WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Njuškalo d.o.o. v. Dejan Jovanović

Case No. DME2021-0003

1. The Parties

The Complainant is Njuškalo d.o.o., Croatia, represented by Vukmir & Associates Attorneys at Law, Ltd, Croatia.

The Respondent is Dejan Jovanović, Montenegro.

2. The Domain Name and Registrar

The disputed domain name <njuskalo.me> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2021. On March 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 1, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 7, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 12, 2021.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2021. On May 3, 2021, the Respondent requested an extension of the Response due date. On May 3, 2021, the Center granted the Respondent the automatic four calendar day extension for response under paragraph 5(b) of the Rules. The Response was filed with the Center on May 8, 2021.

The Center appointed Adam Taylor as the sole panelist in this matter on May 14, 2021. 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

Since 2007, the Complainant, which part of the Austrian Styria Media Group, has offered online classified advertising services under the name “Njuškalo” via a website at “www.njuskalo.hr”. The website currently achieves over 500,000 daily “hits”. The Complainant’s Facebook page has some 470,000 followers.

According to Wikipedia, the Complainant’s site is among the top 10 most-visited websites in Croatia and, by 2018, it had 1.4 million users who were selling 250,000 items per month.

The Complainant currently employs around 80 staff.

The Complainant owns a number of trade marks relating to “Njuškalo”, including Croatia trade mark No. Z20062102A for NJUŠKALO, filed November 7, 2006, registered September 6, 2007, in classes 9, 16, 35, 38, 41 and 42, International Registration No. 1078158 (designating Montegro amongst other countries) for the stylised word “njuškalo”, registered December 16, 2010, in classes 9, 25, 35, 38 and 41, and International Registration No. 1330492 (designating Montegro amongst other countries) for NJUŠKALO, registered January 28, 2016, in classes 9, 16, 35, 38, 41, and 42.

The Respondent registered the disputed domain name on February 9, 2011.

The disputed domain name has never been used for an active website.

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions.

The term “njuškalo” is not a standard word in the Croatian language but is a slang term, meaning a person who wants to know or find out everything or as much as possible.

Due to the Complainant’s marketing efforts, the Complainant’s mark has become a household name for online advertising activities in Croatia, as well as in surrounding countries, including Montenegro.

Styria expanded into Montenegro in 2009.

The evidence shows that the Complainant has protected, and is using, its trade marks in various countries, including Montenegro. All search results for “Njuškalo” on Google Montegro (“www.google.me”) relate to the Complainant.

The Complainant has received various awards for the quality of its service.

The Complainant’s registered trade marks have been well known in the area of online advertising for many years.

The disputed domain name is identical or confusingly similar to the Complainant’s trade mark.

The letter “š” from the Croatian alphabet is written in English as “s”.

The Respondent lacks rights or legitimate interests in respect of the disputed domain name.

The Complainant has never licensed or otherwise permitted the Respondent to use its trade mark.

The Respondent owns no registered trade marks or companies that include the word “Njuškalo”.

The Respondent does not use, nor is making preparations to use, the disputed domain name in connection with a bona fide offering of goods and services. The Respondent is not commonly known by the disputed domain name. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.

The disputed domain name was registered and is being used in bad faith.

The disputed domain name constitutes a passive holding in bad faith.

The Respondent was well aware of the Complainant’s business and trade marks when it registered the disputed domain name, given the reputation of the Complainant’s trade mark and the extent of its Internet presence. The Respondent’s knowledge is also shown by the fact that the Respondent’s website at “patuljak.me” contains visual, conceptual and organisational similarities to the Complainant’s website at “njuskalo.hr”.

It is unlikely to be a coincidence that the Respondent decided to adopt the Complainant’s trade mark, in its entirety and unmodified, without being aware of the Complainant or its trade marks and bearing in mind that the term is a slang word in the Croatian language.

Even if the Respondent did not know about the Complainant and its trade mark, registration of the disputed domain name would still have constituted bad faith on grounds of wilful blindness and/or on the basis that the Respondent should have known about the Complainant’s trade mark. A deliberate failure by the Respondent to search available trade mark databases or on a search engine would contribute to its bad faith. In any case it is highly likely that the Respondent did search and discover the Complainant’s trade marks, which were easily findable.

The Respondent registered and used the disputed domain name to block the Complainant from reflecting its mark in a domain name, or to intentionally create a likelihood of confusion with the Complainant’s well-known mark, or to disrupt the business of the Complainant, the Respondent’s competitor. It is relevant that the Respondent has not used the disputed domain name for a website whereas it uses other domain names to provide its marketing and online advertising services.

The Respondent owns many domain names relating to online advertising and marketing services, which correspond to the Complainant’s business activities, including <poruka.me> which the Respondent claims is the biggest SMS marketing service in Montenegro, and <patuljak.me> which it claims is the biggest database of ads in Montenegro.

B. Respondent

The following is a summary of the Respondent’s contentions.

The disputed domain name was registered almost five years before the Complainant registered International Registration No. 1330492, which indicates that the Complainant does not have a strong basis to claim rights over the disputed domain name.

The word “njuskalo” is not just slang in the Croatian language but is also widely known as a slang term in the Montenegrin, Serbian, and Bosnian languages, which are similar; the citizens of those countries easily understand each other.

The Complainant has not provided any clear evidence demonstrating that its Croatian brand is popular in Montenegro. There is no mention of this brand in the Montenegrin media, only a few articles about the Styria Group.

It is misleading for the Complainant to claim a strong reputation in Montenegro based on search results on Google Montegro (“www.google.me”). For example, the Respondent’s “patuljak” brand comes top for searches for that name on Google Croatia (“www.google.hr”), even though this brand is not popular in Croatia.

