WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ensto Oy v. Melinte Razvan, SC Bartec RO SRL

Case No. DRO2011-0008

1. The Parties

The Complainant is Ensto Oy of Porvoo, Finland, represented by Juridia Ltd., Finland.

The Respondent is Melinte Razvan, SC Bartech RO SRL, of Bucharest, Romania, represented internally.

2. The Domain Name and Registrar

The disputed domain name <ensto.ro> is registered with RNC.ro. (the registration authority of .RO.).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2011. On September 9, 2011, the Center transmitted by email to RNC.ro. a request for registrar verification in connection with the disputed domain name. On September 12, 2011, RNC.ro transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On September 16, 2011 the Center notified the Complainant that as the language of the registration agreement for the disputed domain name was Romanian (as per information provided by the Registrar), the Complainant would need to either provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; submit the Complaint translated into Romanian; or submit a request for English to be the language of the administrative proceedings. On September 19, 2011 the Complainant sent its Request to the language issue. On the same day September 19, 2011 the Respondent transmitted his comments to the document.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy adopted by RNC. Ro (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 in both Romanian and English the Respondent of the Complaint, and the proceedings commenced on September 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2011. Apart from the Respondents’ communication with attachment of September 19, 2011 in Romanian, no formal Response was filed with the Center.

The Center appointed Mihaela Maravela as the sole panelist in this matter on November 11, 2011. 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.

Language of proceedings

As regards the question of the language applicable to this dispute, paragraph 11(a) of the Rules provides:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

As such, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. As stated by previous panels, the Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matter such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either of the parties in his or her abilities to articulate the arguments for the case. See, Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004.

In the present case:

- RNC.ro has informed the Center that the language of the relevant registration agreement is Romanian,

- The Complaint had been submitted in English and following the Language of Proceedings Notification of the Center, the Complainant filed a request that the language of the proceedings be English arguing inter alia that the contract concluded between the parties as well as correspondence prior to this dispute was carried in English language showing that Respondent is familiar with the English language,

- The Respondent filed a request that the Romanian language be the language of the proceedings on the basis that the domain name was registered in Romania, the registration agreement was in Romanian language, and previous correspondence between the parties is irrelevant for the present proceedings since Romanian language was accepted to be used by the Respondent only in the direct relationship with the Complainant.

According to the Rules, paragraph 11(a) and (b), based on the circumstances of this case, the Panel finds that the language of the proceeding should be English for the following reasons:

- The Complainant requested for English to be the language of the administrative proceedings;

- English was the language of the frame agreement concluded between the Ensto Electric OY (apparently a subsidiary of the Complainant) and the Respondent on July 1, 2007 and of certain correspondence carried by the parties to the agreement during its performance;

- In the mentioned frame agreement, the Respondent agreed that the disputes arising from that contract shall be settled by arbitration which would be conducted in English language;

- The correspondence prior to this dispute is an indication that the Respondent is familiar with English language (see also S.C. Karcher Romania S.R.L. v. Raluca Voicu, SC Espavo SRL, WIPO Case No. DRO2010-0005); also, as other panels have held, persuasive evidence has been adduced by the Complainant and by the Respondent itself that the Respondent is conversant and proficient in the English language (see also I.T. Magyar Cinema Kft. V. Advertising Market SRL, WIPO Case No. DRO2007-0005);

- The Center sent all the communications in both languages, Romanian and English; and

- It should also be noted that the spirit of Paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language. In the present case, although the registration agreement for the disputed domain name is in the Romanian language, it results from the documents submitted by both parties that the Respondent can communicate in English without apparent difficulties. On the other hand, the Complainant is not able to communicate in Romanian language, nor is the English language native language for either party (see in this respect Fissler GmbH v. Chin Jang Ho, WIPO Case No. D2008-1002).

4. Factual Background

The Complainant in the present proceedings is Ensto Oy a limited liability company incorporated under the laws of Finland. The Complainant is a company specializing in electronically systems and supplies for the distributions of electrical power and electrical applications. The Complainant has registered first ENSTO trademarks in the 1960’s.

The Respondent in this administrative proceeding is Melinte Razvan, SC Bartec RO SRL and the disputed domain name was registered on June 20, 2008.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it is the owner of the trademark ENSTO which is protected by numerous trademark registrations in many countries. All these trademarks have been registered prior to the disputed domain name. Also, the Complainant argues that the disputed domain name is identical with the trademark ENSTO. The domain name incorporates, in its entirety, the trademark ENSTO.

