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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Stokely-Van Camp, Inc. v. Ion Puspurica

Case No. DRO2008-0024

1. The Parties

The Complainant is Stokely-Van Camp, Inc., of Chicago, United States of America, represented by Rominvent S.A., Romania.

The Respondent is Ion Puspurica, of New York, United States of America.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 11, 2008. On December 12, 2008, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the disputed domain name. On December 15, 2008, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended complaint on December 22, 2008. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 January 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2009. The Response was filed with the Center on January 23, 2009.

The Center appointed Mihaela Maravela as the sole panelist in this matter on January 29, 2009. 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.

Language of the proceedings

As regards the question of the language applicable to this dispute, paragraph 11(a) of the Rules provides:

"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."

As was stated by the panel in Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004:

"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding."

Also, the consensus view of the WIPO UDRP panelists is that the language of the proceedings is the language of the registration agreement, unless both parties agree otherwise (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 4.3).

In this case, there is no evidence of agreement between the parties with respect to the language of the proceedings and, according to the information received from the Registrar, the language of the registration agreement is English. Also, both parties have submitted the Complaint, and the Response in the English language - the language of the registration agreement.

Under these circumstances, the Panel determines under paragraph 11(a) of the Rules that the language of these proceedings be English.

4. Factual Background

The Complainant is Stokely-Van Camp Inc., with its principal place of business in Chicago, United States of America (or "U.S."), and is a part of PepsiCo company. Gatorade is based on a scientific formula and it has proved its qualities against thirst, by replacing fluids and electrolytes and providing energy from the carbohydrates in order to improve athletic performance. Gatorade is the official drink of NFL, NBA, WNBA, Major League Baseball, Major League Soccer, U.S. Soccer, WUSA and to numerous professional teams, university and amatory teams and too many events all over the world.

Since 1989, GATORADE is a registered trademark in Romania, and is owned by Stokely-Van Camp Inc., which now is a part of PepsiCo Company. PepsiCo products are distributed in Romania and Moldavia Republic by the authorized distributor, Quadrant Amroq Beverages SA.

5. Parties' Contentions

A. Complainant

The Complainant alleges that it owns several national and communitarian GATORADE trademark registrations. Said trademarks are registered and used for products in classes 32, 25, 30, 32. According to the Complainant, GATORADE trademarks are well-known all over the world, including in Romania.

The Complainant contends that the domain name is identical to its GATORADE trademark.

The Complainant contends that the Respondent has no prior rights or legitimate interest in or to its trademark. It contends that the Respondent is not a licensee of the Complainant, nor is the Respondent otherwise authorized to use its trademarks; that the GATORADE trademark is well known, internationally registered and distinctive and that the Respondent could have chosen any number of other domain names while it has chosen one identical to its trademarks which implies a lack of any valid right or interest in the domain name.

The Complainant contends that the Respondent has registered the domain name in bad faith. It contends that there was no evidence of the Respondent's use, or demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services. Also, the Complainant contends that the Respondent is not making any legitimate non-commercial or fair use of the domain name. It contends also that because of the wide spread use and reputation of the trademark GATORADE Internet users would immediately believe that the disputed domain name is in some way associated with the Complainant. Finally, the Complainant affirms that the domain name does not resolve to a website or another on-line presence, and the passive holding of a domain name is indicative of bad faith registration and use.

B. Respondent

The Respondent contends that the domain name <gatorade.ro> was registered in good faith on August 8, 2005. Also, it contends that the domain name may appear to an English speaker to be similar in spelling with the trademark claimed by the Complainant, but in Romanian, the official language of the country where the domain name was registered; it differs from the referenced trademark not only in spelling, but also on meaning, pronunciation and use. In this respect, the Respondent contends that the domain mane <gatorade.ro> is the spelling of the Romanian phrase "Gato ràўde" which translates in English into "Gato is laughing", where "Gato" is the proper name of a cat.

The Respondent also contends that he has made preparations to use, used and is using the domain name in connection with a bona fide online presence and that he is making a legitimate non-commercial or fair use of the domain name with it's clear and undisputed meaning in the Romanian language, without intent for commercial gain, or to misleadingly divert consumers or to tarnish the trademark at issue.

Also, the Respondent asserted that the Complaint was brought in bad faith because the Complainant's authorized representative is/has on staff native Romanian speakers who would immediately recognize the legitimate use of the verb "ràўde" in this context, and could not possibly set forth in good faith the allegations contained in the Complaint, and because the Complainant made no attempt to contact the Respondent in order to clear any eventual misunderstanding.

