WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Orgachim JSC v. Antares Ltd.

Case No. D2002-0855

 

1. The Parties

The Complainant in this administrative proceeding is Orgachim JSC, based at 21 Treti Mart Blvd., Rousse, Bulgaria.

The Respondent is Antares Ltd. 135 Lipnik Blvd., Rousse, Bulgaria.

 

2. The Domain Names and Registrar

The domain names at issue are <orgachim.com> and <orgahim.com> (hereafter the "Domain Names").

The Domain Names are registered with Go Daddy Software Inc., located in Scottsdale, Arizona, United States of America ("the Registrar").

 

3. Procedural History

The Complainant filed a Complaint ("the Complaint") with the World Intellectual Property Oganization, Arbitration and Mediation Center ("the Center") electronically on September 12, 2002, and in hard copy on September 13, 2002.

On September 12, 2002, the Center transmitted the request for registrar verification in connection with this case to the Registrar.

On the same day, the Registrar responded to the Centerís request for registrar verification and confirmed that Go Daddy Software Inc. is the registrar of the Domain Names. It also confirmed that the Domain Names were registered in the name of Antares Ltd., 135 Lipnik blvd., the technical administrative and billing contact being in the name of Stefan Andreev.

On September 16, 2002, the Center verified that the Complaint met the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), 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").

The undersigned has reviewed the documentary evidence provided by the Complainant and the Center and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the Rules and the Supplemental Rules.

On September 16, 2002, the Center notified the Complaint to Respondent. Hence, the administrative proceeding commenced on the same day.

As no Response was submitted within 20 days of the commencement of the administrative proceeding (sub-section 5 (a) of the Rules), the Center notified Respondent on October 7, 2002, that it was in default.

Upon receipt of the necessary declaration of independence and impartiality, the Center appointed Dr. Thomas Legler on October 11, 2002, to serve as Sole Panelist in this administrative proceeding.

 

4. Factual Background

The Complainant is a company engaged in the production of paints, lacquers, resins and chemical products. It was established in 1901.

On February 29, 1996, the single person limited liability company Orgachim registered the trademark "Orgachim" (Cyrillic writing) with the priority date as of June 6, 1995. The registrant of this trademark was later transformed into a joint stock company, and as such registered on July 15, 2002, with priority date as of June 18, 2002, the two trademarks "Orgachim", once written in Cyrillic and once in Roman letters. The excerpts from the register of the Patent Office do not specify to which trademark classes they refer.

Pursuant to a resolution dated November 15, 1995, the District Court of Rousse accepted the transformation of Orgachim single person limited liability company into Orgachim single person joint stock company, indicating that the company assumes all assets and liabilities as well as other rights and obligations of Orgachim single person limited liability company. Consequently, all trademarks have been transferred at that time to the Orgachim single person joint stock company, which pursuant to a further resolution of the same District Court dated July 11, 1997, became a joint stock company (= the Complainant) which holds today the relevant trademark "Orgachim."

The trademark "Orgachim" also represents the company name of the Complainant. Furthermore, the Complainant operates websites under the names <orgachim.bg> and <orgachim-bg.com> in order to provide its customers with information about its products.

Currently, the Domain Names resolve to a website of the company Megachim which is also located in Rousse and seems to be a competitor of the Complainant.

 

5. Partiesí Contentions

A. Complainant

The Complainant alleges that the Domain Name <orgachim.com> is identical to its trademark and that the Domain Name <orgahim.com> is confusingly similar to the same mark in which the Complainant has rights. Furthermore, pursuant to the Complainant, the Respondent has no rights or legitimate interests regarding the Domain Names and is not the owner of the trademark nor has been assigned any rights of the trademark Orgachim. The Respondentís only use of the Domain Name is to direct visitors to its own website, hereby misleading the customers either present or potential that Orgachim and Megachim are one and the same company. The Complainant further points out that the trademark Orgachim contains the words "organic chemistry" and that the pronunciation of the words "orgachim" and "orgahim" in Bulgarian is one and the same, so that most of the clients who have only heard the name of the company may search it also at the Domain Name <orgahim.com>. The Complainant hereby suggests that the Respondent acted in bad faith.

B. Respondent

The Respondent has not submitted any Response to the Complaint.

 

6. Discussion and Findings

To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy is satisfied, namely that:

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in the Domain Name; and

(iii) The Domain Name has been registered and used in bad faith.

These three elements will be considered below.

A. Identity or Confusing Similarity

The Administrative Panel is satisfied by the evidence submitted by the Complainant showing that it is the holder of the trademark Orgachim.

It is obvious that the Domain Name <orgachim.com> is identical to the afore-mentioned trademark. Furthermore, the Administrative Panel has no doubt that the Domain Name <orgahim.com> is confusingly similar to the trademark "orgachim."

B. Rights or Legitimate Interests

The Panel does not have any evidence that Complainant has licensed or otherwise permitted Respondent to use its trademark or to apply for the Domain Name incorporating this mark.

As the Respondent has not submitted a Response, the Panel can find no indicia that Respondent has any rights (for instance in the trademark Orgachim) or legitimate interests in the Domain Name pursuant to Para.4(c) of the Policy. The Panel is thus of the opinion that Complainant has satisfied the second element of the Policy.

C. Domain Name Registered and Used in Bad Faith

The third element Complainant has to prove to succeed in its Complaint is registration and use of the domain name in bad faith.

According to the Complainantís indications, the company Orgachim JSC is the biggest Bulgarian producer of paints, lacquers, resins and chemical products and has a long history since its establishment in 1901. Complainantís company seems to be the leader in the production of paints and lacquers in Bulgaria. It further runs also websites under the names <orgachim.bg> and <orgachim-bg.com> in order to provide its customers with information about its products.

Since the Respondent is domiciled in the same Bulgarian town as the Complainant, the Administrative Panel draws the conclusion that the Respondent must have been aware of the Complainantís trademark and company name when it registered the Domain Names.

It can be deduced from the evidence submitted by the Complainant and by the Administrative Panelís visit to the website that the Respondentís activity is in the same field as the Complainantís one. Accordingly, when typing "orgachim.com" or "orgahim.com" (which seems to be pronounced in Bulgarian like "orgachim"), the Internet user is diverted to a website of Complainantís competitor Megachim. Such act of unfair competition amounts to bad faith according to paragraph 4(b)(iv) of the Policy which states that the following circumstances shall be the evidence of the registration and use of a domain name in bad faith, using the domain name to intentionally attempt to attract for a commercial gain Internet users to a website or other online location by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location.

The Panel has indeed come to the conclusion that this is the case here, since the Respondent is using the Domain Names for a commercial gain, hoping that persons surfing on the Internet and seeking information on the Complainantís products and services will be diverted in to the Respondentís offerings.

Accordingly, the Panel finds that the Domain Names <orgachim.com> and <orgahim.com> have been registered and are being used by the Respondent in bad faith.

 

7. Decision

In the light of the foregoing, the Panel concludes and decides that the Domain Names <orgachim.com> and <orgahim.com> shall be transferred to the Complainant.

 


 

Dr. Thomas Legler
Sole Panelist

Dated: October 17, 2002