WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aug. Winkhaus GmbH + Co. KG v. Wintec S.R.L.
Case No. DRO2006-0002
1. The Parties
The Complainant is Aug. Winkhaus GmbH + Co. KG, Telgate, Germany, represented by Avency GmbH, Germany.
The Respondent is Wintec S.R.L., Bucuresti, Romania, represented by Avocat Marian Plama de ala, Romania.
2. The Domain Name and Registrar
The disputed domain name <winkhaus.ro> is registered with RNC.ro.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2006. Between March 1 and March 14, 2006, the Center transmitted by email to RNC.ro several requests for registrar verification in connection with the domain name at issue. On March 6 and March 14, 2006, RNC.ro transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 5, 2006. The Center verified that the Complaint together with the amendment to 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 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 26, 2006. The Response was filed with the Center on May 2, 2006.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on May 4, 2006. 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 May 11, 2006, in accordance with Rules, paragraph 10(a), the Panel made the following order:
1) that the first Complaint was filed in English;
2) that Respondent filed its response in English
3) that practically all the communications between the Center and the Parties have been made in English; and
4) that Paragraph 11(a) of the Rules provides that the language of the proceedings shall be that of the Registration Agreement, subject to the authority of the Panel to determine otherwise, with regard to the circumstances of the administrative proceeding, the Panel on the basis of the provision in paragraph 11(a) of the Rules, decides that the language of the proceedings shall be English instead of Romanian.
Consequently, the Panel, according to Paragraph 11(b) of the Rules, invited the Complainant to provide the Center with the English translation of the pages 6 and 7 of the Romanian version of the complaint.
Finally, according to Paragraph 12 of the Rules, the Panel requested the Parties to substantiate their allegations regarding the issues under paragraph 4(b) of the Policy - Evidence of registration and use of the domain name in bad faith - and paragraph 4(c) - How to demonstrate your rights to and legitimate interests in the domain name in responding to a complaint.
The term to provide the Center with the relevant evidence by hardcopy and email, copied to the other Party, was first determined as May 21, 2006, and then extended to May 28, 2006.
In view of the above and in accordance with Paragraph 10(c) of the Rules, the due date for the decision was postponed accordingly to June 12, 2006.
On May 19, 2006, respondent filed its response to Panel’s order 1, while Complainant filed its response with two different emails on May 19 and May 24, 2006.
4. Factual Background
The Winkhaus Group is a family–based German company founded in 1845. Winkhaus develops, manufactures and sells Tilt and Turn fitting technology, control and monitoring systems for windows, locking mechanisms, entry-control systems etc.
The International trademark WINKHAUS registration number 515032 has been registered since July 20, 1987, and is valid also in Romania.
The disputed domain name <winkhaus.ro> was registered on January 7, 2003.
5. Parties’ Contentions
Complainant alleges that:
The Domain Name <winkhaus.ro> is identical to Complainant’s WINKHAUS trademark.
Respondent is not representing Winkhaus in Romania and does not have any business relationship with Winkhaus.
Respondent, Wintec SRL, sells window fittings of one of the main competitors of Winkhaus, i.e. Siegenia-Aubi. Therefore Complainant considers Respondent to be a competitor.
It is very likely that Respondent, as a competitor, knew Complainant and its field of activity.
Respondent can benefit from diverting potential customers of Complainant to Respondent’s website.
There is no evidence of Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the Domain name in connection with a bona fide offering of goods or services.
Respondent has no trademark rights on the WINKHAUS name. Respondent has not been commonly known by the Domain Name and is not making a legitimate non-commercial or fair use of it.
Respondent registered and is using the disputed Domain Names in bad faith.
Contact by phone, fax and email failed. Under the Phone number Bogdan Ioachinescu is not known, Fax is unreachable, Email was returned with an error indicating that the mailbox was full. Mail sent to Respondent at the address provided in the Whois, could not be delivered.
The fact that the word “Winkhaus” has no meaning either in the Rumanian or in the English language, supports the inference that Respondent was aware of Complainant, its activities and trademark.
Respondent in its replies states as follows:
“The trademark WINKHAUS is not registered in Romania according to Romanian legislation. In Romania the right in a trademark is acquired and protected by registration with OSIM (Romanian State Office for Inventions and Trade Marks) under the provisions of the Law no.84/1998. So, legally, the domain name is not equal to any trademark registered in Romania.
