WIPO

 

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Industrias Romi S.A. v. Renown SC

Case No. D2001-1217

 

1. The Parties

The Complainant is Industrias Romi S.A., of Av. Perola Byington 56 Ė S. Barbara díOeste Sao Paulo, Brazil, represented by Geoffrey L. Oberhaus, Esq., of Graydon Head & Richey LLP of Cincinnati, Ohio, United States of America.

The Respondent is Renown SC, of 112/4 B Barnes Place, Colombo Ė 7, Sri Lanka, represented by Zak Muscovitch, Esq., of Neinstein & Associates of Toronto, Ontario, Canada.

 

2. The Domain Name and Registrar

The disputed domain name is <romi.com>.

The Registrar is Dotster, Inc., of Vancouver, Washington, United States of America.

 

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The Complaint was received by email on October 5, 2001, and in hard copy on October 9, 2001. The Complaint was acknowledged on October 9, 2001, and that day registration details were sought from the Registrar. On October 15, 2001, the Registrar confirmed that the disputed domain name is registered in the name of the Respondent at 225 Jampettah Street, Colombo Ė 13, Sri Lanka; that the Administrative and Billing Contact is Mr. Vincent Peeris of the same address; that the language of the Registration Agreement is English and that the Policy applies to the disputed domain name.

On October 16, 2001, the Center satisfied itself that the Complaint complied with all formal requirements (including payment of the prescribed fee) and that day formally dispatched copies of the Complaint by post/courier (with enclosures) to the Respondent at both addresses mentioned above and by email (without attachments). The Center included with that material a letter dated October 16, 2001, containing notification of the commencement of this administrative proceeding, with copies (of the Complaint without attachments) to the Complainant, the Registrar and ICANN.

The last day specified by the Center for a Response was November 5, 2001. That day, the Response was filed by email and on November 15 in hard copy. Receipt was acknowledged on November 7, 2001.

The Complainant elected to have the case decided by a single-member Administrative Panel ("the Panel") and on November 19, 2001, the Center notified the parties of the appointment of Alan L. Limbury as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. That day the Center transmitted the case file to the Panel and notified the parties of the projected decision date of December 3, 2001.

The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint; the Response was filed within the time specified in the Rules and the Panel was properly constituted.

The language of the proceedings was English.

 

4. Factual Background

Since 1940, Complainant has been making and selling, to over 60 countries, thermoplastic injection molding machines, machine tools, and foundry and high precision boring systems. It is incorporated in Brazil, where it has its principal place of business. It has a U. S. subsidiary named Romi Machine Tools, Ltd., located in Kentucky.

In the United States and Brazil, Complainant owns the rights to the registered trademark ROMI for power lathes, milling machines, plastic injectors and parts and structural components thereof. The trademark ROMI was first used by Complainant in 1941; a U.S. trademark application was filed on July 17, 1978, and the mark was registered with Registration No. 1142242 on December 9, 1980.

Respondent is a soccer club in Sri Lanka. Mr. Vincent Peeris is its President.

The disputed domain name was registered by Respondent on July 4, 2001. On September 26, 2001, Mr. Peeris, on behalf of Respondent, sent an e-mail to Complainant at "sales@romiusa.com" in the following terms:

"Dear Sir,

We are Renown SC a prominent soccer club from Sri Lanka in Asia. We have won our local league and F.A.Cup competitions several times. We have expanded into Internet ventures and plan to establish Cyber Cafes in Sri Lanka to increase Internet awareness in this region. To raise funds for the project we have decided to sell some of our domains.

One such domain is romi.com which was to be used for a joint venture with an Asian client who are also named Romi. We have been getting several inquiries and offers for the domain and we have decided to sell the domain. We have contacted you since you own romiusa.com and acquiring romi.com would be more beneficial to you.

We are not domain speculators and the main reason we are selling our domains is to raise funds for our project. We understand the present domain market and would consider any reasonable offers. We have been getting offers for romi.com and especially from other businesses named as Romi and from domain brokers. So if you are interested in acquiring the domain get back to us promptly."

On October 2, 2001, Mr. Peeris sent Complainant a follow-up e-mail along similar lines. Complainant replied that day:

"We are interested in the domain name romi.com. Do you have an idea as to price? We will have to confirm registration through our attorneys."

