WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eugene Roshal v. Win Road Assistance Repairs Pvt. Ltd.
Case No. D2007-1768
1. The Parties
The Complainant is Eugene Roshal, Chelyabinske, Russian Federation, represented by Öncül Kaya, Germany.
The Respondent is Win Road Assistance Repairs Pvt. Ltd., Mumbai, India, represented by Mr. Rajesh Naik.
2. The Domain Name and Registrar
The disputed domain name <winrar.com> is registered with Lead Networks Domains Pvt. Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2007. On December 3, 2007, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the domain name at issue. On December 13, 2007, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response providing the records for the Respondent as the registrant and the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 4, 2008. 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 January 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for the Response was January 27, 2008. The Respondent requested an extension of the due date of the Response. An extension was granted by the Center until February 3, 2008. The Respondent requested a second extension on January 28, 2008. The Center informed the parties that the due date for the Response remained February 3, 2008. The Response was filed with the Center on February 2, 2008.
The Center appointed Sir Ian Barker, Torsten Bettinger and W. Scott Blackmer as panelists in this matter on February 14, 2008. The Panel finds that it was properly constituted. Each member of 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 February 15, 2008, the Complainant filed an unsolicited supplemental filing commenting on matters raised in the Response. On February 16, 2008, the Respondent filed an unsolicited Response to the Complainant’s supplemental filing and an objection to the Panel receiving the Complainant’s supplemental filing.
The Panel, having considered these documents, has taken them into consideration in the interests of justice. The Respondent had raised matters which justified comment from the Complainant. However, the Complainant did not seek leave to file the supplemental filing and offered no reasons as to why it should be accepted. The Panel deprecates this rather cavalier approach to the Rules and stresses that acceptance of additional submissions by a Panel cannot be assumed.
On February 28, 2008, the Center received a further supplemental filing from the Complainant, which was followed by a request from the Respondent to file a supplemental filing should the Panel decide to receive the Complainant’s further filing.
The Panel decided not to accept the Complainant’s further filing. No application for leave was filed. The Panel had already granted the Complainant an indulgence by receiving its first supplemental filing and sees no reason for considering yet another.
4. Procedural Matters
The Respondent claims that the Center’s conduct in the administration of the case has not been “fair and just”. It reserved its right to proceed against the Center in accordance with Paragraph 20 of the Rules. The Respondent’s grievance arises from the following:
(a) A Complaint Deficiency Notification was issued by the Center to the Complainant on December 13, 2007, requiring the Complainant to cure named deficiencies within five days. The notification advised the Complainant of the correct name and address of the Respondent (as the Center had ascertained from the Registrar). It asked for an acknowledgment of the acceptance of mutual jurisdiction, which must be expressly identified (see Paragraph 3(b)(xiii) of the Rules. In the original Complaint, no person had been named as Respondent, the Complainant claiming that it had been unable to obtain details of the registrant of the disputed domain name from the Registrar. It detailed the quite extensive attempts that it had made to ascertain this information from the Registrar.
(b) No documents were received from the Complainant curing the deficiencies within five days. Therefore, the Complaint should have been withdrawn, as stated in the Deficiency Notification but without prejudice to the submission of a new Complaint.
(c) The Respondent received the first intimation of the Complaint by email on January 7, 2008. It applied for an extension of 60 days for the time within which to respond to the Complainant. This request was emailed on January 21, 2008.
(d) The Center called for and considered submissions from the Complainant and decided to extend the time for filing the Response by 7 days.
(e) The Respondent claims that the Center should have granted it additional time within which to file a Response and that it did not properly consider its representations.
It is clear from the Notice of Deficiency issued by the Center that the main deficiency was lack of the name and address of the Respondent. This information was ascertained by the Center after requesting information from the Registrar. The Complainant had indicated that it had been unable to identify the Registrar because of a WHOIS process which blocked its name.
This particular grievance of the Respondent strikes the Panel as an emphasis of form over substance. There was no prejudice to the Respondent in the Complainant not replying within five days to the Center’s request. The Policy does not provide for such extended periods for a filing a Response, such as the 60 days which the Respondent sought. The Policy is clearly designed for a swift resolution of complaints. Accordingly, the Panel finds no substance in the procedural objection of the Respondent.