Before the Respondent received any notice of the dispute, the domain name was legally acquired by the registration in ROLTD Registry, National Institute for Research and Development in Informatics (ICI), Bucharest, Romania on January 7, 2003, according to Annex B and also to the bill issued and signed by the ICI at December 31, 2002, in connection with a bona fide.
The domain name has been registered before the Romanian company Winkhaus Romania S.R.L. was founded (2005).
The Respondent has rights to make a legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark at issue.
Even though the domain for the time being is not in use, the Respondent has been purchased the domain name in a strictly accordance with the Romanian laws and without knowing about the Complainant existence and activities. To the Respondent’s knowledge the registration of the domain name did not infringe upon or otherwise violate the rights of any third party.
The domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, as the alleged owner of the trademark or service mark, or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name;
The domain name was not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name and, in connection therewith, the Respondent has not engaged in a pattern of such conduct;
The Complainant and the Respondent are not competitors and the domain name was not registered by the Respondent primarily to disrupt the Complainant’s business;
The domain name was not registered by the Respondent in an intentional attempt to attract for commercial gain, Internet users to the Respondent’s web site 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 Respondent’s web site or location or of a product or service on the Respondent’s web site or location.”
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has established that it has prior rights on the trademark WINKHAUS for several goods, among which: metal fittings for doors, windows and furniture; locks, especially cylinder locks; padlocks.
Therefore, the Panel finds that Complainant has met its burden of proving that the disputed Domain Name is confusingly similar to Complainant’s mark.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
a) that before any notice to the respondent of the dispute, he or she used or made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
b) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or
c) that the respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
In the present proceeding there is no contention on record, or made by the Respondent, that the Panel could rely on, to conclude that Respondent might have trademark, or other intellectual property rights, or in general, legitimate interests in the Domain Names. In fact, the Respondent has no connection or affiliation with the Complainant, which has not licensed or otherwise authorised Respondent to use or apply for any domain name incorporating Complainant’s trademarks. Respondent does not appear to make any legitimate use of the domain name for non-commercial activities. It should be noted that Respondent, having the chance to do so, has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name. In fact, even if the allegation made by Respondent, that the trademark WINKHAUS was not registered in Romania was true, this fact would not have conferred per se any legitimate rights on the name WINKHAUS to Respondent.
On the contrary, Complainant has alleged several circumstances from which the Panel may infer Respondent’s lack of legitimate interest in the Domain Name.
Therefore, the Panel considers that there is no evidence that Respondent has done anything that could be regarded as giving rise to a legitimate interest under paragraph 4(c).
Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
i) circumstances indicating that the holder 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 that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
ii) the holder 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 holder has engaged in a pattern of such conduct; or
iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s web site or location or of a product or service on the holder’s web site or location.
Accordingly, for a Complainant to succeed, the Panel must be satisfied that the Domain Name has been registered and is being used in bad faith.
Complainant has argued and substantiated that Respondent had actual knowledge of Complainant’s trademark and activity; that it has not used the Domain Name since its registration, that Respondent on its own website “www.wintec.com.ro” is selling goods of a competitor of Complainant’s, namely Siegenia-Aubi (“www.siegenia-aubi.com”) and, that Respondent can benefit from diverting Complainant’s potential customers to Respondent’s own website.
The Panel finds that from the records it appears that:
1) Respondent has indeed not used the domain name since its registration. In fact, Respondent itself has affirmed that the domain name has not been used to date, i.e. three years after its registration.
2) On Respondent’s website “www.wintec.com.ro” goods of Complainant’s competitors are promoted.
3) Respondent has not given any justification for the registration of the disputed domain name nor substantiated any concurrent right or legitimate interest in this disputed domain name.
4) Respondent’s statement that he is not a competitor of Complainant appears to be untrue. This fact gives room to believe Complainant’s allegation that Respondent was aware of Complainant’s activity and rights on the WINKHAUS trademark.
The Panel therefore concludes that the Respondent registered and is using the Domain Name in bad faith and that the requirements of paragraph 4 (a) (iii) of the Policy are satisfied.
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, <winkhaus.ro> be transferred to the Complainant.
Dated: June 12, 2006