On October 3, 2001, Mr. Peeris replied:

"We are glad to hear from you.

You can confirm our registration and ownership by checking the whois of romi.com.

Regarding the domain romi.com we have been getting offers for the domain from other companies who are also named Romi as well as from domain brokers. We have got several offers in the range of $500 to $5000 for romi.com. Our asking price is $10,000 and we would sell the domain to the first party who meets this target. But we would consider all offers in this region.

So if you are still interested in acquiring the domain let us know your offer and the only criteria we have is that you should be able complete the sale promptly since the main reason we are selling our domain is to raise funds for our Cyber Cafe project.

We can complete the sale of domain through Escrow.com so that both parties are protected and also their service is ideal for such transactions. If you need any other details let us know."

On October 5, 2001, Mr. Peeris sent Complainant a further e-mail, repeating the first two paragraphs of his e-mail October 3, 2001, and adding the following:

"As we had indicated before today is the last day for offers and therefore let us know if you are making a definite offer for the domain so that we can wait till you make an offer."

 

5. Partiesí Contentions

A. Complainant

The disputed domain name is identical to and confusingly similar to Complainant's ROMI registered trademark.

Respondent has no rights or legitimate interest in respect of the disputed domain name. Respondent's name does not incorporate the domain name. Complainant is unaware of any trademark registrations owned by Respondent for ROMI marks; of any holding out by Respondent as ROMI, nor of any instances where Respondent has sold any products or services in connection with the disputed domain name.

Respondent in its September 26, 2001, email to the U.S. subsidiary of Complainant admits that Respondent has no legitimate interests in respect to the disputed domain name, saying:

"[t]o raise funds for the project we have decided to sell some of our domains. One such domain is romi.com which was to be used for a joint venture with an Asian client who are also named romi."

Respondent has not shown "demonstrative preparation(s)" to make a bona fide use of the disputed domain name. Mere assertion of an inchoate plan is insufficient as demonstrable evidence: World Wrestling Federation, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (January 24, 2000), (WWF collectibles dealer's claims of plan to create an auction site not enough to overcome a prima facie case of no legitimate use). Moreover, Respondent, in its email of September 26, 2001, admits it now intends to sell the disputed domain name for profits.

Respondent has registered the disputed domain name and is using it in bad faith. By offering the disputed domain name for sale at a price of $10,000, Respondent is using the disputed domain name in bad faith. The $10,000 asking price is greatly in excess of out-of-pocket costs directly related to the disputed domain name.

Respondent has registered the disputed domain name and is using it in bad faith by the passive holding of a domain name that is confusingly similar to Complainant's ROMI mark. Upon considering all the circumstances of a case, use of a domain name in bad faith may be inferred from the passive holding of a domain name that is confusingly similar to a third party's mark: Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515 (September 13, 2000); Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000).

B. The Respondent

Complainant brought this proceeding without an understanding of the scope of the Policy. The Complaint, on its face, is entirely deficient and merits censure by the Panel.

The fact is that Respondent registered the disputed domain name in good faith and has a legitimate interest in the domain name. Complainantís entire case rests on the fact that the subject domain is identical or confusingly similar to its registered trademark for ROMI.

Complainantís Burden of Proof

Complainant must prove each of the three requirements under Paragraph 4 of the Policy: Easyjet Airline Company v. Steggles, (WIPO, Case No. D2000-0024, March 17, 2000).

Identical / Confusingly Similar

It is conceded that the disputed domain name and Complainantís trademark are identical. This however, is just a preliminary requirement pursuant to Paragraph 4(a) of the UDRP. Without the two remaining requirements, which are far more onerous, the Complainant has not met its burden.

Legitimate Use

Complainant accuses Respondent of having Ďno legitimate interestí in the subject domain name because Respondent Ďis not known by ROMI nor does Respondent have a trademark registration for ROMIí.

The fact is that Respondent is not required to be known by its domain name or to have a trademark over the domain name in order for it to have a legitimate interest as understood by the Policy.

Respondent is a prominent soccer club. In Sri Lanka, soccer clubs are community-based organizations that often have roles in their community far beyond merely playing soccer matches. Renown has expanded into Internet projects and its goal in this enterprise is to establish Cyber Cafes around Sri Lanka that provide free email services in order to increase Internet awareness in itís local community. Renownís role in this is as a not-for-profit community organization.

