WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rhoss S.p.A. v. None (CTLGDN-272205)
Case No. D2003-0858
1. The Parties
The Complainant is Rhoss S.p.A., Codroipo, Udine, Italy, represented by Studio Torta S.r.l. of Italy.
The Respondent is None (CTLGDN-272205), ChonAnSi, ChungNam, Republic of Korea.
2. The Domain Name and Registrar
The domain name in dispute is <rhoss.com>.
The Registrar for the disputed domain name is Catalog.com, Inc. of Oklahoma City, United States.
3. Procedural History
The Complaint was filed the WIPO Arbitration and Mediation Center (the "Center") on October 29, 2003. On October 30, 2003, the Center transmitted by email to Catalog.com a request for registrar verification in connection with the domain name in dispute. On October 30, 2003, Catalog.com transmitted by email to the Center its verification response confirming that the Respondent is the Respondent of the disputed domain name.
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 Paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 4, 2003. In accordance with the Paragraph 5(a) of the Rules the due date for Response was November 24, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on November 25, 2003.
The Center appointed Irina V. Savelieva as the sole panelist in this matter on December 8, 2003. 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 Paragraph 7of the Rules.
On December 22, 2003, the Center notified the Parties that the decision date was extended to January 16, 2004.
4. Factual Background
The Complainant Rhoss S.p.A is an Italian company founded in 1968, leader in the heating, refrigerating and air conditioning sector with activity in Europe and worldwide (Asia, Africa and Latin America) (Complaint Annex 6).
The Complainant owns a registered trademark for RHOSS in many countries of the world, including:
Italy - first registration No. 247146 of October 19, 1970, (with renewals) for classes 7, 9 and 11 (Complaint Annex 7- 9);
Austria, Czech Republic, Germany, France, Hungary, Portugal, Slovak Republic, Switzerland and other counties Ė first international registration No. 374167 of December 29, 1970 (with renewals) for classes 7, 9 and 11 (Complaint Annex 12).
The Complainant owns a registered trademark for RHOSS and design in many countries of the world, including:
Italy Ė registration No. 2472001BO of May 6, 2003, with priority date March 2, 2001, for class 11 (Complaint Annex 10);
Croatia, Cuba, Egypt, Morocco, Russian Federation, Turkey, Slovenia and Ukraine - international registration No. 807086 of June 5, 2003, for class 11 (Complaint Annex 13);
Spain Ė registration No. 2420394 of February 5, 2002, with priority date August 9, 2001, for class 11 (Complaint Annex 14);
China Ė registration No. 2010461 of January 28, 2003, for class 11 (Complain Annex 15);
European Union countries Ė community trademark application No. 3079662 with priority date March 3, 2003, (Complain Annex 11).
The Complainant owns domain name <rhoss.it> with corresponding website "www.rhoss.it" (Complaint Annex 5). The Complainant used to own domain name <rhoss.com> which was not renewed in June 2003, (Complainant Annex 19).
The Respondent registered the disputed domain name, <rhoss.com>, on September 9, 2003.
5. Partiesí Contentions
A. Complainantís Summarized Contentions
- The disputed domain name, <rhoss.com>, is identical to the Complainantís trademarks. The gTLD suffix, .com, can not be considered as eliminating identity since this suffix is inherent in all domain names in this gTLD.
- The Complainant owns domain name <rhoss.it> and has corresponding website which is used to offer its goods and services. The Complainant used to own domain name <rhoss.com> and accidentally failed to renew registration of the disputed domain name in June 2003, (Complaint Annex 19). According to Whois database the Respondent registered the disputed domain name on September 9, 2003, (Complaint Annex 1).
- The Complainant has never authorized the Respondent to use the trademark RHOSS or use any domain name incorporating its trademark.
- There is no information that the Respondent has any trademark registration for RHOSS in any other country of the world.
- There is very little information about the Respondent, its name and legal status are unknown, there is no information that the Respondent has a trade name or a company name identical or similar to the disputed domain name.
- There is no information that the Respondent is commonly known under the domain name in dispute.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name.
- The Respondentís present use of the disputed domain name can not be treated as a bona fide offering of goods or services. It merely used as a link to other websites or web page under construction (Complaint Annex 20-22).
