WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pro Confort SRL v. P-IER56, Ion Robu
Case No. D2008-0801
1. The Parties
The Complainant is Pro Confort SRL, of Romania, represented by Marius Cucuruz.
The Respondent is P-IER56, Ion Robu, of Romania.
2. The Domain Name and Registrar
The disputed domain name <ringrandhotel.com> is registered with Key-Systems GmbH dba domaindiscount24.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2008. On May 22, 2008, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the disputed domain name. On May 23, 2008, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center on May 28, 2008 that the Complaint was administratively deficient, the Complainant cured the deficiencies noticed in the 5 days term provided in the notification. 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 June 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2008. The Response was filed with the Center on July 2, 2008.
The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on July 16, 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. The Panel issued Administrative Panel Order No.1 on July 30, 2008 and Administrative Panel Order No. 2 on August 1, 2008, both addressed to the Complainant by which it requested documents in support of the RIN HOTEL and RIN GRAND HOTEL trademarks. In response to the Administrative Panel Orders the Complainant submitted the requested documents. On July 3, 2008, the Complainant submitted unsolicited Supplemental Fillings, which the Panel according to paragraph 10 of the Rules chooses to not consider.
4. Factual Background
The Complainant is the owner of RIN HOTEL combined trademark according to the Romanian Office State for Invention Decision no. 259311. The combined trademark consists of a triangle with 4 stars and the letter R and the words RIN HOTEL displayed at the base of the triangle.
The Complainant also holds a domain name comprising the said trademarks used for advertising the services of a 4 star hotel called RIN GRAND HOTEL, located in Bucharest Romania, advertised as the largest hotel in Europe.
The disputed domain name was registered on November 22, 2007 with a listed contact of: P-IER56, and listing an organization contact of: Ion Robu. The disputed domain name is redirected to the website at ”www.hotelgrandrin.ro” which displays information about the RIN GRAND HOTEL in Bucharest, Romania.
5. Parties' Contentions
The Complainant contends that:
- the disputed domain name is identical to trademarks and service marks (owned by the Complainant (RIN GRAND, RIN GRAND HOTEL, RINGRANDHOTEL.RO) in which the Respondent has no rights,
- the Respondent has no rights or legitimate interests in respect of the disputed domain name, and he has copied one of the earlier versions of the “ringrandhotel.ro” website
- the disputed domain name “has been registered and is being used in bad faith, and all contact information has been adapted from the original RinGrandHotel.ro to the RinGrandHotel.com”.
The Respondent alleges that:
- The disputed domain name is “similar to Rin Grand Hotel and the domain name” <ringrandhotel.ro>.
- To the Respondent's knowledge, RINGRANDHOTEL is not a registered service mark.
- The disputed domain name supports a positive public image of Rin Grand Hotel.
- The information contained in the website under the disputed domain name is factual and cannot be the property of any individual or entity.
- The information contained in the website under the disputed domain name “promotes and encourages the prospective clients to visit and use the services offered by Rin Grand Hotel, without any personal gain” to the Respondent.
- The domain name was not acquired for the purpose of selling or transferring the domain name to the Complainant or to a competitor of the Complainant but instead supports the activity of the hotel.
- The representatives of Rin Grand Hotel engaged in unprofessional and unethical behavior,
6. Discussion and Findings
A. Identical or Confusingly Similar
The documents presented by the Complainant (application to the Romanian State Office for Inventions and Trademarks under no. M00116, Decision of the Romanian State for Inventions and Trademarks no. 166580 registered under no 001280 and the Decision Romanian State for Inventions and Trademarks no. 259311) evidence that the Complainant obtained legal protection through registration for its combined trademark RIN HOTEL with figurative element from January 10, 2008.
The disputed domain name registration predates the registration of the Complainant trademark RIN HOTEL.
The Panel shares the consensus view in prior UDRP decisions according to which, registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. See: Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527.
The Policy makes no specific reference to the date on which the owner of the trade or service mark acquired rights with respect to this element of the Policy.
The disputed domain name comprises two of three words predominantly displayed in the combined trademark RIN HOTEL of the Complainant. Moreover, the Respondent acknowledges that the disputed domain name is “similar” to the Complainant's marks.
In conclusion the Panel finds that the disputed domain name is confusingly similar with a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent asserts rights and legitimate interests in the disputed domain name by noting that the website to which the disputed domain name resolves displays correct information and presentation of the hotel services of RIN GRAND HOTEL, located in Bucharest Romania.
The Panel considers that the first two circumstances of Paragraph 4(c) of the Policy are not applicable to the Respondent's allegations as:
- the use of the disputed domain name cannot be considered as a bona fide offering of goods or services, considering the fact that the Respondent is not using the disputed domain name to offer any goods or services of its own but rather describes the services of the Complainant and,
- the Respondent has not been commonly known by the domain name nor has it any relationship with the Complainant.
The application of third circumstance of Paragraph 4(c) of the Policy to the Respondent's allegations is nevertheless interesting to discuss.
According to paragraph 4(c)(iii) of the Policy rights or legitimate interest may be proven when the Respondent is “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.”
According to the Respondent's allegations, the Respondent is not using the disputed domain name for commercial gain and does not seek to tarnish the Complainant's trademark.
However, the disputed domain name redirects to the domain name <hotelgrandrin.ro> where it displays images and information of the hotel services in RIN GRAND HOTEL located in Bucharest, Romania. From the searches made by the Panel, the owner of the <hotelgrandrin.ro> is neither the Complainant nor the Respondent. The domain name <hotelgrandrin.ro> was registered in June 2008.
The factual situation indicates a strong purpose of the Respondent to be associated with the official website of the hotel RIN GRAND HOTEL and the trademark of the Complainant and to divert the Internet users looking for the official website of the hotel. Notably, the Respondent has, according to the Complainant, simply copied a prior version of the Complainant's website.
In the absence of the Complainant's consent, the Panel cannot consider such use of the disputed domain name legitimate, and such use cannot be considered as demonstrating the Respondent's rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel is aware that the consensus among UDRP Panels is that the registration of the domain name is generally not in bad faith by itself, if it predated the registration of the Complainant trademark.
However, there are situations, when the Respondent is clearly aware of the Complainant, and it is clear that the aim of the registration was to take advantage of the potential for confusion between the domain name and any anticipated complainant rights.
This is the case herein, whereby it is obvious that the Respondent was aware of the Complainant's rights as it registered the disputed domain name a month after the official opening of the hotel RIN GRAND HOTEL in Bucharest which took place at the end of October 2007 and was notoriously advertised by Romanian media.
It is obvious that the registration of the disputed domain name was done with the knowledge of the hotel RIN GRAND HOTEL opening with the clear intent to take advantage of the Complainant's anticipated trademark.
The registration in the said conditions together with the actual use of the disputed domain name by redirecting to a website which copies the content of the Complainant's former website is in the opinion of the Panel bad faith registration and use of the disputed domain name in the sense of paragraph 4(b) 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 <ringrandhotel.com> be transferred to the Complainant.
Beatrice Onica Jarka
Dated: August 8, 2008