The Complainant is INDUSTRIAL MARTI DE RELOJERIA, S.L. of Barcelona, Spain, represented by Sugrañes, S.L., Spain.
The Respondent is BusinessService Ltd. of St. Petersburg, Russian Federation, represented internally.1
The disputed domain name <potens.com> (the “Domain Name”) is registered with DomReg Ltd. d/b/a LIBRIS.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2008. On October 10, 2008, the Center transmitted by email to DomReg Ltd. d/b/a LIBRIS.com a request for registrar verification in connection with the Domain Name. On October 14, 2008, DomReg Ltd. d/b/a LIBRIS.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 that the Complaint was administratively deficient, the Complainant filed an amended Complaint on October 24, 2008. In addition, the Center notified the Complainant, with a copy to the Respondent, that the Registration Agreement was in Russian and requested that Complainant elect between: providing evidence of an agreement with Respondent to use English as the language of the proceedings, submitting a Russian translation of the Complaint, or making a request that the proceedings be conducted in English. In reply, the Complainant submitted a request that the proceedings be conducted in English, while the Respondent, replying by email in English, requested that Russian be the language of the proceedings. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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, in both Russian and English, of the amended Complaint, and the proceedings commenced on November 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2008. The Response, in Russian, was filed with the Center by fax and email on November 21, 2008.
The Center appointed Natasha Lisman, who is familiar with both English and Russian, as the sole panelist in this matter on December 24, 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.
Exercising its authority under paragraph 11(a) of the Rules, the Panel determines that the language of this proceeding is English but there is no need to require the Respondent to submit a translation of its Response and supporting documentation into English. In its Response, the Respondent demonstrates an excellent understanding of the Complainant's allegations and of the reasoning in numerous decisions in other UDRP cases, all written and published in English. For these reasons, the Panel finds that allowing the Respondent to argue its defense in Russian while rendering the decision in English strikes a fair and appropriate balance between the parties' interests.
The Complainant, an entity based in Spain, is the owner of a trademark consisting of the word “potens” or “POTENS” which was first granted registration in Spain in 1960 and has been continuously renewed since then, and has also been registered as a Community trademark since 2005 and as an international trademark since 2007. While the trademark is registered for many types of products and activities, the Complainant describes its main line of business as the sale of watches and tools and accessories for the repair of watches.
The Respondent is a Russian limited liability company. It registered the Domain Name on February 20, 2000.
The Complainant submits that the Domain Name <potens.com> is identical to its trademarks. The Complainant further contends that the Respondent has no right or legitimate interest in respect of the Domain Name because it is neither using it, nor has made any demonstrable preparations to use it, in connection with a bona fide offering of goods or services and, in fact, has listed it for sale. The Complainant supports these contentions with two items of evidence: that the Domain Name resolves to a blank screen, and that the Domain Name, along with several other TLDs incorporating the word “potens,” are listed on a website dedicated to the sale of domain names. In addition, the Complainant argues that the Respondent cannot have a legitimate interest in the Domain Name because Spanish law entitles the Complainant, as the owner of the “potens” trademark, to bar others from using it in computerized communication networks and as a domain name. Finally, relying on the same evidence, as well as the Respondent's failure to respond to an e-mail the Complainant alleges to have sent to the Respondent before initiating this case, in which it demanded the transfer of the Domain Name, the Complainant contends that the Respondent registered and is using the Domain Name in bad faith.
The Respondent does not dispute that the Domain Name is identical to the Complainant's trademark. The focus of its defense is that “potens” is a commonly used word equivalent to the Russian “потенция” and “потенциал” (“potency” and the noun “potential”), whose commercial value the Respondent has, consistent with the UDRP precedent, the right to exploit. Specifically, the Respondent claims that “potens” is the less significant in a family of domain names it has acquired, including <potenz.com > 2 and < potenzia.com>, as part of a single etymological paradigm to be used in connection with a business project to be implemented for an association called «Здоровый образ жизни – залог сексуального здоровья» (“Healthy Lifestyle – A Guarantee of Sexual Health”). According to the Respondent's allegations and supporting documentation, the relevant activity began in December 2001, with the Respondent's promulgation of a business plan for the formation of a business-incubator called «Потенция, второе название “Potens” (“Potency,” a/k/a “Potens”), whose contemplated mission was defined as supporting and servicing small business enterprises involved in promoting healthy lifestyle, especially among men. The implementation of this business plan was suspended in January 2002 until such time as financing may be obtained, and re-activated on February 26, 2008, when the Respondent and two other limited liability companies entered into a joint venture agreement to carry out the Respondent's original business plan. This agreement contemplates various activities and provides that all profits will be directed toward the formation of an inter-regional association “Healthy Lifestyle – A Guarantee of Sexual Health”.
The Respondent objects to the Complainant's reliance on Spanish law and argues that under the international private law conflict-of-laws principles, the applicable law is the law of the Russian Federation because the property right to the Domain Name belongs to a commercial organization acting in the Russian Federation.
Based on the results of an Internet search, including the Complainant's website, and an opinion survey conducted for the Respondent among residents of St. Petersburg, in the Russian Federation, the Respondent also argues that there is no significant association between the word “potens” and the Complainant's products, and conversely, that the Complainant's trademarks have no association with the Respondent's and its associates' planned undertakings and services.