Also, the Complainant contends that the Respondent should be considered as having no rights or legitimate interest in respect of the domain name that is subject of the Complaint. The Complainant mentions that Ensto Electronic Oy, the subsidiary of the Complainant, and the Respondent have concluded a Framework Agreement on June 30, 2007 for the distribution cooperation related to the goods of the Complainant, but the Respondent is not authorized and was not authorized during the term of the said contract to use the trademark ENSTO. Also, the Complainant contends that it has never licensed or otherwise permitted the Respondent to use the trademark ENSTO or to register any domain name containing the trademark ENSTO. Moreover, since the parties never concluded distribution agreements, it is clear that the parties have not agreed about Respondent’s rights to use the trademark ENSTO.

The Complainant contends that the Respondent must have been aware of the Complainant and Complainant’s trademark ENSTO at the time of the registration of the disputed domain name since the framework agreement for the products of the Complainant was concluded on June 30, 2007. Also, the Claimant argues that given the contractual relationship between the parties, the Complainant’s numerous trademark registrations for, and the wide reputation of the trademark ENSTO, it is not possible to conceive a plausible circumstance in which the Respondent could legitimately register or use the disputed domain name. The Complainant contends also that there is no active use of the domain name, neither there is an evidence that a website is in the process of being established which will use the domain name. Thus, there is no positive action being undertaken by the Respondent and several past UDRP panels have found that such passive holding of domain name may indicate registration and use in bad faith.

B. Respondent

Apart for the correspondence with attachment concerning the language of the proceedings dated September 19, 2011, the Respondent did not submit a Response in these proceedings.

6. Discussion and Findings

“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.

Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

The Panel must find that the Complainant has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark.

Here, the Complainant has demonstrated ownership of the registered trademark ENSTO at community level (trademark no. 000040600 filed on April 1, 1996 and valid until April 1, 2016), at international level (trademark no. 719832 registered on September 9, 1999) and at local level in Finland (trademark no. 42358 filed on November 10, 1962 and valid until December 27, 2013). All these are registered prior to the registration of the disputed domain name.

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name to the trademark rights which have been proved.

Here, the disputed domain name fully incorporates the prior trademark ENSTO on which Complainant proven rights. It is well accepted that a country-code top-level domain (such as “.ro”), is to be ignored when assessing identity or confusing similarity of a trademark and a domain name (see, e.g., Bella Aktiengesellschaft v. Ganea Nicolae, WIPO Case No. DRO2002-0001; Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L., WIPO Case No. DRO2006-0001; Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001).

The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

According to the consensus view of UDRP panels, “Normally, a reseller or distributor can be making 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. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.3).

In this case the conduct of the Respondent does not meet all the factors mentioned above. As such, the Respondent appear to have distributed certain of the Complainants ENSTO products when it registered the domain name but there is no evidence in the Framework Agreement or elsewhere in the documents provided by the Complainant that the Respondent was authorized to register a domain name incorporating Complainant’s trademark. Moreover, the website to which the disputed domain name resolves appear to have never been used from its registration date.

Accordingly, this Panel agrees with the conclusions of the panel in another case when saying that “Considering the above said, the Panel find that, in these proceedings, the Complainant established a prima facie showing that the Respondent has no rights to or legitimate interests in the disputed domain name. The Panel, referring to the Respondent, has no indication whatsoever of any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.” (see Yannidis Brothers SA, and SC Vitex Hermes SRL v. SC IOANNINA PRODUCT SRL, WIPO Case No. DRO2009-0009).

Therefore, the second requirement of the UDRP is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on its web site or location.

However, the requirement of the Policy of a domain name “being used in bad faith” is not limited to positive actions (see, e.g., Beiersdorf AG v. Web4comm Srl Romania, WIPO Case No. DRO2005-0002). In this particular case, the following actions maybe considered as use in bad faith:

- the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,

- the Respondent has not contested any of the allegations made by the Complainant,

- Any use of the domain name would lead the public to the conclusion that it, and its connecting websites, were associated with the Complainant.

Also, as noted above, the Panel has concluded that the Respondent had knowledge of the ENSTO trademark at the time of registration of the disputed domain name. The Respondent provided no explanations for which he registered the disputed domain name.

In accordance with paragraph 4(b)(iv) of the UDRP these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel ascertains that the disputed domain name was registered and used in bad faith.

7. Decision

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

Mihaela Maravela
Sole Panelist
Dated: November 25, 2011