5. Factual Background
Win.rar GmbH is the holder of distribution rights worldwide for WinRAR software developed by the Complainant, Mr. Eugene Roshal. The Complainant owns trademarks for the expression WinRAR which designates a data compression software system developed by Mr. Roshal in the early 1990’s and distributed by win.rar GmbH, since March 2002.
WinRAR software concentrates on the compression and archiving of software. Win.rar GmbH is represented in six continents and in more than 80 countries.
The Complainant registered WinRAR as a trademark in 44 countries under the Madrid system on June 24, 2004. The basic registration was in Germany. WinRAR owns also a trademark in the European Union. The Complainant alleges that, prior to registration of the trademark, he had common law trademark rights in the name.
The disputed domain name was originally registered in 1998 but was acquired by the Respondent on September 29, 2006. Until September 2007, the website at the disputed domain name focused on zip software, free downloads, file converters and other products. All were descriptive of the Complainant’s products.
On October 15, 2007, the Complainant ascertained that the Respondent was using a parking service under which the disputed domain name resolved to a website page containing advertising links and listings.
The Complainant gave the Respondent no rights in respect of the disputed domain name.
The Respondent is a private company incorporated in India on December 22, 2006. It operates a motor repair business under the name Win Road Assistance Repairs Pvt Ltd. Prior to the incorporation, the Respondent and a partner carried on business as a firm “Win Road Assistance Repairs” from September 1, 2005. The expression “winrar” is derived from “Win Road Assistance Repairs”.
6. Parties’ Contentions
The disputed domain name is identical to the mark in which the Complainant has rights. It does not matter where the trademark is registered. It is registered in numerous countries. Registration was sought in India until January 2007 – after the registration of the disputed domain name. Registration in India has not yet been granted.
The Respondent has no rights in the disputed domain name and does not qualify under any of the situations under Paragraph 4(c) of the Policy.
It is using a parking service in which articles such as those marketed by the Complainant are available for purchase. The actual site currently comprises links containing and using the WinRAR designation. These links do not forward users to other sites. Instead, the internal search engine rejects anyone proceeding by stating that the searched term should not be found. Using the WinRAR designation in terms connected with software in the German language reveals that the Respondent is aware of the fact that the Complainant is a well-known data compression software operator.
The Complainant has received complaints from customers who were diverted to the site of the disputed domain name, which is listed as a “phishing” site in various internet reviews advise WinRAR users to avoid the site. This circumstance indicates that WinRAR customers may lose the trust and reliability of the WinRAR product if no action is taken against mousetrapping domain holders.
The Respondent purchased the disputed domain name in bad faith. September 29, 2006 must be taken as the date on which bad faith registration is to be established. In September 2006, the Complainant’s trademark was well-known throughout the globe and had gained high recognition internationally. It was known in India, as well as in many other countries. The Complainant has business arrangements in India.
The Respondent’s actions are attracting Internet users for commercial gain and create the likelihood of confusion with the Complainant’s marks, through “mousetrapping” which can be described as the use of the parking service and the configuration of the former website for the disputed domain name.
The Respondent purchased the disputed domain name because it corresponded exactly with the name by which its business, “Win Road Assistance Repairs”, has been known, operated first by a partnership and later by a company. It has not yet developed the website. The Respondent was not aware of the various trademarks of the Complainant and the uses to which they have been put. A parking service is common in the industry to protect actual details of the registrant from data miners and spammers. The Respondent denies that it is being paid by any person for use of the site.
The Respondent produced copies of official certifications from the Government of India, first, for the partnership WinRar and, secondly, for the private company, Win Road Assistance Repairs Pte Ltd. It produced photographs of its workshop, advertisements, visiting cards, accounts, job sheets and cheques, all bearing the name Winrar. All transactions are done by the Respondent under that name. It has a legitimate interest in the disputed domain name.
The Respondent has never contacted the Complainant or its agents for the purpose of renting, selling or otherwise transferring the disputed domain name. It purchased the disputed domain name in 2006 for furthering and expanding its own business. Complainant’s type of business is not anything to do with that of the Respondent.
C. Complainant’s Supplemental Submission
The Respondent has a duty to be responsible for the contents of its website and it displays no intention of developing a site to further the business of motor repairs.
