WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cersanit Trade Mark Sp. z o.o. v. Hart Hurt - Detal Grzegorz Kozłowski
Case No. D2014-0106
1. The Parties
The Complainant is Cersanit Trade Mark Sp. z o.o. of Kielce, Poland, represented internally.
The Respondent is Hart Hurt - Detal Grzegorz Kozłowski of Brzeg Dolny, Poland, represented by Hasik, Winski & Partners, Poland.
2. The Domain Name and Registrar
The disputed domain name <opoczno.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2014. On January 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 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.
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 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 24, 2014. On February 13, 2014, the Respondent’s counsel requested extension of the deadline to submit its Response. On the same date, the Center forwarded said email communication to the Complainant’s attention and requested it to respond to the Center with its comments on the Respondent’s request by February 14, 2014. The Complainant did not comment on the Respondents’ request. Accordingly, on February 17, 2014, the Center extended the due date for Response until March 5, 2014. The Respondent submitted its formal Response on March 5, 2014.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on March 10, 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.
The language of the proceedings is English.
On March 19, 2014, the Panel issued Panel Procedural Order No. 1 requesting the Respondent to submit the correspondence between the Respondent and the Complainant’s group together with the sworn translation which is referred in the Response as Annex no. 14. The time limit fixed by the Panel was three days.
On March 21, 2014, the Panel received the requested documents.
4. Factual Background
The Complainant is Cersanit Trade Mark Sp. z o.o., a limited liability company, registered under the laws of Poland. It is an entity established by shareholders of Rovese S.A. and Opoczno Sp. z o.o. for the purpose of claiming, maintaining and managing industrial property rights. The Complainant owns the OPOCZNO trademark in different graphic variants at the Polish Patent Office under Nos. 157069 (October 11, 2004), 142769 (February 27, 2003), 82757 (December 28, 1994) and pending application No. 380656 filed on January 31, 2011 (Annex 4 to the Complaint) for, inter alia, ceramic and milled rock tiles. All trademarks have graphic-linguistic character. Previously, the trademarks were owned by Opoczno S.A., a legal predecessor of Rovese S.A. The trademarks are now licensed to Rovese S.A. and Opoczno Sp. z o.o. which produce and distribute goods under “Opoczno” brand. Rovese S.A. owns two domain names, devoted to promoting “Opoczno” brand and products, namely <opoczno.com.pl> and <opoczno.eu>.
The Responded is Hart-Hurt Detal Grzegorz Kozłowski, an entrepreneur, registered under the laws of Poland.
The disputed domain name was registered on June 28, 2003. On November 5, 2009, the Respondent purchased it from Centrum Doradztwa Informatycznego Sp. j. at a public auction. Currently, the disputed domain name is used by the Respondent to maintain an online store selling tiles of different brands, including “Opoczno”.
On May 21, 2013, the Complainant sent to the Respondent a letter, in which it informed the Respondent of the Complainant’s claimed rights to the OPOCZNO trademark, objected to further use of the disputed domain name by the Respondent and requested a transfer of rights to the disputed domain name to the Complainant. In its letter of June 5, 2013, the Respondent refused to cease its use of the disputed domain name and transfer the rights thereto to the Complainant.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is identical to the OPOCZNO trademark, to which the Complainant has rights. The “Opoczno” brand has a 130-year tradition in Poland and abroad and is highly recognized. For decades, ceramic and milled rock tiles were the only products sold under the “Opoczno” brand and so is mostly the case currently.
The Complainant further states that the Respondent runs an online store, in which it sells ceramic tiles manufactured by Rovese S.A. The disputed domain name may cause the persons who purchase goods to believe that they buy products from a manufacturer or from an entity associated therewith in some way or authorized thereby to sell these goods.
However, neither has the Respondent ever had nor currently has rights or proper interest in using the OPOCZNO trademark. The Respondent is in no way affiliated with any of the companies entitled to use the OPOCZNO trademark. According to the Complainant, the Respondent has never been known under the “Opoczno” brand name and has not produced goods under this brand. The Complainant has never granted the Respondent the right to use the OPOCZNO trademark. Moreover, the Respondent has never been the owner of the OPOCZNO trademark.
