The Complainant is Romaqua Group S.A., of Romania, represented by Nestor Nestor Diculescu Kingston Petersen, of Bucharest, Romania.
The Respondent is Alcormedia, of Los Angeles, California, United States of America.
The disputed domain name <borsec.ro> is registered with RNC.ro.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2009. On February 5, 2009, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the disputed domain name. On February 6, 2009, RNC.ro 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” 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 of the Complaint, and the proceedings commenced on February 12, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2009. The Response was filed with the Center on February 28, 2009.
The Center appointed Marilena Oprea as the sole panelist in this matter on March 9, 2009. 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 language of the proceedings is English.
The Complainant is a Romanian company, S.C. Romaqua Group S.A. with activities related to the bottling of mineral waters.
The Complainant is the owner of numerous trademarks, industrial designs and models incorporating the word “borsec”. They include:
(i) National Romanian trademark No. 041109 dated March 29, 2000 for the words BORSEC - REGINA APELOR MINERALE (in English “Borsec Queen of Mineral Waters”) & Device in classes 5, 32, 35;
(ii) National Romanian trademark No. 043879 dated April 18, 2000 for the stylized word BORSEC in classes 5, 32, 35;
(iii) National United States trademark No. 2998426 filed on March 17, 2004 for the words BORSEC - REGINA APELOR MINERALE (in English “Borsec Queen of Mineral Waters”) & Device in classes 5, 32, 35;
(iv) Community trade mark No. 004227948 dated January 3, 2005 for the words BORSEC - REGINA APELOR MINERALE (in English “Borsec Queen of Mineral Waters”) & Device in class 32.
A geographical indication for the word “borsec” is registered in the name of “Asociatia de producatori Romaqua Group” under the No. IG 000091 dated April 10, 2001 in class 32.
The Respondent Alcormedia is an entity of United States of America.
The disputed domain name <borsec.ro> was registered on January 1, 1996.
The Complainant was known until 1998 as “Regina Apelor Minerale Borsec” (in English “Borsec Queen of Mineral Waters”) and continues a tradition of mineral water industrial bottling of over 190 years.
The Complainant's mark BORSEC is the leader in the market of mineral waters, being part of most appreciated waters in the world and being exported in a large number of countries, including United States of America. In a recognition of its qualities, the BORSEC mineral water has obtained numerous awards since 1873, including the title as the “World's Best Mineral Water” in 2004 at the Berkley Springs International Water Tasting Awards organized in West Virginia, United States of America.
Currently the Complainant has 16 distributors on the United States of America market. Due to its extensive marketing over the years, the BORSEC trademark has became famous in Romania, Unites States of America and many other countries. The confirmation of its position as the leading Romanian brand in the non-alcoholic beverages market is made by a study performed by Synovate Market Research Company in 2007.
A large part of Complainant's revenue is generated by the commercialization of its BORSEC products on the Internet, on its website “www.borsec.romaqua-group.ro”. A 2% of the total revenue is generated by the export activities of BORSEC mineral water.
The Complainant holds a large portfolio of industrial property rights for BORSEC and variations of this mark registered in more than 25 countries worldwide, holding more than 30 Romanian registered trademarks containing the denomination “Borsec”. Further, the Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy has been established in the present case, as follows:
(i) The domain name <borsec.ro> is identical or confusingly similar to the BORSEC trademarks;
The disputed domain name is confusingly similar to Complainant's notorious trademarks and the domain name <borsec.ro> is essentially identical to the main element of Complainant's former trade name in 1996, “Borsec Queen of Mineral Waters”, whereas the addition of the ccTLD “.ro” cannot alter the identity of the disputed domain name with the marks, but can only connect the said trademark to the Romanian territory.
(ii) The Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name;
Respondent is not an authorized agent or licensee of the Complainant's products and has no right by which the Respondent would have been entitled to register and/or apply for any domain name incorporating Complainant's mark and corporate name.
Respondent is not commonly known by the disputed domain name.
Due to the fact that the domain name did not resolve to an active page, being reactivated only after Complainant's warning letter of April 6, 2007, the Complainant contends that the above is a clear indication that the Respondent has not make any use of, or preparation to use the domain name in a bona fide manner, before having notice of the dispute.
(iii) The domain name was registered and is being used in bad faith.
The Complainant asserts that at the time the Respondent registered the disputed domain name, the “Borsec name” had been used by the Complainant for over 190 years, being famous in Romania and worldwide, albeit not having registered rights. Especially because the domain name incorporates entirely the brand BORSEC, the Respondent clearly intended to capitalize on consumer confusion.