- The domain name should be considered as having been registered and used in bad faith by the Respondent. The Respondent (or its representative) has proposed several times that the Complainant buy the domain name in dispute for a significant sum of money clearly exceeding out-of-pocket costs directly related to domain name (Complainant Annex 2, 23-24).
- The Respondentís registration of the domain name with the exclusive purpose of making money constitutes bad faith as it was indicated in Comitato per l'Organizzazione dei XX Giochi Olimpici Invernali -Torino 2006 v. gate24, WIPO Case No. D2003-0411 and Agnona S.p.A. v. Mr. Lian Ming, WIPO Case No. D2003-0296 (Complainant Annex No. 27).
- The disputed domain name, <rhoss.com>, should be transferred to the Complainant.
B. Respondentís Summarized Contentions
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
The Respondent was given notice of this proceeding in accordance with the Rules. 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.
However, as previously indicated, the Respondent failed to file any reply to the Complaint and has not sought to answer the Complainantís assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present its case, and the Panel will proceed to a decision on the Complaint.
The Respondentís default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:
(i) disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) disputed domain name has been registered and is being used in bad faith.
Pursuant to Paragraph 15(a) of the Rules the Panel shall decide the 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. Moreover, in accordance with Paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondentís failure to reply to the Complainantís assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panelís decision is based upon the Complainantís assertions and evidence and inferences drawn from the Respondentís failure to reply.
Identical or Confusingly Similar
The Complainant has exhibited its trademark registration RHOSS, RHOSS and design and similar in many countries all over the world for international classes 7, 9 and 11 including among others the following counties: Austria, China, Cuba, Germany, Egypt, France, Hungary, Italy, Portugal, Russian Federation, Spain, Switzerland, Turkey, Ukraine, United Kingdom (Complaint Annex 7-18) dated from 1970 (first registration October 19, 1970).
Respondent has not filed any reply to the Complaint or contested the Complainantís assertions. In the circumstances, the Panel finds that the Complainant has rights in trademarks RHOSS, RHOSS and designs and others.
The disputed domain name, <rhoss.com>, is similar to the Complainant trademark RHOSS.
The word "rhoss" in disputed domain name neither bears any specific meaning nor represents a commonly known or generic name. Therefore, the Respondent would not have been able to demonstrate any justified connection with this name.
The Panel infers the Complainant has satisfied its burden of proof under Paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
The Complainant contends the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has never given any authorization to the Respondent or its representative to use the Complainantís trademark or to register domain name containing its trademark.
Even though the Respondent has not filed any reply to the Complaint and has not contested the Complainantís assertions, it is upon the Panel to consider whether the Respondentís use of the disputed domain name demonstrates rights or legitimate interests in the domain name.
According to Paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a Respondentís rights or legitimate interests in a domain name:
(i) Respondent used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainantís mark.
The Respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under Paragraphs 4(c)(i-iii) of the Policy. By not responding to the Complainantís contentions the Respondent in this proceeding has never attempted to show its rights and legitimate interests.
Firstly, there is no evidence that before any notice of a dispute with the Complainant, the Respondent was using the disputed domain name for a legitimate offer of goods and services.
The Complainant points out that the disputed domain name's website is only being used as a link to other websites or web page under constriction. After domain name registration on September 9, 2003, for about a month the Respondentís website "www.rhoss.com" had a link with a website for registering domain names and displaying banners and advertisements (Complaint Annex 20). Later in October 2003, the website was linked to the Samsung Electronic Italia website. At present the website "www.rhoss.com" is linked to a web page under construction (Complaint Annex 22).
The Panel finds no evidence that Respondent is using the disputed domain name for a legitimate offering of goods and services.
Secondly, as for the Respondentís proof under Paragraph 4(c)(ii) of the Policy there is no evidence that the Respondent has been commonly known by the disputed domain name.
There is no information that the Respondent may be known under the disputed domain name as its business name or its company name. In e-mail correspondence with the Complainant the Respondent never mentions any rights or legitimate interests to the word "rhoss" (Complaint Annex 2, 23-24). The Complainant contends the Respondent is not commonly known by the disputed domain name RHOSS.
The Panel does not have any grounds to believe that the Respondent may be known under the name "rhoss".