The Complainant underlines that the Respondent uses the OPOCZNO trademark for commercial purposes with the awareness of the fact that the disputed domain name attracts consumers in an unfair way by suggesting that it is associated with the distributor (manufacturer) of the goods under the “Opoczno” brand.
The Complainant contends that at the time of the purchase of the disputed domain name by the Respondent and also at the time of registration of the disputed domain name by the former entity, a list of trademarks registered in the Republic of Poland, including the information about the registration of the OPOCZNO trademark by the legal predecessors of the Complainant, was publicly available. As a consequence, the Respondent purchased and uses the disputed domain name, which is identical to the OPOCZNO trademark, in bad faith.
The Complainant submits that the fact that the Respondent uses the disputed domain name to sell products under the “Opoczno” brand is indicative of the Respondent's deliberate action which aims at exploiting reputation and value of the OPOCZNO trademark by unfairly interfering with the business activity of the authorized distributor of the goods under the “Opoczno” brand name. The Respondent’s actions allegedly lead to a situation in which the disputed domain name is mistaken for the trademark to which the Complainant has legal rights.
The Complainant argues that the Respondent prevents it from using the disputed domain name.
The Respondent states that the Complainant failed to establish any of the three elements required by the Policy and thus the Administrative Panel shall deny the Complaint.
Firstly, the Respondent denies that the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights. In the Respondent’s view all the trademarks consisting of the word element “Opoczno” were registered or submitted by the Complainant as figurative trademarks. Therefore, the word “Opoczno” is only one of the elements in the Complainant’s trademarks and the Complainant cannot claim its exclusive right to it.
Further, the Respondent asserts that the word “Opoczno” is a name of a town in south-central Poland. Thus, it is purely a geographical indicator, serving informational function.
The Respondent presents a few examples of other domain names which incorporates the word “Opoczno” and are directly related to the city of Opoczno and its neighborhood. Moreover, the Respondent notes that the city of Opoczno is a country-wide famous place for the production of tiles. The Respondent submits that there are other large producers of ceramic tiles located in Opoczno, namely Ceramika Paradyz Sp. z o.o. as well as other entities that own domain names incorporating the word “Opoczno” which sell tiles and ceramic goods such as <opocznoplytki.pl> and <opoczno-plytki.pl>. The Respondent asserts that due to this, the word “Opoczno”, in the mind of consumers, is not automatically associated with the Complainant nor the Complainant’s trademarks.
The Respondent refers to the case City of Hamana v. Paragon International Projects Ltd., WIPO Case No. D2001-0001, in which the panel rejected the view that as a matter of principle a unique geographical name should belong to the owner of the geographical area in question. Based upon this the Respondent uses a fortiori inference to conclude that the exclusivity to the unique geographical name cannot be claimed by the private entity being one of many operating in such geographical area.
The Respondent finds it crucial that the legal predecessor of Rovese S.A. - Opoczno S.A. was first established and operated in the city of Opoczno. This proves, in the Respondent’s view, that the business name of the Complainant as well as the word element of the Complainant's trademarks, were both derived from that city name. Therefore, the word “Opoczno” does not have a distinctive character.
Furthermore, in the Respondent’s view, it took appropriate precautions in order to eliminate the risk of confusion with the Complainant since it presents itself as an independent entity - the ceramic tiles reseller. Namely, the Respondent’s description in Google.pl uses its business name at first place and indicates that it acts as the reseller of, inter alia, ceramic tiles. Moreover, the Respondent uses its own corporate logo on its website and provides its full contact details, so there are no doubts as to the identity of the entity operating the online store. The Respondent underlines that it uses the word element “Opoczno” only for informational purposes and not in the function of the trademark.
Consequently, the Respondent contends that there is no risk of misleading the public as to the actual connection between the Respondent and the Complainant - the business activity of the Respondent can be clearly distinguished from the Complainant’s.
The Respondent also rejects the Complainant’s argument that it does not have legitimate interests in respect of the disputed domain name. It finds that there shall be no dispute concerning the Respondent’s status since it is a legally operating ceramic tiles reseller. It has been selling ceramic tiles, including those manufactured by the Complainant’s group, since prior to the commencement of this case.
