WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SKODA AUTO a.s. v. MYMOTO Tuning SRL

Case No. DRO2019-0016

1. The Parties

The Complainant is SKODA AUTO a.s., Czech Republic, represented by Baker & McKenzie, Czech Republic.

The Respondent is MYMOTO Tuning SRL, Romania.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2019. On December 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 2020, 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.

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”).

On December 12, 2019, the Center sent an email in relation to the Language of Proceedings, to which the Respondent did not respond and the Complainant requested English to be the language of the proceedings.

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in both Romanian and English, and the proceedings commenced on December 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2020.

The Center appointed Marilena Comanescu as the sole panelist in this matter on January 23, 2020.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. Language of the Proceeding

The Complainant has requested that the language of proceeding be English and the Respondent did not react to the Center’s email related to the language of the proceeding, nor provided any Response in any language whatsoever.

Under paragraph 11 of the Rules, the language of the proceeding is the language of the registration agreement of the disputed domain name, unless both parties agree otherwise, or the panel determines otherwise based on one party’s request. The panel decides that proceeding should be conducted in another language generally when it is necessary due to different nationalities of the parties and when the complainant does not understand the language of the registration agreement and it would therefore be unfairly disadvantaged by the fact that it must translate all the documents involved in such proceeding.

In the present proceeding, the Complainant does not understand Romanian. The Respondent, having been notified of the present proceeding in both English and Romanian, has failed to file a Response, or to comment on the language of the proceeding. The Panel considers that the Complainant will only be disadvantaged if required to translate the Complaint into Romanian and the proceeding will be unduly delayed.

Moreover, the disputed domain name includes the English word „my” and English is the universal business language.

For all the above, the Panel decides that English is the language of the proceeding.

5. Factual Background

The Complainant, SKODA AUTO a.s., is a Czech car manufacturer conducting business under this name since 1925 and currently being one of the leading passenger car manufacturers around the world.

The Complainant holds worldwide trademark registrations for SKODA such as the following:

- the International trademark registration number 144637A designating among others Romania, registered on December 23, 1949 for goods in class 12;

- the International trademark registration no. 1265214 designating among others the European Union, registered on May 4, 2015 for goods in class 4; and

- the European Union Trademark registration number 018007941 for the word MYSKODA, filed on January 10, 2019 and registered on May 7, 2019 for goods and services in classes 9, 12, 36, 37, 38, 39.

The Complainant offers its clients an Internet application in connection with the sale and use of the Skoda cars under the designation MYSKODA. According to the Complainant, such application is available since August 2016 in 39 countries, including Romania.

The disputed domain name <myskoda.ro> was registered on November 10, 2018, and, according to the evidence provided in the Complaint, it was kept inactive since its registration.

According to the information available on the Respondent’s website (unrelated to the disputed domain name), the Respondent offers services and goods related to motorbikes, such as motorbikes and spare parts thereof, leather jackets, oils and other accessories.

6. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its well-known trademark SKODA, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

7. Discussion and Findings

In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. 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 disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

The Panel will further analyze the potential concurrence of the above circumstances.

A. Identical or Confusingly Similar

The Complainant holds rights in the SKODA trademark.

The disputed domain name <myskoda.ro> incorporates the Complainant’s trademark SKODA with two additional letters. However, such addition does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name.

Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name does not prevent a finding of confusing similarity. See section 1.8 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Also, the Complainant holds trademark registration for MYSKODA.

It is well established in decisions under the UDRP that the country-code Top-Level Domain (“ccTLD”) or generic Top-Level Domain (“gTLD”) (e.g.,“.com”, “.ro”, “.org”) may typically be disregarded for the purpose of consideration of confusing similarity between a trademark and a domain name.

Given the above, the Panel finds that the disputed domain name <myskoda.ro> is virtually identical to the Complainant’s trademark MYSKODA and confusingly similar to the Complainant’s trademark SKODA, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization whatsoever to use the mark SKODA, that the Respondent is not commonly known by the disputed domain name, and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.

Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0.

The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.

There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain name.

The Respondent registered the disputed domain name incorporating a worldwide well-known third party trademark, without any authorization and keeps it inactive.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant holds registered trademark rights for six decades and SKODA mark is well-knwon worldwide.

The disputed domain name <myskoda.ro> was created in 2018 and incorporates the Complainant’s mark with an additional dictionary term – “my”.

For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark.

At the time of filing the Complaint the disputed domain name was not actively used.

From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” or other similar inactive page) would not prevent a finding of bad faith under the doctrine of passive holding. The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of what may be relevant circumstances found to be indicative of bad faith include the degree of distinctiveness or reputation of the Complainant’s mark and the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use. See section 3.3 of the WIPO Overview 3.0.

The Complainant’s trademark is well-known worldwide for decades and there is no plausible or logic for the Respondent to choose and register such name other than to create confusion or association with the Complainant and its SKODA mark.

Furthermore, the Respondent refused to participate in the present proceeding in order to provide arguments in its favor. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith behavior.

For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

8. 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 <myskoda.ro> be transferred to the Complainant.

Marilena Comanescu
Sole Panelist
Date: January 29, 2020