Currently, goods with BORSEC trademark are commercialized in the United States of America and have registered an increase in sale in the past few years.
The Respondent's knowledge of the Complainant's business and, thus evidence of bad faith, is the fact that 16% of the total of Romanians in the United States of America were living in Los Angeles, California, (Respondent's place of business) in 1999 according to a study made by Georgetown University students. Romanians have tight connections with their home land, and therefore says the Complainant they are consuming Romanian products.
Citing previous cases, the Complainant contends “there is a legal presumption of bad faith when Respondent reasonably should have been aware of Complainant's trademarks, actually or constructively”.
Further, according to relevant registration agreement, a registrant has the obligation to investigate whether the domain name in question would infringe, from the registration moment further, any legal right of a third party.
The Complainant further presumes that the domain name was registered only for the purpose of selling/transferring the same to the Complainant or in order to prevent the Complainant from reflecting its mark in the corresponding domain name.
The Respondent requested the Panel to deny the remedies required by the Complainant, and addressed all the elements under paragraph 4(a) of the Policy, as follows:
(i) With regard to the fact that the domain name <borsec.ro> is identical or confusingly similar to the BORSEC trademarks;
The Respondent does not dispute that the Complainant currently owns BORSEC related trademarks, however, at the time of the registration of the disputed domain name the Complainant did not exist.
After investigating the Complainant's company history in the Companies Register (information provided, Respondent's Annexes 2-6), the Respondent contends mainly the following:
- the Complainant “Romaqua Group S.A.” is a newly incorporated entity being registered on March 17, 2008;
- the other companies mentioned in the Complaint (“Romaqua Group S.A. Borsec”, “Regina Apelor Minerale Borsec S.A.”) are third parties and the Complainant has altered the documents in a deceiving attempt to hide the truth about its company's recent establishment;
- another company called “Romaqua Group S.A.” appears to be registered on January 1991, however this registration is deceiving because this company's name was in fact “Comchim S.A.” and was trading chemical products. This company changed its name in 2003 into “Romaqua Holding”, and in 2008 became “Romaqua Group S.A.”, changing its principal activity into production and bottling of mineral waters.
- Also, the Respondent contests the Complainant's assertions regarding (i) “Romaqua Group S.A.” Borsec's turnover in 2000, whereas the information obtained shows that the said company was established in August 2000; and (ii) the fact that Complainant was known until 1998 as “Regina Apelor Minerale Borsec S.A.” and is continuing a tradition of more than 190 years, whereas its information shows that it was in fact registered on April 1991.
Further the Respondent states that the Complainant's marks were registered starting in March 2000, long after the registration of the disputed domain name for the simple reason that prior to all trademark registrations, the Complainant was in the business of trading chemicals and pharmaceutical products.
The Complainant had registered trademarks such as WWW.BORSEC.RO or WWW.BORSEC.COM, with full knowledge that these were registered as domain names, thus demonstrating its premeditated scheme, even since 2000, to unscrupulously obtain the “borsec” domain names.
The disputed domain name was registered and continuously used long before the Complainant's trademarks were registered.
Further, the Respondent cites jurisprudence and the First Directive 89/104/EEC of the Council of December 21, 1988, saying mainly that the trademark holder shall not have the right to prohibit third parties from using, in the course of trade, indications concerning the geographic origin, providing they use them in accordance with honest practices in industrial and commercial matters.
(ii) With regard to Respondent's rights or legitimate interests in respect of the disputed domain name;
The Respondent was established in 1994 and is activate in the business of advertising and travel. For that purpose, the Respondent has acquired several domain names representing places with important tourist potential in Romania, such as <hunedoara.ro>, <deva.ro>, <resita.ro>, <sighisoara.ro>, <bacau.ro>, <braila.ro>, <giurgiu.ro>, <danube.ro>, <blacksea.ro>. The Respondent acquired these domain names with the sole intention of developing a tourism interest for its travel business.
The city of Borsec, located in the beautiful Borsec valley, was officially proclaimed a spa in 1953 and has been famous for the curative and therapeutic qualities of its mineral water resources since the 18th century, thus making, it appealing for recreational tourism.
The Respondent is not in the water business and is making a fair and legitimate use of the disputed domain name without any intent for commercial gain misleadingly to divert consumers or to tarnish the reputation of the trademark's owner.
