain Name, on the basis that the Respondent registered the Domain Name with knowledge of the reputation and goodwill that the Complainants were developing under and by reference to their <desprecopii.com> website. Accordingly, the Respondent’s business offering at the website connected to the Domain Name cannot be regarded as a bona fide offering of goods and services for the purposes of paragraph 4(c)(i) of the Policy.

It follows therefore that when the Respondent registered the Domain Name it knew that confusion would result. There is no question that confusion among the Complainants’ correspondents has resulted. The Complainants’ evidence on this score is persuasive and the Respondent has not attacked that evidence in any way. Given that, apart from the generic domain suffixes, the domain names are identical, the Panel would be astonished if confusion had not resulted.

The Respondent has come forward with arguments as to why confusion should not result, but in the face of the Complainants’ confusion evidence those arguments are to no avail.

The Panel finds that when the Respondent registered the Domain Name it knew that the Complainants were trading successfully in the same field and it knew that Internet users would be confused between the two service offerings. The Respondent must therefore have hoped and intended that the confusion would result in commercial disadvantage to the Complainants and a commensurate benefit to the Respondent.

The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(b)(iii), 4(b)(iv) and 4(a)(iii) of the Policy.

 

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, <desprecopii.ro>, be transferred to the Complainants and the Respondent’s request for a finding of Reverse Domain Name Hijacking against the Complainants is dismissed.

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Tony Willoughby
Sole Panelist

Date: December 24, 2007