WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E.I. du Pont de Nemours and Company v. Josef Novotny
Case No. D2010-1873
1. The Parties
The Complainant is E.I. du Pont de Nemours and Company of Wilmington, Delaware, United States of America, represented by Du Pont de Nemours International S.A., Switzerland.
The Respondent is Josef Novotny of Liberec, Czech Republic.
2. The Domain Name and Registrar
The disputed domain name <percotop.com> (the “Domain Name”) is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2010. On November 4, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Domain Name. On November 4, 2010, 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” 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 November 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2010. The Response was filed with the Center on November 25, 2010.
The Center appointed Steven A. Maier as the sole panelist in this matter on November 30, 2010. 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 corporation registered in the United States. The Respondent is an individual resident in the Czech Republic.
The Complainant’s Community Trade Mark PERCOTOP number 5166401 (the “CTM”) was registered on June 14, 2007.
The Czech Republic is a country covered by the Community Trade Mark regime.
The Respondent registered the Domain Name on March 11, 2009.
At the date of the submission of the Complaint the Domain Name resolved to a “holding” page operated by FORPSI simply stating that the Domain Name had been registered.
5. Parties’ Contentions
The Complainant submits that it is a United States company in the business of developing, manufacturing and commercializing innovative products and services. It was founded in 1802 and owns internationally recognized brands, including Teflon and Kevlar, as well as being responsible for inventing famous products, including Neoprene and Nylon. It operates in around 80 countries.
The Complainant draws attention to the CTM and states that the product marketed under the CTM is a solvent-based coating system for application to industrial vehicles, machinery and general equipment. The Complainant has, however, provided no further background information pertaining to the product (such as when it was developed, its reputation and the geographical extent of its availability).
The Complainant adduces correspondence showing its attempts to contact the Respondent.
The Complainant also asserts that the Respondent is a competitor or sells competing products, referring to an association with a website located at <autolaky.com>.
The Complainant’s case is that (once the formal suffix “.com” is disregarded) the Domain Name is identical or confusingly similar to the CTM thereby satisfying the requirements of paragraph 4(a)(i) of the Policy.
Further the Complainant contends that the Respondent has no rights or legitimate interest in the Domain Name as per paragraph 4(a)(ii) of the Policy. The Complainant bases this assertion on the grounds that none of the criteria under paragraph 4(c) of the Policy are met. The Complainant submits in particular that:
(i) the Domain Name is not being used for a bona fide offering of goods or services, because there is no active website linked to the Domain Name;
(ii) the Respondent has not commonly been known by the Domain Name: there is no record of the Respondent having any connection with “percotop” or a trade mark registered for that term; and
(iii) the Respondent is not making legitimate noncommercial or fair use of the Domain Name; the Respondent is a competitor of the Complainant and is aware of the Complainant’s rights. Further, any use by the Respondent of the Domain Name would “most likely be for commercial gain and to misleadingly divert customers to its website”.
For the purposes of paragraph 4(a)(iii) of the Policy, the Complainant contends that the Domain Name has been registered and is being used in bad faith. In this the Complainant relies specifically on the submissions that the Domain Name was registered primarily to disrupt the Complainant’s business per paragraph 4(b)(iii); and that the Domain Name has been registered in order to prevent the Complainant from reflecting its CTM as in a corresponding domain name with this being part of a pattern of conduct as evidenced by the Respondent’s registration of <percotop.cz> (per paragraph 4(b)(ii)).
Finally, the Complainant asserts that “it is not possible to conceive of any plausible actual or contemplated active use of the [Domain Name] by the Respondent that would not be illegitimate”. These reasons are that the Respondent: “knew at all times that PERCOTOP is a registered trade mark and a product of the Complainant”; is in breach of its registration agreement; ignored all communications from the Complainant; and did not provide evidence of actual or contemplated good faith use of the Domain Name.
The Complainant requests a transfer of the Domain Name.
The Respondent objects to these proceedings being conducted in English, contending that the registration was made via a Czech-language website at <forpsi.cz>, that the terms and conditions on said website were in Czech and that the correct language of proceedings is therefore Czech. The Respondent cites national and pan-European consumer legislation that he contends supports this position.
The Respondent’s substantive arguments go to the reputation (or lack thereof) of the Complainant’s Percotop product. For this purpose, the Respondent raises the argument that the Complainant’s marketing activities using the Percotop brand are confined to the United Kingdom of Great Britain and Northern Ireland only, citing that it has only thus far been reflected in a “.co.uk” top-level country code domain name with no equivalent presence in other European jurisdictions and that it does not appear on the Complainant’s site at “www.dupont.cz”. The Respondent claims that the CTM is limited to products and services as specified on its registration. The Respondent contends that the Complainant has presented no information regarding the actual product marketed as Percotop. Finally, the Respondent asserts that the Complainant has presented no proof of any rights other than the CTM and that the Complaint should therefore be dismissed.
The Respondent also states that he is submitting his own application for a trade mark for the term PERCOTOP to the National Industrial Property Office in order “to increase the protection of [his] rights”.
The Respondent states that he is not the owner of the domain <autolaky.cz> and claims that there has been no communication between himself and the Complainant.
6. Discussion and Findings
With reference to the Respondent’s claims that these proceedings should be conducted in Czech and not English, it is well established that the proper language is the language of the registration agreement (unless e.g., both parties agree otherwise).