(iii) With regard to the fact that the domain name was registered and is being used in bad faith.
The Complainant's affirmation that at the time of registration of the disputed domain name, it was using the trademark for over 190 years is a willful distortion of the truth as before 1998 Romania was ruled by a totalitarian communist regime and the law allowing the concession for water spring resources was adopted in March 1998.
As the Respondent did not agree to the Complainant's request to transfer the domain name sent in April 2007, the Complainant acted to obtain the transfer of the disputed domain name in this proceeding. Before any notice of the dispute, namely on March 20, 2007, the Respondent changed its webhosting company, this constituting in the Respondent's opinion solid evidence that it was using the domain name in connection with a bona fide offering of services.
The Respondent further asserts that the Complainant did not provide any evidence of bad faith, specifically no evidence of registration of the domain name to prevent the Complainant from registering the same, no suggestion that the Respondent and Complainant are competitors, or that the Respondent is attempting to disrupt its business. Also, the Respondent has not offered to sell the disputed domain name to the Complainant or to other third party.
(iv) Reverse domain hijacking claim
Further, the Respondent asks the Panel to make a finding of reverse domain hijacking against the Complainant, grounded on the fact that the registration of the trademark WWW.BORSEC.RO was made in bad faith, with the malicious intent of grabbing its registered domain name in the future.
Paragraph 15(a) of the Rules instructs the 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”.
Pursuant to the requirements of paragraph 4(a) of the Policy, the Complainant must demonstrate that the following three circumstances are cumulatively met in order to obtain the transfer of the disputed domain name:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent does not have rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used by the Respondent in bad faith.
Consequently, the Panel shall further analyze the concurrence of the above-mentioned circumstances in the present case.
There are two requirements that a complainant must establish under this element, namely: that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the mark.
The Complainant grounds it's Complaint on a number of trademarks containing the word “borsec” and/or device and other word elements, registered as of 2000. According to the documents provided, none of these trademarks have a disclaimer for the word “borsec”. Furthermore, the Complainant invokes further rights such its former trade name back in 1996, “Regina Apelor Minerale Borsec” (“Borsec Queen of Mineral Waters”).
The Respondent does not dispute the Complainant's claimed trademark rights, however does emphasize the fact that its domain name registration predates the trademark registrations and that the Complainant is in fact an entity incorporated for less than one year.
In relation to the first element of the Policy, although some panels have in certain limited circumstances denied the complaints on this argument, as the Respondent cited in its response, the Panel agrees with the current consensus view2 on the matter of registration of a domain name before a complainant acquires trademark rights in a name. That is to say, this Panel considers that this of itself does not prevent a finding of identity or confusing similarity. The Policy does not require that Complainant's trade or service mark precede the domain name registration. However it can sometimes make it difficult for a complainant to prove that the domain name was registered in bad faith, as it may be difficult for a complainant to show that the domain name was registered with a future trademark in mind.
Accordingly, this will be further analyzed under paragraph 6.C. below, as the Panel in relation to the first element considers it unnecessary to analyze the other assertions made by the Parties, pursuant to the provisions of the Policy, paragraph 4(a)(i).
The Panel concludes that the <borsec.ro> domain name, after disregarding the “.ro” country code top level domain, is confusingly similar to the Complainant's BORSEC trademarks and establishes that the first element of the Policy is met, pursuant to the Policy, paragraph 4(a)(i).
Because the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, it is for the Respondent to demonstrate that it, inter alia, comes within one of the circumstances of paragraph 4(c) of the UDRP or other relevant circumstances showing its rights or legitimate interests in the domain name. The Respondent relies mainly on the third circumstance provided under paragraph 4(c)(iii), namely “you [i.e., the Respondent] 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 Respondent also appears to rely to some extent on paragraph 4(c)(iii), in so far as Respondent's intentions and current use of the domain name may be said to relate to its involvement in the tourism trade.
The Respondent has mentioned that it was established in 1994 and is active in the business of advertising and travel, however no evidence was provided except for the acquisition of several domain names representing places in Romania with tourist potential, such as <bacau.ro>, <braila.ro>, <resita.ro>, <sighisoara.ro>, <danube.ro>, <blacksea.ro>. In the Panel's view, the mere fact of registering a number of domain names reflecting cities or denominations of places in Romania is insufficient to demonstrate a business in the advertising or tourism field.
