WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fundacja Tumult v. Roland Szymański
Case No. D2008-0669
1. The Parties
The Complainant is Fundacja Tumult, Toruń, Poland, represented internally.
The Respondent is Roland Szymański, Łódz, Poland.
2. The Domain Name and Registrar
The disputed domain name <camerimage.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2008. On April 30, 2008, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On May 6, 2008, OnlineNic, Inc. d/b/a China-Channel.com 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 May 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 3, 2008.
On June 4, 2008, the Respondent sent an e-mail in Polish to the Center. The Center responded noting that according to paragraph 11 of the Rules, the language of the administrative proceeding is English.
On June 7, 2008, Mr. Jarosław Kotkowski acting on behalf of the Respondent provided an e-mail communication to the Center which may be considered as a late response.
On June 11, 2008, the Complainant sent an e-mail to the Center comprising it’s comments on the late response.
The Center appointed Marcin Krajewski as the sole panelist in this matter on June 17, 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.
Before setting out the submissions of the parties and the factual background to this Complaint, it is necessary to deal with the issue of the late response submitted by the Respondent. In opinion of this Panel late responses should be disregarded absent good cause. It is for the party seeking to submit a late submission to provide justification for doing so. In the Respondent’s communication of June 7, 2008 there is no such justification apart from a claim that the Respondent had some difficulties in finding a lawyer competent enough in legal English to deal with the present case. In the opinion of the Panel this justification is not sufficient. In accordance with paragraph 11 of the Rules the language of the procedure is that of the registration agreement. Such a rule bases on a presumption that if a party is fluent enough in a specific language to enter into a registration agreement, it should be equally fluent to deal with an administrative procedure. Moreover, the claim that it is difficult in Poland to find a lawyer understanding legal English is highly unconvincing to the Panel. In the circumstances, the Panel has decided to disregard the late response when considering this matter. Accordingly, it applies also to the Complainant’s comments on the late response as of June 11, 2008.
In accordance with the consensus view amongst panelists a panel is allowed to undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision. As a Complainant’s assertion that it holds rights in a Polish nominative trademark CAMERIMAGE was supported only by an original decision of the Polish Patent Office as to the registration of this trademark and not a current excerpt from a trademark register, the Panel found it useful to made an independent review of the Polish Patent Office online database in order to confirm the current status of the Complainant’s trademark. This review proved that the protection right as to the trademark CAMERIMAGE No. 104365 expired on August 1, 2005.
In the circumstances, the Panel was of the opinion that it was fair to give both parties the opportunity to submit further evidence and arguments on this issue. Accordingly, the Procedural Order No. 1 was issued on June 23, 2008. The operative terms of the Procedural Order were as follows:
“(1) The Complainant shall, by no later than within 5 business days after transmission of this Order, forward, by email to the WIPO Center in accordance with paragraph 3(b) of the Supplemental Rules and copied to the Respondent by email a further submission together with supporting documents/evidence limited to the following matters:
(i) details as to the current status of the trademark mentioned above and in particular whether the trademark is still in force; and
(ii) insofar as the trademark is no longer in force as a registered trademark, reasons as to why the trademark should be treated by the Panel as a trademark or service mark in which the Complainant has rights for the purposes of paragraph 4(a)(i) of the Policy.
(2) The Respondent may, if so advised, by no later than within 3 business days after transmission of the Complainant’s submission, make further submissions to the Panel limited to any submissions by the Complainant in accordance with paragraph (1) of this Order together with any supporting documents/evidence in relation to the same.
(3) In accordance with paragraph 11 (a) of the Rules the Panel shall accept Parties’ submissions in English, as well as in Polish.
(4) In view of the issue of this Procedural Order the time for the issuing of a decision in these UDRP proceedings is postponed until July 15, 2008.”
The Complainant responded to the Procedural Order on June 30, 2008. Although the Respondent submitted its response on July 2, 2008, his submission in fact did not concern the issues discussed in the Procedural Order and the Complainant’s response to the Order. This applies also to the further unsolicited Complainant’s submission of July 10, 2008 and the Respondent’s submission of July 14, 2008.
In the circumstances, the Panel in coming to its decision in this matter has neither taken into account the Respondent’s submissions of July 2, 2008 and July 14, 2008 nor the Complainant’s submission of June 20, 2008.
4. Factual Background
The Complainant is an entity incorporated in Poland and organizing an international film festival dedicated to the art of cinematography, named “Camerimage” (hereinafter “the Festival”). The Festival was primarily launched in 1993 and nowadays is the biggest international film festival devoted to the creation of film images by cinematographers. The name “Camerimage” was independently invented by Mr. Marek Żydowicz, the president of the Complainant, and has no specific meaning in any language.
The Complainant was the owner of the Polish nominative trademark no. 104365, consisting of the word Camerimage, registered on August 4, 1998, in class 41. Application for registration of this trademark was filed on August 1, 1995. The protection right had not been renewed and expired on August 1, 2005.
The trademark “CAMERIMAGE” was being actually used by the Complainant both before as well as after the expiration of the registered trademark.
The Complainant is operating a website “www.camerimage.pl” which is the official website of the Festival. It also holds domain names <camerimage.com.pl>, <camerimage.org.pl>, <camerimage.eu>.
The disputed domain name was registered with OnlineNIC.com on December 12, 2002.
