WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Evapco, Inc. v. Top Controller SRL

Case No. DRO2014-0007

1. The Parties

The Complainant is Evapco, Inc. of Taneytown, Maryland, United States of America (“United States”), represented by Panitch Schwarze Belisario & Nadel, LLP, United States.

The Respondent is Top Controller SRL of Bucharest, Romania, represented by Diligens Intellectual Property, Romania.

2. The Domain Name and Registrar

The disputed domain name <evapco.ro> is registered with ROTLD (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2014. On September 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On October 1, 2014, the Center informed the Parties that the Complaint has been submitted in English whereas the language of the registration agreement for the disputed domain name is Romanian. Accordingly, the Center requested the Complainant to (1) provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or (2) submit the Complaint translated into Romanian; or (3) submit a request for English to be the language of the administrative proceedings. On October 2, 2014, the Complainant requested that these proceedings be conducted in English, to which the Respondent did no reply.

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 in both English and Romanian, and the proceedings commenced on October 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2014. The Response was filed in English with the Center on October 30, 2014.

In November 5, 2014, the Center received supplemental filing from the Complainant.

The Center appointed Marilena Comanescu as the sole panelist in this matter on November 7, 2014. 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.

Although the language of the Registration Agreement is Romanian, the Complainant requested the language to be English, the Respondent did not contest such request and provided its Response in English. Therefore, the Panel, in accordance with paragraph 11 of the Rules, decides to render its Decision in English.

In this case, after consideration of the Complainant’s supplemental filing the Panel has decided to accept the Complainant’s supplemental submissions.

4. Factual Background

The Complainant is a United States based company founded in 1976 specializing in heat transfer applications on a worldwide basis, manufacturing products for the evaporative cooling and industrial refrigeration markets such as cooling towers, close circuit coolers, evaporative condensers. The Complainant’s main website can be found at “www.evapco.com”.

The Complainant holds trademark registrations for or containing EVAPCO, such as the United States trademark registration No. 1118707 EVAPCO, registered on May 22, 1979 for goods in class 11; the Community trademark registration No. 06370498 EVAPCO, filed on October 16, 2007 for goods in class 11 and registered on September 29, 2008; the Community trademark registration No. 09610619 EVAPCO EXTRA-PAK, filed on December 20, 2010 for goods and services in classes 9, 11, 37 and registered on May 27, 2011.

According to the Respondent’s statements, the Respondent registered the disputed domain name <evapco.ro> on November 1, 2006. At the time of filing the Complaint, the disputed domain name displayed “EVAPCOntrol” sign in the upper left corner and promoted the Respondent’s services related to electric and automation systems for cooling.

A short history regarding the persons involved in the present case should be made, for ease of reference. The Respondent, the Romanian entity Top Controller SRL was registered on July 19, 2004 having as sole shareholder the Romanian individual, R.C.(according to the Response, Annex 1). Further, on November 6, 2006, Mr. C. incorporated the Romanian entity Industrial Cooling Systems SRL (“ICS”) together with R.W., the General Manager of the Complainant’s sales representative for Austria, EKK GmbH (as provided in Annex 4 to the Response).

On June 24, 2014, the Complainant’s European company sent a cease and desist letter to ICS requesting the transfer of the disputed domain name, to cease from using its trademarks, logos and photographs and, to remove the information that was the Complainant’s authorized representative or distributor in Romania.

On July 1, 2014 Mr. C. replied in the name of ICS stating that it has been the Complainant’s distributor in Romania for over seven years, confirmed that they had removed the Complainant’s trademarks and the information regarding their relationship and that it would further inform the clients regarding the cease of their collaboration but also stated that ICS did not own the disputed domain name.

The Complainant’s further letter of September 4, 2014 was sent to the Respondent and its representative, Mr. C., reiterating the transfer of the disputed domain name and stating that public information indicated that Mr. C. was running both entities, ICS and the Respondent.

Mr. C. replied in the name of the Respondent that the disputed domain name was registered in 2006 according to the provisions of the Romanian law and it would consent to sell the disputed domain name to the Complainant for a price to be proposed by the Complainant.

Such correspondence is provided as Annexes F-J to the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name incorporating its well known mark was registered without its knowledge, authorization and long after its trademark first use.

The Complainant alleges in the Complaint and in the supplemental filing of November 5, 2014 that the Respondent, Mr. C. and ICS are not authorized distributors of Evapco products, nor do any of them have any relationship with the Complainant and its authorized sales representative, Evapco Trading Austria (“ETA”), where Mr. W. is a majority shareholder.

