WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Solgar, Inc. v. S.C. SECOM Productie Servicii S.R.L.

Case No. DRO2015-0005

1. The Parties

1.1 The Complainant is Solgar, Inc. of New York, United States of America, represented by Gowling Lafleur Henderson, LLP, Canada.

1.2 The Respondent is S.C. SECOM Productie Servicii S.R.L. of Bucarest, Romania, represented by Weizmann Ariana & Partners, Romania.

2. The Domain Name and Registrar

2.1 The disputed domain name <solgar.ro> (the "Domain Name") is registered with ROTLD (the "Registry").

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 21, 2015. On April 22, 2015, the Center transmitted by email to the Registry a request for registrar verification in connection with the Domain Name. On April 23, 2015, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

3.2 On April 28, 2015, the Center informed the Parties that the Complaint had been submitted in English whereas the language of the registration agreement for the Domain Name was Romanian. The Center requested the Complainant to provide it with (1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or (2) submit the Complaint translated into Romanian; or (3) submit a request for English to be the language of the administrative proceedings.

3.3 On April 28, 2015, the Complainant sent a letter by email to the Center in which it requested that English be the language of the administrative proceedings. The Respondent did not file any submissions in this respect, but on 14 May 2015, trade mark attorneys for the Respondent sent an email to the Center in English notifying the Center that they had been appointed to represent the Respondent in these proceedings.

3.4 In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 20, 2015.

3.5 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").

3.6 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in both English and Romanian, and the proceedings commenced on May 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2015. The Response was filed with the Center in English on June 15, 2015.

3.7 The Center appointed Matthew S. Harris as the sole panelist in this matter on July 1, 2015. 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

4.1 The Complainant is a company that is based in New Jersey, in the United States and is the manufacturer of vitamins, minerals and nutritional and dietary supplements. These products have been sold under the "Solar" name since 1947. The Complainant also has affiliate offices in the United Kingdom of Great Britain and Northern Ireland, Spain, South Africa and New Zealand. It distributes its products in over 60 different countries, including Romania.

4.2 The Complainant generated revenues in excess of USD 170 million in these products in the fiscal year ended 2014.

4.3 The Complainant conducts online activities from a website operating from the domain name <solgar.com>, however it is unclear from what date this domain name has been used.

4.4 The Complainant is the owner of various registered trade marks that comprise or incorporate the term "Solgar". They include:

(i) United States registered trade mark No. 1105417 SOLGAR (word mark) filed on February 7, 1977, and registered on November 7, 1978, for goods in class 5; and

(ii) Romanian registered trade mark No. 111663 SOLGAR (word mark) filed and registered on July 7, 2010, for goods in class 5.

4.5 The Domain Name was registered by the Respondent on April 15, 2008.

4.6 The Domain Name has been used by the Respondent either for, or to direct Internet users to, a website of the Respondent ("www.secom.ro") that promotes the sale of vitamins, minerals, and other nutritional and dietary supplement including the products of the Complainant's competitors.

4.7 On October 8, 2014, the Complainant's lawyers sent a letter to the Respondent. The Respondent did not respond to that letter. However, it did stop the Domain Name from resolving to the Respondent's website "www.secom.ro".

5. Parties' Contentions

A. Complainant

5.1 The Complainant contends that the Domain Name is identical or confusingly similar to its SOLGAR trade marks.

5.2 The Complainant also maintains that is has prior rights in its marks that precede the Respondent's registration and use of the Domain Name. It claims that the Respondent was not authorised to register the Domain Name and that the Respondent is using the Domain Name to trade on the reputation of its mark in order to sell competing products. This is said not to constitute a bona fide offering of goods within the terms of the Policy. Accordingly, it claims that the Respondent has no legitimate interest or right in the Domain Name.

