WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Action S.A. v. Robert Gozdowski

Case No. D2008-0028

 

1. The Parties

The Complainant is Action S.A. of Warszawa, Poland, represented by Krzysztof Bialy, Poland.

The Respondent is Robert Gozdowski of Warszawa, Poland.

 

2. The Domain Name and Registrar

The disputed domain name <activejet.com> is registered with Tucows Inc .

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2008. On January 9, 2008, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On January 9, 2008, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 January 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2008.

The Center appointed Marcin Krajewski as the sole panelist in this matter on February 29, 2008. 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.

 

4. Factual Background

The Complainant is a joint stock company incorporated in Poland manufacturing cartridges and ink containers for computer printers, belts and pads soaked with ink for computer printers, as well as other accessories and parts for computers, printers and office supplies. According to the TOP5 ranking of compatible brands on the Polish consumable market in the first half of 2006, the Complainant had the biggest market share in the technology segment of inkjet consumables.

The Complainant is the owner of the following trademarks:

- the Polish figurative trademark consisting of the word ACTIVEJET n 168670, registered on October 28, 2005, in classes 9, 16 and 35,

- the international nominative trademark ACTIVEJET n 708 890, registered on February 2, 2007, in classes 9, 16 and 35.

Application for registration of the first trademark named above was filed on October 4, 2002, which was publicly announced on April 7, 2003.

The Complainant is operating a website “www.activejet.pl”.

The disputed domain name was registered with Tucows on April 16, 2004.

The disputed domain name was originally registered by the company MODE COM Sp. z o.o. with its seat in Warsaw, Poland. MODE COM Sp. z o.o. is one of the major competitors of the Complainant in the Polish market. In response to the cease and desist letter sent by the Complainant MODE COM Sp. z o.o. stated that the disputed domain name had been registered with the aim of re-sale and it actually was sold on June 1, 2004. The Respondent is an individual with a stated address in Warsaw, Poland and an employee of MODE COM Sp. z o.o. acting as a coordinator of this company’s region.

On September 1, 2006, the Complainant wrote a formal letter to the Respondent demanding that he cease operation of the domain name in dispute and transfer it to the Complainant. The letter was sent by registered mail. The Respondent failed to answer to the formal letter. The disputed domain name resolves to no active website.

The facts mentioned above have been established on the basis of the Complaint and documents attached thereto in accordance with paragraph 3(b)(xv) of the Rules.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are present in this case. In particular the Complainant claims that:

(i) The domain name in dispute is confusingly similar to the trademarks in which the Complainant has rights

The Complainant claims that the disputed domain name is identical to the trademark ACTIVEJET in which the Complainant has rights as it entirely reproduces the word “Activejet”. The only difference is the addition of the top-level domain “com” after the mark.

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

The Complainant states that the Respondent is not commonly or otherwise known by the <activejet.com> domain name. He has no trademarks featuring the word “activejet” and has never done business under this name.

The Complainant contends that the Respondent was never licensed or otherwise permitted to use any of the Complainant’s trademarks. The Respondent has not made any demonstrable preparation to use the disputed domain name in connection with bona fide offering of goods or services.

(iii) The domain name in dispute was registered and used in bad faith

In support of this position, the Complainant provides that while registering the disputed domain name the Respondent must have been aware of the Complainant’s marks and wanted to refer to the Complainant. This is proven by the fact that the Respondent is an employee of one of the Complainant’s competitors.

The Complainant contends that the Respondent registered the disputed domain name in order to prevent the Complainant from registering this name and making a legitimate use of it. In the Complainant’s opinion the disputed domain name is actually under the control of MODE COM Sp. z o.o.

The Complainant states that although the Respondent has not made active use of the disputed domain name, its passive holding may itself be evidence of bad faith. In support of its allegations, the Complainant cites numerous UDRP panel decisions where “passive holding” of a domain name was considered as use in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the following facts must be established in order to grant the Complainant the remedy requested:

(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

A. Identical or Confusingly Similar

The relevant part of the domain name in dispute is “activejet” which is identical to the Complainant’s trademarks. For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the suffix “com” must be disregarded as being simply a necessary component of a generic top level domain name.

Accordingly, based on the case file, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel is satisfied with the Complainant’s statement that the Respondent was not in any way authorized to use any trademark including the word “activejet”. The Respondent has not provided evidence of circumstances of the type specified in Paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the domain name in dispute.

Accordingly, the Panel finds that the Complainant has (ACTIVEJET) satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove registration as well as use in bad faith of the disputed domain name.

Considering the fact that the Respondent is apparently an employee of one of the Complainant’s biggest competitors, the Panel finds that the Respondent must have been aware of the Complainant’s trademarks while registering the domain name in dispute. This finding is not prevented by the fact that the registration of the Polish figurative trademark ACTIVEJET was completed after the registration of the domain name. The protection right for the Polish trademark is valid from the date of application (October 4, 2002) and the application was publicly announced on April 7, 2003, well before the registration of the domain name in dispute. This means that on the date of registration of the disputed domain name the Respondent must have been aware of the Complainant’s potential rights and deliberately intended to infringe them.

Although this reasoning can not apply to the international trademark ACTIVEJET registered in 2007, it does not prevent this Panel from concluding that the domain name in dispute has been registered in bad faith.

It is less clear whether it can be established that the disputed domain name was also used in bad faith. Although it may appear from the circumstances that the domain name was registered in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, it is not possible to establish that the Respondent’s behavior constitutes a pattern of such conduct (paragraph 4(b)(ii) of the Policy). As the Respondent is not a direct competitor of the Complainant (he himself is only an employee of such a competitor) it can neither be simply established that the Respondent has registered the domain name primarily for the purpose of disrupting the business of his competitor (paragraph 4(b)(iii) of the Policy).

According to the prevailing opinion of numerous UDRP panels, in some circumstances so-called “passive holding” of a domain name can be treated as its being used in bad faith. The leading case in this regard is Telstra Corporative Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The learned Panelist in this case found that in order to establish that the registrant was using a domain name in bad faith it was not necessary to find that he had undertaken any positive action in relation to the domain name. In some circumstances even inaction (“passive holding”) falls within the concept of the domain name “being used in bad faith”. In Telstra it was additionally stated that it is not possible to determine in abstract what circumstances of passive holding other than identified in paragraphs 4(b)(i-iii) of the Policy can constitute bad faith use, and in considering whether the passive holding of a domain name following its bad faith registration satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must pay close attention to all the circumstances of the Respondent’s behavior.

This Panel finds that due to the fact that the circumstances of this case are so similar to the one provided by paragraph 4(b)(iii) of the Policy (registration of the domain name in order to disrupt the business of a competitor) and the apparent lack of any active website at the disputed domain name it can be found that passive holding of the disputed domain name by the Respondent falls within the concept of the domain name “being used in bad faith”.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

 

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 <activejet.com> be transferred to the Complainant.


Marcin Krajewski
Sole Panelist

Dated: March 14, 2007