The Respondent cites the above considerations as evidence not only of its legitimate interest in the Domain Name but also of its good faith. In response to the Complainant's allegations and evidence of bad faith, the Respondent denies that it had any knowledge of the Complainant's trademarks and did not receive the Complainant's email demand for the transfer of the Domain Name. In addition, it contends the print-out of the potens-based domain names on a website for sale is “untrue and falsified information”. At the same time, the Respondent offers a lengthy discussion of the distinction between “cyberspeculation”, which the Respondent argues is legitimate, and “cybersquating”, which is not.
Finally, the Respondent accuses the Complainant of reverse domain name hijacking, allegedly for the purpose of harming the Respondent and wrongfully misappropriating the Domain Name in deliberate circumvention of the fact that it could not register its trademark in Russia because it is a commonly used word, is similar to the Respondent's domain name, and cannot be used in connection with the endeavors and services that the Respondent plans to offer.
Pursuant to Policy, paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Domain Name:
(i) 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
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Respondent has registered and is using the Domain Name in bad faith.
Since the Respondent does not dispute that the Domain Name is identical to the Complainant's trademarks, this element of the Complainant's case is satisfied.
The first question with respect to this element is whether the Complainant has presented a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. See, e.g., Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110. The Panel finds that even though the Complainant's concrete evidence - lack of any content on the website corresponding to the Domain Name and the listing of the Domain Name for sale - is somewhat light, it is sufficient to answer this question in the affirmative.
Therefore, the next question is whether the Respondent has demonstrated affirmatively that it does have rights or legitimate interests in the Domain Name. Id. In answer to this question, the Panel finds that the Respondent's submission, for all its length, complexity, and intensity, falls short of presenting a credible and persuasive case.
First, while alleging that its business plan for the legitimate use of the Domain Name was revived in February of 2008 after a six-year hiatus, the Respondent provides not a shred of evidence that anything has been done to implement the plan during the nine months between the revival and the date of its Response.
Second, the Respondent's explanation of its choice of the word “potens” for the domain name associated with its business plan is not plausible. Given the Respondent's and its associates' claimed (but unexplained) desire to come up with an English equivalent to the Russian «потенция», the transliteration “potenzia” does seem to fit, but “potens” neither sounds nor looks like the Russian word. Furthermore, if the Respondent's additional intent, as he claims, was to chose a domain name that connotes “such an important parameter of male health as potency”, then “potency” would have been the obvious choice. “Potens”, contrary to the Respondent's assertions, is a Latin adjective that has so little, if any use, in English that it is not found in a standard English dictionary. Indeed, even among the St. Pertersburg residents surveyed by the Respondent, the overwhelming majority associated “potens” with the noun «потенциал» (potential), which does not connote male potency or sexual health.
Moreover, the Respondent has been found to be the owner of some 868 domain names, 3 Suisses International SA v. Reddot, Ltd, WIPO Case No. D2008-0595, and has been the unsuccessful respondent in several domain name cases involving registered trademarks. In these cases, the Respondent's position has been either, as in this case, to justify its use of others' registered trademarks by reference to some unimplemented business plan, see, e.g. Universal Spheres, Inc. d/b/a Golden Palace.com v. Business Service Ltd, Escrow Domain Department, Temporary Domain Transfer Manager, NAF Claim No. FA746952, or to offer no response to the complaint at all. See, e.g. Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd., WIPO Case No. D2007-1836; Imperial Chemical Industries Plc, Desowag GmbH v. BusinessService Limited, WIPO Case No. D2007-0998; BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749. This pattern of conduct undermines the Respondent's credibility and makes it hard to believe that it chose the Domain Name for any reason other than the fact that it found it among the registered trademarks it so prolifically registers as domain names.
Finally, while baldly accusing the Complainant of presenting a falsified documentary attachment showing a listing of the Domain Name and other domain domains incorporating the word “potens” for sale, the Respondent stops short of actually denying its responsibility for such listing, much less buttressing such denial with concrete evidence. Instead, it resorts to a general justification of “cyberspeculation”. Even if such justification were acceptable for domain names utilizing common generic words such as “malls”, “casino”, and “tours”, Gorstew Limited v. Worldwidewebsales.com, WIPO Case No. D2002-0744, as previously noted, neither “potens” nor the other trademarks the Respondent has been found to have improperly registered or used in domain names fall into the class of common generic terms. See discussion of “speculation” as a legitimate interest in Felsina S.p.A. v. Hannah's Recipes Inc., WIPO Case No. D2006-1444.
Thus, the Panel concludes that the Respondent has failed to meet its burden of demonstrating right or legitimate interest in the Domain Name and, therefore, deems the
Complainant to have satisfied paragraph 4(a)(ii) of the Policy.
Based on the above-discussed evidence concerning the Respondent's replication of the Complainant's trademark in the Domain Name, the Panel also concludes that the Respondent registered and is using the Domain Name in bad faith.
The Panel's above findings and conclusions preclude a finding of Reverse Domain Name Hijacking against the Complainant.
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, <potens.com> be transferred to the Complainant.
Dated: January 13, 2009
1 Although the Registrar reported the current Registrant's name as “Potens, DP Manager, Business Service Ltd.”, the Respondent's communications and submissions to the Center make clear that it is the Registrant of the Domain Name and that its name is “BusinessService Ltd”. The results of the WhoIs query provided by the Complainant show that “Potens, DP Manager” is merely the administrative and technical contact for BusinessService Ltd.
2 The Respondent states that due to various circumstances it had to transfer < potenz.com> to a third party.