5.3 It further contends that the use made of the Domain Name shows that the Respondent had registered and used the Domain Name for the purpose of disrupting the business of the Complainant and to attract Internet users for commercial gain to the Respondent's website by creating confusion as to the source, sponsorship, affiliation or endorsement of the Respondent's website. It also claims that the reputation of the Complainant's marks is such that the Respondent must have known about the Complainant's trade marks at the time that the Domain Name was registered. Alternatively, it claims that this is a case where the Respondent had constructive knowledge.

5.4 This is said to demonstrate that the Domain Name was registered and used in bad faith. Finally, the Complainant relies upon the fact the Respondent did not respond to the Complainant's lawyer's letter as supporting a finding of bad faith.

B. Respondent

5.6 The Respondent claims to be:

"the Romanian leader in integrative medicine solutions that meet the needs of a healthy lifestyle of the modern man and the promoter of beauty through plant - dermato-cosmetic products with high quality ingredients."

5.7 It claims to conduct it activities under the term "Secom" in respect of which it has various registered trade marks. It does not appear to deny that that the Domain Name has been used to direct Internet users to the Respondent's website but claims that the material exhibited to the Complainant's Complaint that evidences such use, shows that the intention of the Respondent was "to create a market share for the trademark SECOM and in any case not for a sign SOLGAR".

5.8 The Respondent claims that the Complainant has not submitted any proof that the SOLGAR marks are well known in Romania or that goods under that mark are sold in Romania. Further, it contends that there is no proof of such reputation or use in Romania prior to the registration of the Domain Name in 2008. In this respect it points out that none of the materials exhibited to the Complait that are said to demonstrate the reputation and use of the SOLGAR trade mark, are in the Romanian language.

5.9 At paragraph 11 of its Response the Respondent contends as follows:

"The [R]espondent registered the [D]omain [N]ame with the intention to use it. However the [D]omain [N]ame has not been used as such because [the Respondent] has been operating its activity on the market under his own registered trademarks "SECOM". The [D]omain [N]ame had no traffic and any clients who would have reached the website of SECOM would have immediately understood that the services in question are offered under SECOM trademarks and no connection with SOLGAR has been implied."

5.10 Further, the Respondent denies any knowledge of the Complainant's rights. In this respect, it points out the Complainant only applied for a Romanian trade mark in 2010; i.e., 2 years after the Domain Name was registered. It also denies that its registration and use of the Domain Name has caused any harm to the Complainant and therefore rejects the Complainant's claim that this has disrupted the Complainant's business.

6. Discussion and Findings

6.1 It is incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. The Complainant must prove on the balance of probabilities that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

6.2 The Panel will address each of these requirements of the Policy in turn. However, before doing so it is necessary briefly to address the language issues in this case.

6.3 As has already been described in the Factual Background section of this decision, the Registry confirmed that the language of the relevant registration agreement in this case was Romanian. Accordingly, under paragraph 11 of the Rules, the language of these proceedings is prima facie Romanian. However, the Complainant requested in a letter dated April 28, 2015, that the language of these proceedings be English.

6.4 The reasons that the Complainant gave as to why these proceedings should be in English, were as follows:

(i) the Complainant is a United States company residing in the United States;

(ii) the Complainant's representative is Canadian;

(iii) pre-complaint correspondence was sent to the Respondent in English; and

(iv) that for various reasons the Respondent was demonstrably familiar with English.

6.5 The Panel is unconvinced that any of the factors identified at (i) to (iii) above of themselves justify a change of language in this case. However, the factor identified at (iv) above is potentially more persuasive. The reasons identified by the Complainant in this respect essentially involve the use by the Respondent of English in its product names, the labelling of those products and a detailed LinkedIn page used by the Respondent to promote its business.

6.6 Also of significance are the facts that the Respondent did not object to English being the language of these proceedings, when the Respondent's representatives made contact with the Center they did so in English, and the Respondent chose to file a detailed Response in this case in the English language.