Before the registration of the disputed domain name the Respondent attended the Festival and offered his services and even an establishment of a joint-venture to the Complainant. This proposal was rejected. After the registration the Respondent offered a sale of the disputed domain name for a considerable amount of money, which was also turned down by the Complainant.
The disputed domain name resolves to a website which is used by the Respondent for commercial purposes. On this website the Respondent offers the possibility of placing advertisements for a remuneration, sale of subdomains of the disputed domain name, as well as other services. At some point there was placed an advertisement offering the sale of the disputed domain name to the general public.
The facts mentioned above have been established on the basis of the Complaint and documents attached thereto in accordance with paragraph 5 (e) of the Rules as well as on the basis of the Complainant’s response to the Procedural Order No. 1.
5. Parties’ Contentions
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
Originally, the Complainant claimed that the disputed domain name was identical to the registered trademark CAMERIMAGE in which the Complainant had rights as it entirely reproduced the word “Camerimage”.
In response to the Procedural Order No. 1 the Complainant stated that while filing the Complaint he was not aware of the fact that the protection right as to the registered trademark had already expired. Moreover, the Complainant stated that at the time of registration of the disputed domain name the registered trademark was still in force. It has been still used after the expiry of its protection. The name “Camerimage” is artificially created, unique and has been used for 15 years to describe the Festival.
(ii) The Respondent has no rights or legitimate interests in respect of the domain name in dispute
The Complainant contends that the Respondent has not made any demonstrable preparation to use the disputed domain name in connection with bona fide offering of goods or services.
The Complainant states that the Respondent has never been commonly known by the name “Camerimage” and in fact was only one of 4000 other visitors to the Festival. The Respondent is not related to the organizers of the Festival.
The Complainant contends that the Respondent was neither a representative nor an associate of the Complainant.
(iii) The domain name in dispute was registered and used in bad faith
In support of this position, the Complainant contends that while registering the disputed domain name the Respondent must have been aware of the Complainant’s trademark and registered the disputed domain name for the purpose of acting to the detriment of Complainant. According to the Complainant the Respondent openly admitted that he decided to register the disputed domain name because the Complainant had refused to collaborate with the Respondent.
The Complainant contends that the Respondent intentionally attempts to mislead the Internet users and to attract to its website those of them who search for information about the Festival.
The Respondent has failed to put forward a response within the time limit provided and, for the reasons described above, the Panel has not considered the contents of the late response and further submission in coming to its decision. However, it is worth to mention that even if the response and further Respondent’s submissions had been admitted it would not have altered the Panel’s view on the merits of the case.
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 crucial point of this case seems to be whether the Complainant actually holds rights in a trademark or service mark for the purposes of paragraph 4(a)(i) of the Policy. As it was discussed above the rights to the registered nominative trademark CAMERIMAGE expired on August 1, 2005. The Complainant’s contentions that this mark was still in force when the Respondent registered the disputed domain name seem to be irrelevant as the wording of paragraph 4(a)(i) of the Policy clearly suggests that right in a trademark needs to be in force at the time of filing the Complaint. In relation to the registered trademark this was obviously not the case.
This is not quite the end of the matter, as it the Complainant can show rights in an unregistered trademark consisting of the word “Camerimage”. In view of this Panel there is no worldwide recognized concept of an unregistered or common law trademark and consequently it must be related to suitable territorial jurisdictions. As both the Complainant and the Respondent are Polish and the Festival is organized in Poland it seems that Polish law is relevant to this matter.
The Polish Law of Industrial Property grants protection to so-called “commonly-known” trademarks, even if they are not registered within the Patent Office. However, this Panel finds it hard to derive from the contentions and evidence offered by the Complainant that his trademark can be regarded as “commonly-known”.
Moreover, article 10 of the Polish Act on Combating Unfair Competition prevents such branding of goods and services that can mislead as to its origin and in particular can mislead as to the identity of the person who places the goods or services onto the market. This article can be understood as granting a limited protection to the trademarks even if they are not formally registered and therefore the Complainant can derive from this article his right to the unregistered trademark CAMERIMAGE.
In coming to the conclusion that the Complainant actually holds rights in an unregistered trademark consisting of the word “Camerimage”, this Panel considers the fact that this word has become a distinctive identifier associated with the Complainant’s services. This was not only due to the length of its use (15 years) but also due to the fact that “Camerimage” is an invented word having no specific meaning in any language and there is no evidence of it being used otherwise as to name the Festival.
The relevant part of the domain name in dispute is “camerimage” 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 a trademark including the word “camerimage”. 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 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.
The Panel is satisfied with the Complainant’s statement that the Respondent must have been aware of the Complainant’s trademark while registering the domain name in dispute and that the act of registration was sort of a “revenge” for rejecting the proposal of collaboration or joint-venture with the Complainant.
It is equally clear that the disputed domain name was used in bad faith. The facts of this case fall within the scope of paragraph 4(b)(i) as well as paragraph 4(b)(iv) of the Policy. The Respondent actually offered transfer of the disputed domain name to the Complainant for valuable consideration which was in excess of the Respondent’s out-of-pocket costs. As “Camerimage” is a word that can not be associated with anything else as the Festival and the Complainant, it can be concluded that by using the disputed domain name the Respondent intentionally attempts to attract Internet users to his website by creating a likelihood of confusion with the Complainant’s mark. Commercial gain which the Respondent achieves or at least attempts to achieve from such a conduct can not be questioned, as the services on the website are offered for financial consideration.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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, <camerimage.com> be transferred to the Complainant.
Dated: July 29, 2008