Respondent registered the disputed domain name only a few months prior to the commencement of this proceeding. It was purchased with the sole intention of providing free email services to all those with the first name or surname, ROMI. This kind of venture, often referred to as Ďvanity emailí, has been held to constitute a Ďlegitimate interestí pursuant to the Policy: Bosco Products, Inc. v. Bosco E-Mail Service, NAF Case No. FA0005000094828.

ROMI is in fact one of the most popular names in South East Asia, with millions of Indians and Sri Lankans all sharing the name ROMI. Do a search on <google.com> and you will see thousands of references to south-east Asians with the name Romi.

Furthermore, ROMI is the first name of Vincent Peerisí mother.

The only reason that Respondent did not pursue the email service venture was because Respondentís members voted to make the establishment of the Internet Cafes themselves a priority over vanity email services, as a result of limited financial resources.

Complainant accuses Respondent of Ďpassive holdingí of the domain name in the several months that the domain was registered by Respondent. Complainant fails to demonstrate passive holding as understood by the Policy in this respect, because of the very short time period that Respondent owned the disputed domain name: Mondich and Am. Vintage Wine Biscuits, Inc. v. Brown, WIPO Case No. D2000-0004 [1](February 16, 2000), (finding Respondent cannot be said to lack a bona fide intent to use the domain name when only 10 months have passed since registration) and Casual Corner Group, Inc. v. Young, FA 95112 [2] (Nat. Arb. Forum August 7, 2000), (finding that Respondent has rights and legitimate interests in the domain name even though he has made no use of the web site at the time of the Complaint. Only after a two-year period of non-use is there an inference of a lack of bona fide intent to use the name).

Complainant cannot fairly accuse Respondent of passive holding when only a very short period of time has passed since registration.

No Bad Faith

Complainant has the onus of establishing not just Ďbad faith useí of the disputed domain name, but also, Ďbad faith registrationí pursuant to Paragraph 4(a)(iii) of the Policy. Complainant has not led any evidence of bad faith registration.

There is absolutely no evidence that Respondent registered the subject domain name in bad faith. As previously stated, it was entirely in good faith that Respondent registered the name. It is beyond credulity to suggest that Respondent, a respectable Sri Lankan soccer club and community group, had heard of Complainant (a Brazilian company) at the time that it registered the disputed domain name.

When the vanity email project was discontinued, Respondentís members voted at a meeting to have Respondentís club President, Vincent Peeris, conduct some research on the Internet in order to find a company that might be interested in purchasing the domain name, in order to raise funds for the cyber café project.

Respondent emphatically submits that it never, ever, heard of Complainant before Mr. Peeris found them on the Internet, on or about September 26, 2001.

On September 26, 2001. Respondent, through Mr. Peeris, contacted the sales department at Complainantís offices in the United States of America, and frankly asked if they wanted to purchase the name for the reasonable sum of $10,000. The funds would be directed to the Internet café project.

Mr. Peeris, always believed that he was acting in good faith by locating a purchaser, firstly because the money was going to a good cause, but also because it was such a generic and common name, that surely nobody could claim that they have exclusive rights to it.

Where a domain name is generic, the first person to register it in good faith is entitled to the domain name. Pursuant to CRS Technology Corporation v. CondeNet (concierge.com), NAF, Case No: FA#0002000093547, Judgment: March 28, 2000:

Here, there appears to be no evidence of the conduct referred to as "cybersquatting". The domain name holder, the Respondent, has not registered the domain name and is not using the domain name without reasonable cause. There is no evidence of use of the registered trademark nor is there evidence of confusion.

ÖEven though the trademark and the name are all but identical, the Panel has determined that the first person or entity to register the domain name should prevail in circumstances such as these where the domain name is a generic word, here indicating a provider of services, and where that word is widely used as a trade or service mark, although almost always in connection with modifiers or qualifiers.