However, in the supplemental filing and its response regarding the language of the proceedings, the Complainant asserts that ETA “entered into an agreement with D. C. of ICS” and that the Respondent was “a distributor of the U.S.-based Complainant’s for approximately 7 years”, making reference to Annex G to the Complaint.

In summary, the Complainant contends that the disputed domain name is confusingly similar to its EVAPCO trademark, the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent registered and uses the disputed domain name in bad faith.

B. Respondent

The Respondent states that “at the end of 2006, Mr. R. C., sole shareholder of the Respondent company, begins the collaboration with EVAPCO, and, until the setup of a limited liability company under the Romanian legislation that would have the representatives of Complainant company as associates, the domain name “www.evapco.ro” is incorporated in the name of Top Controller SRL on November 1, 2006.” On November 6, 2006, the ICS was incorporated, owned by Mr. C. and Mr. W., the latter being the General Manager of the Complainant’s sales representative for Austria, EKK GmbH. After incorporating ICS, “all information on services and products offered by this company were presented” on the website corresponding to the disputed domain name which was owned by the Respondent.

The Respondent asserts that it has used the disputed domain name to provide logistics and services to ICS, which is the sole representative of the Complainant’s products in Romania, providing a letter issued by Complainant’s European representative in 2007 stating that ICS, “as part of EKK Austria Group is the sole representative of EVAPCO products in Romanian market” (Annex 6 to the Response).

The Respondent argues that the disputed domain name is not confusingly similar to the Complainant’s trademark particularly because it was registered before the Complainant acquired trademark rights for EVAPCO in Romania, the United States trademark registration is for goods in class 11 whereas the services provided by the Respondent may fall in classes 9 and 37 of Nice International classification, and the Complainant failed to demonstrate the famous status of its EVAPCO trademark.

In supporting the second element, the Respondent claims that ICS is an authorized distributor of the Complainant in Romania and uses the disputed domain name to perform legitimate and in good faith commercial activity. After the incorporation of ICS, the Respondent “proceeded in a correct manner and provided ICS with the use” of the disputed domain name “for promoting the products and services offered by this company as authorized representative of the Complainant”. The Respondent invested logistic and personnel for promoting ICS’s activities and products.

Even if there was no “written agreement” from the Complainant to use the disputed domain name, the “Respondent benefited from the tacit agreement of the Complainant, which profited by the promotion of the Evapco products and services on the Romanian territory”.

In Respondent’s view, it is fair to request the Complainant to pay for the transfer of the disputed domain name to it, the payment covering the costs made with the registration, maintenance of the disputed domain name and promotion of ICS since 2006.

Further, the Respondent contends that the Complainant agreed with its use of the disputed domain name particularly because they have email correspondence with the Complainant’s representatives using the disputed domain name, such as “[…]@evapco.ro”, for seven years. Also, the Complainant provided the Respondent with its trademark logo to be “used in commercial correspondence and on promotional materials distributed in Romania”.

Currently, the Complainant has appointed another distributor in Romania which holds the domain name <evapco-romania.ro>; on the corresponding website, the Respondent found a disclaimer mentioning that the disputed domain name is not enclosed by the Complainant, thus the Respondent contends that the Complainant has no further interest in filing such Complaint.

The Respondent asks the Panel to dismiss Complainant’s request regarding the transfer of the disputed domain name.

6. Discussion and Findings

As stated in the paragraph 4.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) regarding to what extent is national law relevant to a panel assessment of rights and legitimate interests and/or bad faith, “rooted in generally-recognized principles of trademark law, and designed to operate in the context of the world wide web, the decision framework of the UDRP generally does not require resort to concepts or jurisprudence specific to national law (other than with respect to the question of whether trademark rights exist).”

The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”, see Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. Nevertheless, it is paramount that panels decide cases based on the very limited scope of the Policy. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Therefore, the Panel shall further analyze the eventual concurrence of all these elements in the present case.

A. Identical or Confusingly Similar

The Complainant holds trademark registration for EVAPCO in the United States since 1979 and in Romania, where the Respondent is located, since 2007. The disputed domain name <evapco.ro> was registered in 2006 and incorporates the Complainant’s trademark in its entirety.

Under this first element of the Policy, it is irrelevant the date for obtaining the trademark rights or its territorial protection. These are relevant particularly for supporting the bad faith factor.

According to the consensus view provided at paragraph 1.4 of the WIPO Overview 2.0, “Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP”.