The Respondent refers to a correspondence between itself and the Complainant’s group in which it obtained permission to use the marketing materials from the Complainant’s official website in its Internet shop. In this way, the Respondent asserts that the Complainant’s group was aware of and approved the business activity of the Respondent.
Further, the Respondent presents the principles from Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 concerning what is a bona fide offering of goods and services which can be deemed as a legitimate interest in the disputed domain name. The Respondent asserts that it fulfills all the conditions laid down in Oki Data case as it (1) runs an Internet shop offering the ceramic tiles, (2) sells the ceramic tiles originating from the manufacturers from the city of Opoczno, including those from the Complainant’s group, (3) took appropriate precautions in order to eliminate the risk of confusion with the Complainant, (4) does not corner the market in all domain names since the Complainant’s group uses in its business activities the domain name which include the word element “Opoczno” - <opoczno.eu>. Thus, in the Respondent’s opinion, it has a legitimate interest in the disputed domain name.
Finally, the Respondent also rejects the notion that the disputed domain name has been registered and is being used in bad faith. It asserts that the disputed domain name was registered on June 28, 2003 by Opoczno S.A. (the legal predecessor of Rovese S.A.) and used by the Complainant’s group for several years. To prove this statement the Respondent presents the printouts from the Internet Wayback Machine for the disputed domain name together with the sworn translation. Moreover, the Respondent argues that the registration of the disputed domain name was given up voluntarily by the Complainant’s group, due to the fact that the Complainant’s group decided to use the domain name <opoczno.eu> as the main address for its website.
The Respondent contends that prior to putting the disputed domain name to public auction Centrum Doradztwa Informatycznego Sp. j., which owned the disputed domain name after Opoczno S.A.’s registration had expired, turned to the Board of Opoczno S.A. with an advantageous offer of buying the disputed domain name. Allegedly, this offer was rejected and the disputed domain name was sold on November 5, 2009, on public auction together with two other domain names to the Respondent for a total amount of PLN 30,500.00 (ca. USD 10,000). The Panel notes here that the Respondent does not present any evidence confirming this price.
6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which
complainant has rights; and
(b) the respondent has no rights or legitimate interests in the domain name; and
(c) the domain name has been registered and is being used by the respondent in bad faith,
A complaint may only be admitted if the above criteria are met simultaneously.
A. Identical or Confusingly Similar
The Complainant holds registration for the OPOCZNO trademarks in the Patent Office of the Republic of Poland. However, these trademarks have graphic-linguistic character, namely consisting of the word “Opoczno” and various graphic forms. Similarly to the test made under the first element of the UDRP, according to the case law of the Supreme Court of Poland and the Supreme Administrative Court of Poland, a trademark that has graphic-linguistic character must be accessed as an integral entirety, not just as a one word which constitutes its linguistic element (the Supreme Court' judgment dated March 11, 1999, in case III RN 136/98). In this Panel’s view, what is also important in this particular case, the linguistic element of the Complainant’s trademarks is a geographical name – a name of a city which cannot be registered solely as a trademark according to Article 131 para. 2 p. 2) of the Law on Industrial Property of June 30, 2000. Therefore, the word “Opoczno” itself is not protected by the Polish trademark law and the Complainant does not enjoy exclusivity to its use.
Even though more relevant under the second and third elements of the UDRP, the Panel refers here and shares the view expressed in the case City of Hamana v. Paragon International Projects Ltd., WIPO Case No. D2001-0001and the Respondent’s arguments made in relation to this decision. Generally speaking, neither an owner of a geographical area nor a private entity can claim exclusivity in using a unique geographical name.
Moreover, even if the word “Opoczno” was protected by the Polish trademark law, according to Article 6.1 point b) of the Directive 2008/95/WE “the trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade indications concerning (...) the geographical origin of goods or of rendering of the service, or other characteristics of goods or services (...) provided he uses them in accordance with honest practices in industrial or commercial matters”. The Panel considers that indicating in the disputed domain name the geographical origin of the tiles offered in the online store is not in disaccord with honest practices in industrial or commercial matters.