The Respondent has rights or legitimate interests in the disputed domain name.

The Respondent registered the disputed domain name in 2011, five years before the Complainant’s first international trade mark for the word NJUŠKALO, because it reflected a common slang term in the Montenegrin language. The Complainant does not mention that the term “njuškalo” also means “sniffing”, particularly by dogs, derived from the word “njuska”, which means “snout”.

The Respondent intended to create a website with guidance from vets and trainers, blogs about dog breeding, grooming, training and health, and also offering dog hotel services. The plans have been delayed until the end of this year or early next year because the Respondent has been busy operating a range of other businesses as well as due to COVID-19 last year and lack of financial means to make the necessary investment.

The Respondent will not use the Complainant’s Croatian trade marks “in terms of visual identity, slogan or similar”.

The Respondent does not intend to misleadingly to divert consumers for commercial gain or to tarnish the Complainant’s trade mark, as the Complainant’s brand is not recognised as such in Montenegro.

The disputed domain name has not been registered and is not being used in bad faith.

The Respondent did not register the disputed domain name primarily for the purpose of sale to the Complainant and it never approached the Complainant for such reason.

The Respondent registered the disputed domain name in good faith and is in the process of building a website to offer the abovementioned services, whereas the Complainant’s trade mark is not well known in Montenegro. The Complainant is not recognised in Montenegro as a major supplier of advertising services in the region.

6. Discussion and Findings

Under the Policy, the Complainant is required to prove on the balance of probabilities that:

- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.

A. Late Response

According to the date stamp on the cover email, the Response, which was due on May 7, 2021, was filed at 12:00 AM on May 8, 2021.

Paragraph 10(d) of the Rules provides that the Panel shall consider the admissibility, relevance, materiality and weight of the evidence.

Given that the Response seems to have been filed only one minute late, and the Complainant has not objected to / would not be prejudiced by its admission, the Panel admits the Response.

B. Identical or Confusingly Similar

The Complainant has established rights in the mark >NJUŠKALO by virtue of its registered trade marks as well as unregistered trade mark rights deriving from its extensive use of that name.

Disregarding the country-code Top-Level Domain (“ccTLD”) suffix “.me”, the disputed domain name is identical to the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

As explained in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.

Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.

As to paragraph 4(c)(i) of the Policy, the Respondent had not actively used the disputed domain name, but claims that it intends to do so for a dog-related website.

As explained in section 2.2 of WIPO Overview 3.0, where a respondent relies on future plans, clear contemporaneous evidence of bona fide pre-complaint preparations is required; depending on the circumstances, such evidence need not be particularly extensive, but it must go beyond a mere statement of a claimed intention. Because business plans and operations can take time to develop, panels have not necessarily required evidence of intended use to be available immediately after registration of a domain name, but the passage of time may be relevant in assessing whether purported demonstrable preparations are bona fide or pretextual.

Here, the Respondent has provided no evidence at all in support of its alleged intended use of the disputed domain name, despite some ten years having passed since registration of the disputed domain name.

Accordingly, the Panel considers that the Respondent has failed to establish demonstrable preparations for a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy.

Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.

D. Registered and Used in Bad Faith

In the Panel’s view, it is appropriate to consider this case in the context of the principles of “passive holding”.

Section 3.3 of the WIPO Overview 3.0 explains that, from the inception of the UDRP, panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panels will look at the totality of the circumstances in each case, factors that have been considered relevant include: the degree of distinctiveness or reputation of the complainant’s mark and the failure of the respondent to provide any evidence of actual or contemplated good-faith use.

In this case, the Panel concludes that the following cumulative circumstances are indicative of passive holding in bad faith:

1. The Respondent does not deny that it is a competitor of the Complainant.

2. While the Panel accepts the Respondent’s assertion that the Complainant has not unequivocally established a substantial reputation in Montenegro, where the Respondent is located, the Panel nonetheless considers it unlikely that the Respondent would have been unaware of the existence of a major online competitor that started trading under the relevant mark some four years before registration of the disputed domain name, and that is in any case located in the same region as the Respondent.

Furthermore, the Respondent does not specifically deny that it was aware of the Complainant’s mark when it registered the disputed domain name.

The Panel would add that it does not assist the Respondent that it registered the disputed domain name some five years before the Complainant’s first international trade mark for NJUŠKALO registered in 2016; as mentioned in section 4 above, the Respondent also owns a 2010-registered international trade mark designating Montenegro, amongst others, for a stylised version of the word, plus a 2007-registered Croatian word trade mark. In any case, the Complainant has also acquired unregistered trade mark rights in “Njuškalo” from its trading activities which date back to 2007.

3. Even if it is the case that, as the Respondent asserts, the word “njuškalo” is a slang term in the Montenegrin as well as the Croatian language, and that it can mean “sniffing”, particularly by dogs, the Panel still considers it inherently unlikely that the Respondent selected the disputed domain name by reference to this meaning rather than because it reflected the distinctive mark of its competitor. As mentioned above, despite having owned the disputed domain name for a decade, the Respondent has produced no evidence in support of its alleged intended use of the disputed domain name for a dog-related website, which seems far removed from its online advertising business.

4. The Respondent does not deny the Complainant’s assertion that the Respondent’s website at “patuljak.me” contains some similarities to the Complainant’s website at “njuskalo.hr”, which is again indicative of the Respondent’s awareness of the Complainant.

For the above reasons, the Panel finds that the Complainant has established the third element of paragraph 4(a) of the Policy.

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 <njuskalo.me> be transferred to the Complainant.

Adam Taylor
Sole Panelist
Date: June 4, 2021