Generic and descriptive words and phrases will generally not be transferred to a Complainant just because a Complainant has a registered trademark. Pursuant to Coming Attractions v.ComingAttractions.com, NAF, Case No. FA0003000094341, Judgment: May 11, 2000:

Respondentís registered domain name, comingattractions.com, is facially identical to and/or confusingly similar to Complainantís COMING ATTRACTIONS trademark. However, Complainantís trademark applies specifically to apparel and there is no evidence that Respondent ever used or intended to use the subject domain, comingattractions.com in any way related to apparel. There is no indication that Respondent has intended to attract Internet users to its web site or other on-line location by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation or endorsement of the web site.

The term "coming attractions" is a generic term in the field of entertainment and its widespread use predated Complainantís trademark registration. Thus, Respondent had the right to register the subject domain name, comingattractions.com and the domain registration is a fair use of a generic term that was available for registration in the form of the subject domain name without disparagement of, or impact upon, Complainantís trademark rights.

There are no circumstances that indicate the domain name was acquired primarily for the purpose of transferring it to the Complainant or to prevent Complainant from reflecting its trademark in a corresponding domain name, or that Respondent has engaged in a pattern of such conduct. Since there is no indication that Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, Complainant has failed to establish that Respondent registered the domain name "comingattractions.com" in bad faith.

Remarkably, Complainant, who by its own submission is a very large and powerful company, has been in operation since 1940, and has never, ever made any effort to register the disputed domain name until now.

It must be fairly assumed, that Complainant was not interested in the disputed domain name until it was approached by Respondent, and that it was only the modest price of $10,000 that formed the impetus for this proceeding. Quite clearly, the domain name was not registered by Respondent in order to unfairly prevent Complainant from registering it Ė Complainant always had every opportunity to do so until it was recently acquired by Respondent.

An aggravating factor in these circumstances is Complainantís, rather than Respondentís, bad faith. By email correspondence, Complainant, actually advised Respondent that it was interested in the domain name and asked for a price. It also advised that it would need to confirm registration through its attorneys. Obviously, it was Complainantís attorneys, who turned the situation around, and suggested to Complainant that it didnít need to pay Respondent for the name, because Complainant could get it for free by fabricating a case against Respondent!

Respondentís President, Vincent Peeris, did in fact write to Complainant and offered the disputed domain name for sale. Respondent did so in a completely honest and straight-forward manner evidencing credibility and honest intentions.

Both Respondent, and Vincent Peeris, have no history or pattern of bad faith registrations. In fact, they are new to the Internet and were entirely caught by surprise by the commencement of this proceeding.

Complainant (i.e. its attorney) being somewhat sophisticated in the ways of the Internet, and domain name registrations, in particular, replied to Respondent and inquired as to how much the domain name was for sale for. Absolutely no mention was made to Respondent that Complainant was relying on any purported trademark rights or believed that it was entitled to the domain name for merely out-of-pocket expenses. Complainant in fact, attempted to unscrupulously mislead Respondent as to Complainantís malicious intentions.

Complainant now points to this offering for sale as Ďbad faithí, when it was a party to the negotiations and never put Respondent on notice that it was asserting any sort of rights over the disputed domain name. This frankly, borders on entrapment, and ought to be considered Reverse Domain Name Hijacking.

It is submitted that even if Respondentís act of attempting to sell the domain name to Complainant is considered to be Ďbad faith useí of the disputed domain name, Complainant has failed to evidence Ďbad faith registrationí, and accordingly, the Complaint must fail.

Furthermore, Complainant has not filed any evidence of customers being misled or purposefully diverted by Complainant.

Respondent accuses Complainant of Reverse Domain Name Hijacking and requests that the Panel make a finding accordingly.

Complainant is obviously attempting to obtain Respondentís domain name for free. Complainant conduct must not be condoned. The Policy affords Complainants relief only when they are the victim of cybersquatting, and in no other circumstances. In this case, Respondent registered the subject domain name in good faith for a legitimate purpose. Respondent is by no means a cybersquatter and accordingly, should not be the victim of Complainantís attempt to forcibly take Respondentís property.

Respondent submits that it was the price of the domain name which led to this proceeding and not any legitimate claim of cybersquatting.

 

6. Discussion and Findings

Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:

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

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

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

Identity or confusing similarity

Respondent concedes that the disputed domain name is identical to Complainantís registered trademark ROMI and the Panel so finds.

The Complainant has established this element.