Furthermore, the Panel believes that the word “Opoczno” can be associated by consumers with a place of origin of different ceramic goods since the city enjoys a nation-wide reputation in the area of producing tiles and other ceramic goods. This reputation may have started because of the activity of Opoczno S.A. (legal predecessor of Rovese S.A.) but currently is being supported also by other companies such as Ceramika Paradyż Sp. z o.o.
The Panel further notes that since the Respondent introduces himself to customers and Internet users as a ceramic tiles reseller, using its business name and its own logo, in the Panel’s view there is no clear threat of consumers being intentionally confused by the Respondent’s activity. Moreover, it is apparent for an average Internet user that the Respondent offers tiles and ceramic goods of different brands which appear to be directly connected with the city of Opoczno.
The Panel notes that the test for confusing similarity under the UDRP involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name. The Panel notes here that the textual element of the Complainant’s figurative trademarks is identical to the disputed domain name. However, taking into account that both parties are from Poland, and the national legal considerations in this matter, the Panel does not make a conclusive finding under the first element of the UDRP.
B. Rights or Legitimate Interests
According to paragraph 4(c)(i) of the Policy, one of the ways to demonstrate rights or legitimate interests in a disputed domain name is to use the domain name in connection with a bona fide offering of goods or services before receiving any notice of the dispute.
In the case Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the panel analyzed previous UDRP decisions in order to establish what “bona fide offering of goods or services” means. According to this case, there are certain conditions to be met:
(1) The Respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306(respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering),
(2) The Respondent must use the website to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774(use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., CPR Case No. 0109 (bait and switch is not legitimate).
(3) The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. The Weatherman, Inc., WIPO Case No. D2001-0211 (no bona fide offering where website’s use of complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); Easy Heat, Inc. v. Shelter Products., WIPO Case No. D2001-0344 (no bona fide use when respondent suggested that it was the manufacturer of complainant’s products).
(4) The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”).
Generally, the Panel shares the rationale of the principles set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Here the Panel notes that the Respondent appears to be offering tiles and related products manufactured by the Complainant but also by other manufacturers from the Opoczno area. It should thus be noted that the tiles and ceramic goods produced under the “Opoczno” brand are not the only ones produced in Opoczno. In this Panel’s opinion, the city of Opoczno and the disputed domain name indicate a place of origin of different products which compete with each other. All the other Oki Data requirements seem to be met by the Respondent in the present case. Firstly, it has been running the online store for almost five years. Then, the Respondent took appropriate precautions in order to eliminate the risk of confusion with the Complainant. Finally, there is no risk of cornering the market in all domain names since the entity affiliated with the Complainant owns two domain names (<opoczno.eu> and <opoczno.com>) which allow it to present its business activity.
The Panel therefore infers from the facts and evidence presented before it that the Complainant has not met its burden of proof under the second element of the Policy.
C. Registered and Used in Bad Faith
In light of the above, the Panel does not accept the Complainant’s assertion regarding the disputed domain name being used in bad faith.
This Panel finds that there is no evidence indicating that the Respondent has acted in the purpose of preventing the owner of the trademark from reflecting the mark in a corresponding domain name or in any other way disrupted the business of a competitor (paragraph 4(b) of the Policy).
The evidence demonstrates that in 2004 the disputed domain name was owned by Opoczno S.A., the legal predecessor of Rovese S.A. Thus, it is very likely that the former owner of the Complainant’s trademark has abandoned the disputed domain name voluntarily or by negligence. Moreover, there are allegations that Opoczno S.A. was offered to purchase the disputed domain name. The Complainant has not refuted these allegations and as such there is no reason to attribute bad faith to the Respondent simply due to its purchase of the disputed domain name at the public auction.
The Respondent has confirmed that he contacted Opoczno S.A. already in 2009 and obtained its consent to use its marketing materials in the Respondent’s online store. This suggests that Opoczno S.A. was aware of the Respondent’s activity.
Finally, as it was stated before, the Respondent took adequate means in order to distinguish itself from the business activity of the Complainant, therefore there is no attempt “to attract, for commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location” (paragraph 4(b)(iv) of the Policy).
In conclusion, the Panel notes that although the Complainant has not met its burden under the UDRP, this does not preclude the parties from pursuing the matter in appropriate courts of law, should they wish to do so.
For the foregoing reasons, the Complaint is denied.
Date: March 24, 2014