Accordingly, the Panel finds that the first element of the Policy is established, and the Complainant has proven that the disputed domain name is identical to its trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

According to the Respondent, it has registered and used the disputed domain name in order to “provide support and service” for ICS, the Complainant’s authorized representative in Romania. According to the Complaint, there is no relationship between the Complainant and the Respondent and/or ICS and the Complainant has given no rights to the Respondent to register or use its trademark EVAPCO.

Due to the dispute between the parties regarding their relationship, based on the available record and having in view the particulars of the UDRP, for the purpose of analyzing the Respondent’s rights and legitimate interests in the disputed domain name, the Panel will consider the Respondent as Complainant’s reseller in Romania and will further analyze whether the Respondent’s use of the disputed domain name for such resale amounts to a bona fide offering of goods and services under paragraph 4(c)(i) of the Policy.

Paragraph 2.3 of the WIPO Overview 2.0 states the following:

“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles.”

From the evidence before it, the Panel finds that at least one condition that it outlines has clearly not been satisfied by the Respondent in this case: the alleged Complainant’s authorized distributor is ICS, not the Respondent, which is a third party providing services for ICS. Further, from captures containing the historical content of the webpage back in 2009 provided as Annex 9 to the Response, it appears that on the website corresponding to the disputed domain name it was displayed the name “Evapco Romania-About us” in the upper left corner and the information “Copyright © 2009 Evapco Romania” on the bottom of the page together with Complainant’s trademarks depicted in photographs. Further, the website contains information about ICS, stating that ICS is Complainant’s representative in Romania, which was not accurate either since no contract between the parties was provided, at most, from the available records showing that ICS was the Complainant’s reseller in Romania.

Accordingly, such use is generating a likelihood of confusion for the Internet users accessing the Respondent’s website regarding its relationship with the trademark owner, as it may, for example, falsely suggest that it is the trademark owner or an official site of the Complainant.

For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

According to the Response, the disputed domain name was registered after Mr. C., the representative of the Respondent, entered into collaboration with the Complainant. Accordingly, it is confirmed by the Respondent itself that it was aware of the Complainant’s trademark and business at the moment it registered the disputed domain name.

Further, it is difficult for the Panel to find a good faith argument for registering the disputed domain name in the name of the Respondent and why the Respondent could not wait another 5 days to register the disputed domain name in the name of ICS, the entity incorporated in Romania for the purpose of being the Complainant’s distributor. Or, at least, why the Respondent did not transfer the disputed domain name to such entity immediately after its incorporation.

Further, as above mentioned, the parties made contrary allegations regarding their relationship, the disputed domain name was registered and is being used for eight years, there is evidence that may support a finding of a certain collaboration between the Respondent and/or ICS and the Complainant. However, except for the already said arguments, the Panel concludes that the disputed domain name was registered and used in bad faith due to the following:

- there is no license, distribution or other agreement between the parties, there is no evidence that the Respondent received any rights to register the EVAPCO trademark or to incorporate it in a domain name, not at least that the Respondent informed the Complainant that it would register or had registered the disputed domain name in its own name;

- according to the Respondent’s own allegations, the Complainant’s representatives provided the EVAPCO logo for use in commercial correspondence and promotional materials; there is no evidence in the available records that this permission would encompass registering the Complainant’s trademark as a domain name;

the Complainant denies any consent given to the Respondent to incorporate its EVAPCO trademark in a domain name;

- the Respondent claims it is using the disputed domain name with the tacit consent of the Complainant, for promoting the activity of ICS, the Complainant’s representative in Romania. Such tacit consent would be supported particularly by the fact that the Respondent was communicating with the Complainant’s representatives using the email addresses corresponding to the disputed domain name. However, in the Panel’s assessment, it is very likely that the Complainant had a misrepresentation with regard to the holder of the disputed domain name, as being ICS not the Respondent, particularly because the Complainant sent the letter asking the transfer of the disputed domain name to ICS and that on the website corresponding to the disputed domain name there was information about ICS;

- the Registration Agreement for the disputed domain name requests the registrant to attest that, to its knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party. The Respondent was familiar with the Complainant’s trademark and business at the time it registered the disputed domain name;

- currently the Respondent is using the disputed domain name identical to Complainant’s trademark for promoting similar goods and services to those of the Complainant whereas the alleged relationship with the Complainant would appear to be terminated since September 2013.

For all these reasons, the Panel finds that the third element of the Policy is established, and accordingly that the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <evapco.ro> be transferred to the Complainant.

Marilena Comanescu
Sole Panelist
Date: November 21, 2014