The Panel recalls that the Respondent registered the disputed domain name on September 9, 2003. The Complainant and its trademark RHOSS have been well known since 1970. The company name RHOSS and its trademarks are known all over the world. The Panel believes that the Respondent knew about the Complainantís trademarks.
Afterwards, regarding these facts, it is in the Panelís view that the Respondent set out to register disputed domain name since he knew it was valuable and he was well aware of the Complainantís trademark interests in the domain name.
Thus, the Panel does not find that the Respondentís use of the disputed domain name as a link to a web page under construction is a bona fide offering of services under Paragraph 4(c)(i) the Policy. Nor does it show any demonstrable preparations to use the disputed domain name. Rather, the Respondent essentially is using a holding pattern for the disputed domain name while the Respondent waits to see how best to exploit it for generating profit by selling it.
Furthermore, the Panel draws an adverse inference from the Respondentís failure to provide any explanation or rationale for its use of the disputed domain name.
The Panel finds the Complainant has carried out its burden of proof to show the Respondent has no legitimate rights or interests in the disputed domain name.
Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a Respondent has registered and used a domain name in bad faith:
(i) circumstances indicating that the Respondent 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.
The Complainant contends the Respondent has violated the bad faith provisions of the Policy, Paragraph 4(b)(i), because it intends to sell the disputed domain name to the Complainant (who is the owner of the trademark) for much more than Respondentís out-of-pocket costs directly related to domain name. There is sufficient evidence that this is the case.
The Complainant presented the copies of e-mail correspondence with the Respondent (or his representative) in which the proposals was made to sell the disputed domain name for the price of USD 50,000 (e-mail of October 3, 2002 Ė Complaint Annex 25), the price far exceeding what Respondent paid for it.
The Respondent is in violation of the bad faith provisions of the Policy in paragraph 4(b)(i), i.e. the Respondent registered the disputed domain name with the intention of selling it for far more than it paid for it.
Thus, the Respondentís registration of the domain name, which was accidentally lost by the Complainant, with a solo purpose of selling it at high profit constitutes bad faith as it
was indicated in InTest Corporation v. Servicepoint, NAF Case No. FA0095291.
The Panel finds that the Respondentís bad faith in registering and using the disputed domain is most apparent in the fact that the Respondent has held the disputed domain name while doing essentially nothing with it and has offered to sell it for a significant amount of money.
The Panel does not interpret the Policy to mean that the mere offer for sale of a domain name for a substantial sum of money has to be considered an act of bad faith. Selling of domain names is prohibited by the Policy if the other elements of Paragraph 4(a) of the Policy are also violated, i.e. that the domain name "has been registered and is being used in bad faith".
According to the widely cited case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003: "the requirement in paragraph 4(a)(iii) that the domain name "has been registered and is being used in bad faith" will be satisfied only if the Complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith".
The Panel finds that the Respondent "has registered the disputed domain name in bad faith". The Respondent does not conduct any legitimate business activity using the disputed domain name. Given the Complainantís numerous trademark registrations for, and its wide reputation in, the word "rhoss", it is not possible to conceive of a circumstance in which the Respondent could legitimately use the domain name <rhoss.com>. It is also not possible to conceive of a situation in which the Respondent would have been unaware of this fact at the time of registration. These findings, together with the finding that the Respondent has no rights or interests in the domain name, lead the Panel to conclude that the domain name <rhoss.com> has been registered by the Respondent in bad faith.
The Panel finds that the disputed domain name "is being used in bad faith" by the Respondent. The domain name <rhoss.com> does not resolve to a website or other on-line presence. The web page under construction does not give any sufficient evidence that a website or other on-line presence is in the process of being established which will use the domain name. There is no evidence of advertising, promotion or display to the public of the domain name.
It should be further noted that the Panel has sufficient grounds to believe that by using in e-mail correspondence with the Complainant the name different from the name used for domain name registration the Respondent has taken steps to conceal its true actions.
The Panel finds the Complainant has shown the Respondent registered and is using the disputed domain name in bad faith.
The Administrative Panel decides that the Complainant has proven each of the three elements in Paragraph 4(a) of the Policy. In accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the disputed domain name, <rhoss.com>, be transferred to the Complainant.
Irina V. Savelieva
Date: January 15, 2003