Further, the Respondent asserts its continuous use of the disputed domain name and, except for the “solid evidence” of use, namely changing its web hosting provider before receiving the Complainant's warning letter, the Respondent does not provide any evidence whatsoever.
On the other side, the Complainant states that Respondent's domain name did not resolve to an active page, being activated only recently, following its warning letter.
As it is now common practice for panels to refer to the Wayback Machine in order to determine how a domain name has been used in the past (see Descente, Ltd. and Arena Distribution, S.A. v. Portsnportals Enterprises Limited, WIPO Case No. D2008-1768; The iFranchise Group v. Jay Bean, MDNH, Inc/ Moniker Privacy Services , WIPO Case No. D2007-1438 or National Football League v. Thomas Trainer, WIPO Case No. D2006-1440), the Panel used this tool as well, and was not able to find any active webpage. In fact on October 9, 2007, few months after the delivery of Complainant's warning letter, on the webpage appeared to be a banner with the following wording: “Welcome to www.borsec.ro. Site under construction”. The parties are referred by way of example to the following URL, namely: http://web.archive.org/web/20071009001159/www.borsec.ro/about.html
It is true that currently the domain name resolves to a website presenting the city of Borsec which could fall under paragraph 4(c)(iii) of the Policy, but the Panel cannot ignore that the domain name has apparently not been actively used for more than ten years and, after receiving a warning letter, the Respondent found it appropriate to actively use the disputed domain name.
A further element mentioned by the Respondent is that Borsec is in fact a city name, this being the reason for registering this domain name along with the other domain names reflecting Romanian places with tourism potential. Although mentioned under the first element of the Policy, Panel finds it appropriate to analyze under the second element Respondent's comments regarding geographical indications, and the limitation of trademark holder's rights in connection with. third parties using such denominations in the course of trade.
Furthermore, the Complainant itself filed in its Complaint's Annex 5 a copy of the Geographical Indication Certificate for the word “borsec” granted however to a third party, namely to “Asociatia de producatori Romaqua Group” (the Association of Producers Romaqua Group) from Harghita county. As provided by Romanian law3, the persons entitled to obtain rights over the geographical indications are the associations of producers developing a production activity in the geographical area, for the goods indicated in the application.
Indeed, the provision of tourism information and services on a website that uses a domain name consisting of the geographical area at issue has repeatedly been upheld as a bona fide use (see Commune of Zermatt and Zermatt Tourismus v. Activelifestyle Travel Network, WIPO Case No. D2007-1318; or Consejo de Promoción Turística de México, S.A. de C.V. v. Latin America Telecom, Inc. WIPO Case No. D2004-0242).
The Respondent stated that it acquired these domain names with the sole intention of developing tourism interest for its travel business, but did not provide any evidence of its business, or of the continuous or actual use of the disputed domain name before having notice of this dispute; in fact, Panel's searches revealed a page under construction after more than ten years from the registration date. On the other hand, the Respondent's registration in 1996 of several domain names (including the disputed domain name) comprising geographical terms in Romania does lend some credence to Respondent's claims, even if it does not suffice to positively establish a right or legitimate interest in the disputed domain name.
Accordingly, the Panel concludes that the Respondent has failed on the provided record to rebut the Complainant's prima facie showing that the Respondent lacks rights to or legitimate interests in the domain name at issue, and thus the Complainant has on balance satisfied its burden under the second element of the Policy.
The final issue is that of bad faith registration and use by the Respondent. Paragraph 4(b) of the Policy enumerates several nonexclusive circumstances as evidence of registration and use of a domain name in bad faith, some of these being raised by the Complainant.
For paragraph 4(a)(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.
A significant factor in the present dispute is that the registration of the disputed domain name predates the Complainant's trademark registration by more than four years.
As stated in the current consensus view4 “normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant's non-existent right” however, “in certain 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 confusion between the domain name and any potential complainant rights, bad faith can be found”.
The Complainant asserts that, at the time the Respondent registered the disputed domain name, “the BORSEC name had been used by Complainant for over 190 years, being famous in Romania and worldwide, albeit not having registered rights”. The Complainant's registered marks include the word “borsec” (being a city in Romania) but they are not for the word “borsec” per se.
The trade name “Regina Apelor Minerale Borsec” (Borsec Queen of Mineral Waters) by which the Complainant says it was known until 1998, is different from the disputed domain name. Also, in the Panel's view the word “borsec” in the (then) name of the company seems to serve merely to indicate the geographical area and not to serve as a trademark per se.
