WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Oficiul National al Registrului Comertului v. Kurtyan Consulting S.r.l.

Case No. DRO2004-0001

 

1. The Parties

The Complainant is Oficiul National al Registrului Comertului, Bucuresti, Romania, represented by Crenguta Leaua, Romania.

The Respondent is Kurtyan Consulting S.r.l., Piatra Neamt, Romania.

 

2. The Domain Name and Registrar

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

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2004. 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 April 21, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2004. The Respondent did not submit a response by this date. Accordingly, the Center notified the Respondent’s default on May 12, 2004.

The Center appointed George R. F. Souter as the Sole Panelist in this matter on May 21, 2004. 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.

A late response was received from the Respondent on May 21, 2004.

 

4. Factual Background

The expression “registrul comertului” (which is equivalent to “trade register” in English) designates the register operated under Romanian law in which all commercial companies and other physical or judicial entities authorized to have production, trade or service activities are bound by law to be registered ab initio. All subsequent modifications of the initially registered data (name, headquarters, shareholders, administrators, corporate governance rules, dissolution, mergers, bankruptcy, etc) are also required to be entered on the register.

The trade register has been operated continuously under Romanian law since 1868, with a break between 1950 and 1990 when the régime then in power considered it inappropriate to the political system which it operated). An extract of Law No. 26/1990 restoring the functions of the trade register, together with an English translation, has been provided to the Panel.

The Complainant, a public institution with a legal personality and organised under co-ordination of the Ministry of Justice, was set up in 2002 under Emergency Government Ordinance No. 129/10.10.2002, an extract of which, together with an English translation, has been provided to the Panel.

The Complainant, in addition to operating the register, also provides a wide range of legal information on companies, and offers on-line access to the central registry database, on-line information being provided by RECOM ONLINE.

There are, currently, more than 900,000 entities (physical or juridical persons) registered on the register.

 

5. Parties’ Contentions

A. Complainant

The Complainant alleges that, arising from its activities in connection with the register, the term “registrul comertului” is universally known to the Romanian public, and that the expression has, thus, acquired a secondary meaning sufficient to give it status as a “well-known mark,” and has drawn the Panel’s attention to the Romanian Law on Marks and Geographical Indications, No. 84/1998, which defines a “well-known mark” as a “mark which is well-known in Romania on the date at which an application for trademark registration is filed, or on the priority date claimed in such an application.” An extract of this law, together with an English translation, has been provided to the Panel.

The Complainant has drawn to the attention of the Panel that various Panels in past cases have accepted that ownership of a “common law” trademark is sufficient to satisfy the criteria as to ownership of trademark rights as set out in paragraph 4(a)1 of the Policy, and quoted a number of past decisions in support of this proposition. It specifically drew the Panel’s attention to the decision in Colegio Oficial de Registradores de la Propiedad y Mercantiles de Espaňa v. Mariscal y Rivaya, WIPO Case No. D2001-0571, which was decided in the Complainant’s favour in that case on similar facts.

The Complainant alleges that the Respondent has no rights or legitimate interests in the domain name, and pointed out, in particular, that the web page accessed via the domain name in dispute contains the address of the Respondent’s offices, some links to the official sites of various public institutions, including that of the Complainant’s on-line database, and a list of defaults of the activities of the Complainants, the rest of the page being “under construction.” The Complainant concludes that “the Respondent’s main purpose was not a bona fide offer of services, but to disrupt the activity of the Complainant,” and “it is generally not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name in which [the Complainant] has trademark rights.”

The Complainant alleges that the domain name at issue was registered and is being used in bad faith. In particular, it points out that the Respondent’s main partner and administrator also registered the domain name <bnc.ro>, under the name “Biroul National de Comert,” to the website of which anyone accessing the domain name at issue is directed (but not vice versa), and concludes that this demonstrates that the Respondent is using the Complainant’s mark “registrul comertului” to attract Internet users to other websites reflecting the domain name <bnc.ro> in which the Respondent’s main owner has interests. The Complainant further points out that the Respondent registered the domain name at issue just after “the Romanian mass-media developed a significant public information campaign focusing the public attention on the trade register situation” (i.e. – the transfer of responsibility for the operation of the register to the Complainant), and considers “that the Respondent attempted to profit on the image of the trade register and illegitimately attract Internet users interested in the trade register activities news to his own benefit.” In this latter connection, the Complainant drew the Panel’s attention, inter alia, to the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, in support of the proposition that “the domain name could not have been chosen for any reason other than in order to attract, for commercial gain, Internet users to the Respondent’s website.”