6. Discussion and Findings

In accordance with paragraph 15(a) of the Rules, "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." Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and

(ii) that the 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 domain name fully incorporates the Complainant's prior trademark GATORADE. The Complainant has provided evidence that its trademark GATORADE was registered on the Romanian territory since 1989 and renewed in 2000 and has also pointed to several identical or similar trademarks registered in other countries. It is well accepted that a top-level domain, in this case ".ro", is to be ignored when assessing identity or confusing similarity of a trademark and a domain name (See, e.g. VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Billa Aktiengesellschaft v. Ganea Nicolae, WIPO Case No. DRO2002-0001; Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L., WIPO Case No. DRO2006-0001; Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001).

The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The consensus view of WIPO panelists concerning the burden of establishing an absence of Respondent's rights or legitimate interests in respect of the domain name is as follows:

"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP." (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.)

In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the domain name.

The primary issue in this case is whether it may be held, as the Respondent argues, that it is making a noncommercial use of the domain name, within the meaning of 4(c)(iii) of the Policy. While the Respondent's current site may constitute, in the Respondent's opinion, noncommercial use of the domain name, it appears that the website was modified subsequent to the Center's receipt of the Complaint in this proceeding. As such, from the information available in the file it appears that the website was inactive up to January 5, 2009. Only after the Respondent and the Center received the Complaint the site was modified as to include certain data that might constitute non commercial use.

This was also dealt by other panels in the sense that "the pivotal question is whether Respondent can claim non-commercial use of a domain name, within the meaning of 4(c)(iii) of the Policy when such use commences after the filing of the Complaint". (See Salomon Smith Barney Inc. v. Salomon Internet Services, WIPO Case No. D2000-0668)

The Panel here also agrees with the conclusion in the above mentioned decision that, under such circumstances, such non-commercial use may not be considered legitimate, as required by the Policy. To hold otherwise would thwart the intent of the Rules.

In addition, even if the website would have not been modified further to the Complaint being notified, the Panel would have still been reluctant to find a legitimate non-commercial use in the sense of the Policy. As such, the website to which the domain name resolves now comprises a video clip with a laughing cat (a youtube video clip) and the following wording (in Romanian language):

"Gato is a funny cat.

Gato is laughing all day.What are you doing?

Visit us every day for a good laugh with Gato and his friends"

Such use might not be considered as legitimate non-commercial use since:

- the word "gato" is not normally used in the Romanian language to designate a "cat", rather the word "pisicДѓ" or "màўЕЈДѓ" is used to such an end,

- the word "gato" is not found in the Dictionary of the Romanian language, but in the Romanian neologism dictionary, therefore it can not be credibly argued that it is normally used to designate a "cat" on the Romanian territory,

- the expression "gato ràўde" which means "a cat which laughs" does not have any particular meaning in the Romanian language as a saying, and it does not represent a commonly used expression to suggest jokes, having fun and the like,

- therefore, it could not reasonably be held that this is a legitimate non-commercial use of the domain name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

To fulfill the third requirement, the Complainant must prove that the domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a number of circumstances that shall, in particular but without limitation, be evidence of registration and use of a domain name in bad faith:

(i) Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant who is the owner of the trademark, or to a competitor of the Complainant, for a valuable consideration in excess of the Respondents documented out-of-pocket costs directly related to the domain name.

(ii) Circumstances indicating that the Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct.

(iii) Circumstances indicating that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.

(iv) By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the said website location or of a product or service on that website location.

However, the requirement of the Policy of a domain name being used in bad faith is not limited to positive actions (see, e.g. Beiersdorf AG v. Web4comm Srl Romania, WIPO Case No. DRO2005-0002). In this particular case, the following actions are considered as registration and use in bad faith:

- the Respondent has provided no persuasive evidence whatsoever of any actual or contemplated good faith use by it of the domain name;

- in the Panel's view, the Respondent changed the website to which the domain name resolves after the Complaint was received with a view to invoke a legitimate non commercial use (See e.g. Maplin Electronics Limited v. Lee Jeongsoon, WIPO Case No. D2006-0011; V&V Supremo Foods, Inc. v. pxlchk1@gmail.com, WIPO Case No. D2006-1373, in the sense that the change in the website after receiving the complaint was evidence of bad faith);

- The Complainant trademark is well-known, at least in the United States of America were the Respondent resides (GATORADE is the official drink of NFL, NBA, WNBA, as it results from the website "www.gatorade.com");

- in the present circumstances, any use of the domain name would lead the public to the conclusion that it, and its connecting websites, were associated with the Complainant.

In light of these particular circumstances, the Panel concludes that the Respondent's passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name is being used in bad faith by the Respondent.

Given the above circumstances, the Panel concludes that the domain names was registered and used in bad faith.

The Panel concludes that the Complainant has succeeded in proving the three elements of paragraph 4(a) of the Policy.

Reverse domain name hijacking

Reverse Domain Name Hijacking is defined in the Rules as using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name. Given the circumstances described above the Panel dismisses Respondent's claim on this point.

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 <gatorade.ro> be transferred to the Complainant.

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Mihaela Maravela
Sole Panelist

Dated: February 12, 2009