Further, there is no evidence on the record regarding the use of the Complainant's marks before the registration of the disputed domain name. The fact that the mineral water from Borsec has long been recognized for its qualities, does not evidence the use of the same as a trademark by the Complainant. Indeed, the fact that Borsec is a geographic area recognized for its water would seem to reduce the Complainant's ability to convincingly argue that BORSEC has acquired distinctiveness as an indicator of Complainant's water products in particular.
Panel agrees with previous learned panel in case Commune of Zermatt and Zermatt Tourismus, supra, namely geographical terms usually distinguish goods and services emanating from one region from those emanating from a different region, and this indication of geographical origin is distinct from the source-identifying function of trademarks. Trademarks serve to identify a specific trader as the origin of specific goods and services, and a geographical term typically cannot identify a single trader with sufficient particularity.
Further, the Complainant contends that BORSEC is commercialized in the United States of America and cites a study from 1999 regarding the Romanians living in this country. The Panel finds this argument unpersuasive without further supporting evidence in part because there is no evidence of the export of Complainant's water under the BORSEC trademark to the United States of America before 1996, when the disputed domain name was registered. Moreover, there is nothing before the Panel to establish that the Respondent was at that time aware of let alone intending to target the Complainant in particular.
The Complainant cites two cases related to actual and constructive knowledge, but the cases are different as both domain names in those cases were registered after the trademark registrations and, complainant and respondent were both in the same business, this being reflected on the respondent's webpage (Digi International Inc. v. DDI Systems, NAF Case no. 124506). In the second cited case the respondent also sent an offer to sell by letter to the complainant shortly after registering the disputed domain name (Exxon Mobil Corporation v. Joseph Fisher, WIPO Case No. D2000-1412).
For the above reasons, it is not necessary for the Panel to further comment on the issues raised by the Respondent, such as Romania's history or first law on concession for mineral waters.
Further circumstances are also taken into consideration for assessing the absence or presence of bad faith in this matter:
(i) Applicability of paragraph 4(b)(ii) of the Policy.
The Complainant contends that the Respondent has registered the domain name in order to prevent the Complainant from reflecting its mark in the corresponding domain name.
As above mentioned, at the time of registration of the disputed domain name the Complainant did not demonstrate any trademark right for BORSEC. Furthermore, paragraph 4(b)(ii) of the Policy also stipulates the following situation as evidence of bad faith “you [Respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct”, thus another condition might be added here, namely that the Respondent has engaged in a pattern of such conduct, which was not demonstrated by the Complainant either.
(ii) Registration of the domain name
In respect to the Complainant's argument that the registration agreement provides the obligation to investigate whether the domain name would infringe any third party's right, even ignoring the fact that the registration contract is very likely to have had a completely different wording back in 1996 (the Policy was adopted in 1999) and even if the Panel would like to agree with such an obligation or at least diligence of a domain name applicant, this cannot however cover an obligation to foresee and investigate future rights (at least absent very clear evidence that the Respondent was aware of the Complainant at the time of registration and intended to target rights it had good reason to believe Complainant would soon be granted).
Furthermore, it is well-established that geographical indications are not per se protected under the Policy in the absence of trademark rights (see Kur-und Verkehrsverein St. Moritz v. StMoritz.com, WIPO Case No. D2000-0617; City of Lake Worth v. John C. Becker, Inc., WIPO Case No. D2003-0576; Commune of Zermatt and Zermatt Tourismus, supra).
(iii) Registration of other similar domain names
The Respondent has apparently registered several domain names comprising geographical areas in Romania, all on the same day as the registration of the disputed domain name, namely on January 1, 1996 (Respondent's Annex 10). This tends to support the Respondent's assertion of its intentions after registering the domain name.
(iv) Respondent's attitude vis-à-vis the warning letter
The Complainant also asserts that the domain name was registered only for the purpose of selling/transferring the same to the Complainant. However, from the parties' contentious, as the Respondent's response to the Complainant's warning letter was not presented by either party but each referred to the same, nothing on the present record indicates that the Respondent has ever offered to sell the disputed domain name to Complainant or to obtain another advantage from it.
(v) Parties' areas of activity
The Respondent asserts it is not in the water business, whereas the Complainant makes no reference to this matter. Thus, it is for the Panel to consider that indeed, the parties are not acting in similar industries.