B. Respondent

The Respondent filed a response to the complaint only ten days after the due date communicated to him. This matter will be considered in the “Discussion and Findings” below.

 

6. Discussion and Findings

Procedural Issue

Paragraph 14(a) of the Rules provides: “In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules …, the Panel shall proceed to a decision on the complaint.”

The time period within which to file a response was communicated to the Respondent with the complaint, and the Respondent’s attention was drawn to fact that he could access these Rules on the WIPO website at “http://www.wipo.int/amc/en/domains/rules.”

When the Respondent filed his response on May 21, 2004, he presented no reason for the late filing.

The question of the admissibility of late filed responses has been raised a number of times in previous cases. In 1099 Pro, Inc. v. Convey Compliance Systems, Inc., WIPO Case No. D2003-0033, (a decision reached by a three-member Panel by majority decision) the majority decided “that it is important to apply the Rules as written, absent a good reason. Otherwise, parties will feel free to disregard deadlines and Respondents will regularly submit late responses. Thus, absent good cause, the majority of the Panel holds that late-filed responses should be disregarded.”

In this case, as stated above, the Respondent made no attempt to show “good cause.”

The Panel in this case agrees with the majority view in the above-cited decision, and, accordingly, declines to admit the late response. Had the Respondent argued, for example, that he needed more time in which to translate his response from Romanian into English, and, perhaps, taken advice as to how to formulate a response in proceedings such as this, the Panel would have been sympathetic to admitting a late response. The Panel notes, moreover, that the result of this proceeding would not have changed had the Panel accepted the response.

As, however, the Respondent did, eventually, submit a response, the Panel will not draw any inferences from the non-compliance, as mentioned in paragraph 14(b) of the Rules.

Substantive Issues

Paragraph 4(a) of the Policy lists three tests which a Complainant must satisfy in order to succeed:

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

(i) Identical or Confusingly Similar

The Complainant does not have any registered trademark for REGISTRUL COMERTULUI. The Panel accepts that this is not fatal in connection with paragraph 4(a)(i), providing that a sufficient quantum of “common law” rights can be proved to exist. The Panel regards the Complainant’s status as the operator of a national trade register as sufficient to enable it to claim the required quantum of “common law” rights and, accordingly, finds that the Complainant has satisfied the first test.

The Panel regards the decision in Colegio Oficial de Registradores de la Propiedad y Mercantiles de Espaňa v. Mariscal y Rivaya, WIPO Case No. D2001-0571, as highly persuasive in this respect. The Panel also finds the decision in Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314, in which similar circumstances existed, as consistent with this decision in this case on this issue.

(ii) Rights or Legitimate Interests

There appears to be no obvious link between the name of the Respondent and the domain name at issue.

The Panel accepts the Complainant’s contentions on this issue, and finds that it has satisfied the second test.

The Panel, in particular, does not believe that the Respondent could reasonably have been unaware of the Complainant’s use of the expression REGISTRUL COMERTULUI at the time that he registered the domain name at issue, which, in the Panel’s view, is sufficient to deny rights or legitimate interests to the Respondent (see, for example, the finding of the Panel in Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102, in this connection).

(iii) Registered and Used in Bad Faith

It follows from the finding under (ii) above that the Panel finds that the domain name at issue was registered in bad faith.

The Panel must, however also be persuaded that the domain name at issue has been used in bad faith to find that the Complainant has also satisfied the third test. He so finds, regarding the reasoning of the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, as argued by the Complainant in the circumstances of the present case, to be compelling.

 

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 <registrulcomertului.ro> be transferred to the Complainant.

 


 

George R. F. Souter
Sole Panelist

Dated: June 3, 2004