The Complainant has presented a copy of the registration agreement of the registrar in this instance, namely Tucows Inc. With regard to the Respondent’s contention that in registering the Domain Name he used the services of an intermediary whose website and commercial terms are in Czech, the Panel finds that this does not present a valid ground to require the proceedings to be conducted in any language other than that of the registration agreement. The Panel notes that the Respondent does not dispute that the agreement with the ultimate registrar of the Domain Name is in English (which the concerned registrar Tucows Inc. also confirmed to the Center on November 4, 2010) and also finds that in any event the translation of the Respondent’s submission is perfectly intelligible to the Panel and that it follows from this submission that Respondent has understood the Complaint in English. The Respondent’s arguments regarding national consumer law in his jurisdiction of domicile are not relevant to these proceedings.
The Panel concludes that these proceedings have been conducted in the appropriate language and moreover that the Respondent has had a fair opportunity to present its case.
A. Identical or Confusingly Similar
The Complainant has submitted evidence that it is has registered Community Trade Mark rights for the word mark PERCOTOP, i.e., the CTM. The Complainant also asserts that it has further such registrations in other jurisdictions, although has not provided evidence to this effect. However, as the Respondent asserts, no material has been submitted by the Complainant to evidence the general reputation of the Percotop product.
It has been well established in earlier decisions such as Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503 that a complainant’s ownership of a registered trade mark is in itself capable of meeting the threshold requirement of having rights in a trade mark for the purpose of the Policy. Further, the location of the registered trade mark and the goods and/or services for which it is registered are irrelevant when finding rights in a mark. The Respondent’s allegations concerning the limitations of the classes of goods covered by the CTM, the lack of evidence of marketing efforts on the part of the Complainant and the supposedly local nature of the rights asserted are therefore not here determinative.
Given that the Domain Name incorporates the CTM with no further adornment (other than the gTLD “.com”), the Panel finds that the Domain Name is identical to a trade mark or service mark in which the Complainant has rights and therefore this requirement of the Policy is satisfied.
B. Rights or Legitimate Interest
It is open to the Complainant to make its allegation and put forward such submissions as it is able in order to establish a prima facie case for the Respondent to answer. As per the decision in Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110, this prima facie position can be established by the Complainant showing that it has rights to the name; the Respondent has no rights to the name of which the Complainant is aware; and no permission to use the name has been given to the Respondent by the Complainant.
Although the Complainant has not expressly stated that there is no economic or legal link between the Complainant and the Respondent, or that the Complainant has not authorised the Respondent’s registration of the Domain Name, this is readily apparent from the context and wording of the Complaint. Accordingly the Panel finds that the Complainant has made out a prima facie case and it is therefore for the Respondent to demonstrate any rights or legitimate interest.
Any assertion of rights or legitimate interest was, however, manifestly lacking from the Response, other than the Respondent’s claims to be intending to register a trade mark in his national intellectual property office. This expression of future intent has, in the circumstances of this case, no weight in the view of the Panel and no plausible case has therefore been advanced by the Respondent.
As the Respondent has failed to rebut the presumption, the Panel concludes that the Respondent has no rights or legitimate interest in the Domain Name.
C. Registered and Used in Bad Faith
On the evidence presented, the Domain Name does not appear to have been used to point to an active website. Such passive holding neither per se constitutes nor prevents a finding of bad faith and all of the circumstances of the case must be examined to determine whether such bad faith on the part of the Respondent is present.
With regard to the assertion that the Respondent is a competitor of the Complainant by way of selling paints and sealants at <autolaky.cz>, the Panel notes that the WhoIs information pertaining to the Domain Name which shows the Respondent as registrant gives his email address as […]@autolaky.cz. The Respondent does not deny that he holds this email address but states that he is not the owner of the domain name <autolaky.cz> and that it has never been associated with the Domain Name. In the circumstances, the Panel can reach no determinative conclusions about the significance of the <autolaky.cz> domain.
The parties dispute the factual position with regard to communication between them. The Complainant has presented emails intended for the Respondent (whether directly or via a third party) to various addresses and also a registered letter that was sent to the Respondent’s address as given for the Domain Name (although with no confirmation of delivery receipt provided). Meanwhile, the Respondent asserts that there is no evidence of correspondence between the parties. While it seems likely that the Respondent was aware of at least some, if not all, of the Complainant’s attempts to communicate with him, the Panel does not feel able definitively to determine this dispute of fact on the submissions presented. This is, however, also not determinative of this matter.
The Complainant has argued that the Respondent registered and used the Domain Name in bad faith. The Panel finds that the Respondent has failed to present any evidence of any actual or contemplated good faith use of the Domain Name, which is one factor that may be taken into account in determining the good faith or otherwise of the Respondent. Nor has the Respondent provided any reason for the choice of the particular name Percotop, which on the evidence available to the Panel is an invented name that is neither generic nor descriptive and for which no commercial use has been suggested other than to refer to the Complainant’s product.
The Panel notes that the territory covered by the CTM includes the Czech Republic, in which the Respondent is located. In similar circumstances some Panels have found that a respondent has constructive knowledge of a complainant’s registered trade mark while others have found that actual knowledge is necessary. In the view of the Panel, having regard to the nature of the Domain Name, which constitutes an unadorned adoption of the Complainant’s CTM, which is neither generic nor descriptive, the Panel is unable to discern any plausible actual or contemplated active use of the Domain Name by the Respondent that would be legitimate.
Accordingly, the Panel finds that the Domain Name was registered in bad faith for the purposes of 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 <percotop.com> be transferred to the Complainant.
Steven A. Maier
Date: December 14, 2010