(vi) Lack of use of the disputed domain name
Taking into consideration the overall context of the Respondent's behavior, the Panel cannot draw the conclusion that a lack of active use of the domain name constitutes itself bad faith use, especially when there was no evidence of registration in bad faith. The Panel further notes that, unlike the situation in cases such as Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, here there has been a Response, and the Respondent's claims as to lack of knowledge of the Complainant at the time of registration, and as regards intended use at that time, are not in the circumstances wholly unreasonable.
For all the above, the Panel adopts the reasoning of the learned panel in Village Resorts Ltd v. Steven Lieberman, WIPO Case No. D2001-0814; Weatherall Green & Smith v. Everymedia.com, WIPO Case No. D2000-1528, which in turn followed Teradyne, Inc. v. 4Tel Technology, WIPO Case No. D2000-0026 to the effect that it was not the intention of the drafts of the Policy to extend the definition of abusive registration to include names originally registered in good faith.
Also, as previous panels have stated, see Elders Limited v. Private Company, WIPO Case No. D2007-1099 citing Tomatis Developpement SA v. Jan Gerritson, WIPO Case No. D2006-0708: “For the purposes of this head of complaint under the Policy, the motives of the registrant at time of registration are of crucial importance. The Policy was designed to deal with cybersquatters i.e. people who register domain names knowing them to be the trademarks of others and with the intention of causing damage or disruption to the trademark owners and/or unfairly exploiting the trademarks to their own advantage”.
The Complainant's case is also made considerably more difficult here by the fact that the disputed domain name was itself registered well over 10 years ago.
In light of the fact situation in the present case, the Panel decides that the disputed domain name was not the subject of abusive registration, and therefore the Policy can not be applied to grant the requested remedy.
The Panel finds that the Complainant has on balance failed to establish that the Respondent registered the disputed domain names in bad faith. The Complainant has therefore failed in these proceedings to establish the third element of the Policy, and the Complaint must fail.
Reverse domain hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The Respondent concludes from the information obtained from the Companies Register that the Complainant is a newly incorporated entity, and that the other entities mentioned are in fact third parties. The Panel has analyzed the information provided by the Respondent and, as per the above, the Complainant Romaqua Group S.A. was indeed registered in 1991 as COMCHIM S.A., changed its name in 2003 in Romaqua Holdings S.A., and further in 2008 in Romaqua Group S.A.; on March 17, 2008 (when Respondent assumes that it was incorporated) Complainant changed its headquarters from Bucharest to another county, Harghita. In March 2003, Complainant merged by taking over with Romaqua Group S.A. from Harghita (which was registered in 1991 as Regina Apelor Minerale Borsec S.A./ Queen of Mineral Waters Borsec S.A., and further changed its name into Romaqua Group S.A. in 1998). Also, Romaqua Group S.A. Borsec - Sucursala Bucuresti is the branch office of the Complainant.
Further, Respondent considers that the Complainant's trademark WWW.BORSEC.RO was “willfully registered in bad faith with the malicious intent of grabbing the disputed domain name”.
However this may be, the Policy does not provide a forum appropriate to comment on the validity of trademark registrations. The Complainant has sufficient trademark rights in order to support its Complaint under the UDRP, such as national mark no. 043879/2000 for the stylized word BORSEC underlined, where the word BORSEC is the dominant element, and thus the Panel was satisfied with regard to Complainant's trademark rights in the word BORSEC.
To succeed on a claim of reverse domain hijacking, the Respondent must show that the Complainant had instituted the administrative proceeding without any real prospect of success, thus the Respondent must show that the Complainant knew of the Respondent's unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, but nevertheless brought the Complaint in bad faith as an evidence of harassment or similar conduct by the complainant in the face of such knowledge (see BAA plc v. Bob Larkin, WIPO Case No. D2004-0555; Sydney Opera House Trust v. Trilynx Pty Limited, WIPO Case No. D2000-1224).
For all the above, although the Panel denies the Complaint, a finding of reverse domain hijacking, as defined in the Rules, is not justified.
For all the foregoing reasons, the Complaint is denied.
Dated: March 23, 2009
1 The translation of the documents provided in Complaint's Annex 5 contains a clerical error, namely the number of the geographical indication in not “16 0009” but “IG 00009”. As to the legitimacy of the Panel doing its own searches, see paragraph 4.5 of the WIPO Overview.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 1.4 and the cases cited therein.
3 See art. 68 and 73, the Trademarks and Geographical Indications Law no. 84/1998.
4 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 3.1 and the cases cited therein.