The Registrar is obliged to provide contact data for registrants.
The Respondent must have been aware of the rights of the Complainant, since the Complainant tried to contact the Respondent several times from October 29, 2006 onwards. The Respondent must have had notice of the interests of the Complainant and adopted the name of the company in order to claim a legitimate interest under the Policy.
The Respondent is not a competitor of the Complainant. However, since it is in a completely different business, the Complainant asks why the Respondent seeks to use the website for a motor repair company which uses the Complainant’s trademark. The documents produced by the Respondent do not prove transactions related to its business and cannot be valued as appropriate evidence.
D. Respondent’s Response to Supplemental Submission
There is nothing wrong with its blocking the domain name as a precaution against somebody else stealing it. Under its domain privacy arrangements, the Registrar will only give out information when required to do so under obligation.
The Respondent denies that the Complainant ever attempted to contact it. The disputed domain name is an acronym for its firm. The Respondent has attached business documents wherein this name is used. The Respondent has clearly proved legitimate rights or interests in the disputed domain name.
There is no proof of bad faith against the Respondents and this is a case of reverse domain name hijacking.
7. Discussion and Findings
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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”.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is identical to trademarks in which the Complainant has rights and, therefore, the first limb of Paragraph 4(a) of the Policy has been established.
B. Rights or Legitimate Interests
The Complainant gave the Respondent no rights in respect of the disputed domain name. Accordingly, the onus shifts to the Respondent to show that it comes within Paragraph 4(c) of the Policy as follows:
(i) before any notice to you of the dispute, your 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, or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The most appropriate section of that paragraph is Paragraph 4(c)(ii) whereby, if the Respondent can show that its business is commonly known by the disputed domain name, even if it has not acquired trademark or service mark rights.
The evidence verified by the supplied Indian Government documents shows that Winrar has been the trade name of a partnership known as Win Road Assistance Repairs since 2005, before the Respondent acquired the disputed domain name. As often happens, the unincorporated partnership became an incorporated company. The various documents which one would expect to be generated by a small business, such as cheques, job sheets, etc. all point to the continuing use of the name which is the same as the disputed domain name.
Accordingly, the Respondent has made out its case under Paragraph 4(c)(ii) of the Policy and the Complaint must, therefore, fail.
The Panel considers that the Respondent should not succeed under Paragraph 4(c)(i) of the Policy, which might have provided another defence for the Respondent, as it has not shown “demonstrable preparations” to use the disputed domain name in connection with its bona fide business. No evidence, for example, was given of instructions to a designer to prepare a website. It is not sufficient merely to park the domain against some unspecified future date when the website might eventuate. That is not proof of “demonstrable preparations”.
C. Bad Faith
In the circumstances, it is unnecessary for the Panel to consider bad faith. However, the Panel points out that, even if the Panel had come to another conclusion in respect of Paragraph 4(a)(ii), there are difficulties for the Complainant in proving that the disputed domain name was registered in bad faith. Firstly, there is no decisive evidence before the Panel that the Respondent was actually aware of Complainant’s mark, and the arguments for drawing such an inference are in the circumstances somewhat limited.
In particular, at the relevant date, i.e. October 29, 2006, it is hard to infer that the Respondent in Mumbai, India, would necessarily have known of the fame of a Russian software compression and archiving company, which conducts a specialized business for persons in the computer industry. The Complainant would, no doubt, have been known to the many people in the IT business in India – but not necessarily to the Respondent.
Bad faith use can easily be inferred, because a registrant must take responsibility for the contents of a website. This website initially diverted potential customers of the Complainant by way of click-through services. It is clear that bad faith registration must be proved separately from bad faith use and it is difficult to infer bad faith use in this case.
D. Reverse Domain Name Hijacking
This is not a case for considering seriously reverse domain name hijacking. The Complainant was clearly entitled to bring these proceedings. It could not have known of the defence of the Respondent and its legitimate efforts to obtain particulars of the identity of the Respondent were thwarted by the Respondent’s use of a domain privacy service. Reverse domain name hijacking is not a possibility on the facts of this case.
For all the foregoing reasons, the Complaint is denied.
Sir Ian Barker
W. Scott Blackmer
Dated: March 5, 2008