Illegitimacy

The Panel infers that the Complainant has not authorized Respondent to use its trademark nor to register the disputed domain name. Respondentís name is Renown SC. There is no evidence Respondent is known by the disputed domain name; that it has any trademark registration for ROMI; nor that it made any use of the disputed domain name in the few months between the date of registration and the initiation of this Administrative Proceeding.

These circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interest in the disputed domain name on the part of Respondent. The evidentiary burden, therefore, shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web (WIPO Case No. D2000-0624) and the cases there cited.

Respondent has provided a copy of a birth certificate of a person whose middle name is Romi, said to be Mr. Peerisí mother. The Panel accepts that the name Romi is a common personal name in Sri Lanka and elsewhere. But the fact that individuals have a legitimate interest in their personal names does not mean that others, not known by the personal name in question, have such an interest. In this respect personal names differ from the generic names considered in Coming Attractions v.ComingAttractions.com, (NAF Case No. FA94341) and CRS Technology Corporation v. CondeNet (concierge.com), (NAF Case No. FA93547) which anyone is entitled to use.

In Shirmax Retail Ltd. v. CES Marketing Group, Inc. (eResolution Case No. AF-0104) proof of even "perfunctory" preparations was held sufficient to demonstrate a legitimate interest within paragraph 4(c)(i) of the Policy. Mere assertion of a plan is insufficient: Tourism and Corporate Automation Ltd. v. TSI Ltd. (eResolution Case No. AF-0096); World Wrestling Federation, Inc. v. Ringside Collectibles, (WIPO Case No. D2000-1306). Here Respondent has not demonstrated that it ever:

- decided to embark on a vanity e-mail project;
- took any steps in furtherance of that project;
- decided to discontinue that project;
- decided to embark on a cyber café project;

- pursuant to the vote of members in a meeting, authorized Mr. Peeris to conduct research on the Internet to find a buyer for the disputed domain name to raise funds for a cyber café project.

Nor has Respondent attempted to substantiate the assertions in its email of September 26, 2001, that:

- it has expanded into Internet ventures;
- it plans to establish Cyber Cafes in Sri Lanka;
- it has decided to sell some of its domains;
- it has domains other than the disputed domain name;
- the disputed domain name was to be used in a joint venture with an Asian client also named Romi;
- it has been getting offers for the disputed domain name from other businesses named Romi and from domain brokers.

Unlike Respondent in Bosco Products, Inc., v. Bosco E-Mail Service (NAF Case FA 94828), Respondent is not in the "vanity e-mail" business nor is it shown to have made even perfunctory preparations to enter that business (nor the Cyber Café business) prior to notice of this dispute.

The extensive experience in this field of Counsel representing Respondent enables the Panel comfortably to draw the conclusion that, had there been evidence available of any of the matters just enumerated, Respondent would have provided it in its Response.

Respondent has not demonstrated by concrete evidence that it has rights or legitimate interests in the disputed domain name.

Complainant has established this element.

Bad faith registration and use

The only evidence before the Panel as to the activities of Respondent since registering the disputed domain name shows that, within 3 months, Respondent approached Complainant with an offer to sell the disputed domain name and, when asked for a price, sought $10,000. In these circumstances it is open to the Panel to infer that sale to Complainant at a profit was Respondentís primary purpose for the registration: Educational Testing Service v. TOEFL (WIPO Case No. D2000-0044). The Panel so finds. This finding involves rejection of Respondentís denial that it had ever heard of Complainant before September 2001. Respondentís failure to produce any evidence in support of its assertions enables the panel to reject this denial.

Under paragraph 4(b)(i) of the Policy, this finding is evidence of both bad faith registration and bad faith use. Accordingly, it is unnecessary to consider the issue of use separately.

The Panel finds that the disputed domain name has been registered and is being used in bad faith.

The Complainant has established this element.

Reverse domain name hijacking

Complainant having succeeded on all three elements, this claim must be rejected.

There is no basis for the assertion by Respondentís Counsel that Complainantís Counsel advised Complainant to fabricate a case.

 

7. Decision

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain name <romi.com> be transferred to Complainant.

 


 

Alan L. Limbury
Sole Panelist

Dated: November 25, 2001

 


Footnotes:

1. http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0004.html

2. http://www.arbforum.com/domains/decisions/95112.htm