6.7 For these reasons, the Panel determines as it is entitled to do under paragraph 11(a) of the Rules, that the language of these proceedings be English.

A. Identical or Confusingly Similar

6.8 The Complainant is clearly the owner of a number of trade marks that comprise the word "Solgar". The Domain Name comprises the term "Solgar" in combination with the ".ro" country code Top-Level Domain ("ccTLD"). Accordingly, the marks and the Domain Name are identical save for the ".ro" ccTLD. In the circumstances, the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.

6.9 The Respondent's arguments as to the level of traffic to the Domain Name and what an Internet user would conclude on reaching the Respondent's website are of no relevance in this case to the comparison of mark and domain name required by paragraph 4(a)(i) of the Policy; see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). Therefore, the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.10 As is discussed in greater detail under the heading "Registered and Used in Bad Faith" below, there appears to be little or no dispute as to how the Domain Name has been used in this case; i.e. to redirect traffic from the Domain Name to the Respondent's website, "www.secom.ro", in circumstances where the Respondent does not claim any independent right or interest in the term "Solgar". Given this the only credible explanation for such registration is because of its associations with the Complainant's products with a view to redirecting Internet users to the Respondent website. Such use is not a use of domain name or a name corresponding to a domain name in connection with a bona fide offering of goods within the meaning of paragraph 4(c)(i) of the Policy.

6.11 Accordingly, the Panel concludes that the Respondent does not have a right or legitimate interest in the Domain Name and that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.12 The Respondent contends that it did not know of the Complainant's rights when it registered the Domain Name. In this respect, it points to the fact that the Complainant's Romanian trade mark postdated the registration of the Domain Name by two years and the argument appears to be that the Respondent could not have been aware at the time of registration about a trade mark that did not exist in Romania.

6.13 However, the Panel does not understand the Respondent to be contending that it was unaware at the time of registration of the Domain Name that the Complainant was using the term "Solgar" as a name for its products. Indeed, any such contention would be inherently implausible. The term "Solgar" has no obvious descriptive and generic meaning and none is claimed by the Respondent. Further, the Respondent is engaged in a field of activity (i.e. medicine and vitamin products) which means it is likely that at the time of registration it was aware of the Complainant's adoption of the "Solgar" name.

6.14 In the circumstances, the only credible conclusion to this Panel that can be drawn in this case is that the Domain Name has been registered and used because of its associations with the Complainant's products with a view to redirecting Internet users to the Respondent website and with a view to selling the products made available by the Respondent on that website. Such activity falls with the example of circumstances indicating bad faith registration and use set out in paragraph 4(b)(iv) of the Policy.

6.15 This is so regardless of whether the level of traffic actually generated in this respect (as the Respondent appears to contend) has been very small. As is reflected in the wording of paragraph 4(b)(iv), what matters is that the Respondent "intentionally attempted" to do this, and not how successful that attempt has been.

6.16 The fact that when the Internet user reaches the Respondent's website, it may be clear that the website is unconnected with the Complainant does not matter. By adoption of a domain name that incorporates nothing more than the name of the Complainant and the Complainant's trade mark, the Respondent is essentially impersonating the Complainant with a view to drawing traffic to its site. Such impersonation constitutes bad faith for the purposes of the Policy. This is so even if the Internet user finds out who really is operating a website when he or she reaches it (see, for example, 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461).

6.17 The fact that at that time there was no registered trade mark in Romania for that term also does not matter. First, there is the fact that the Complainant at the relevant time was the owner of a registered United States trade mark.

6.18 Second, as paragraph 3.1 of the WIPO Overview 2.0 records:

"Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.

However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant's enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant's likely rights in that mark. (In all such cases, in order to have a chance to succeed in any filed UDRP complaint, the complainant must actually demonstrate relevant trademark rights, as these are a precondition for satisfying the standing requirement under the first element of the UDRP for rights in a mark.)"

6.19 Further, at paragraph 6.11 of the UDRP decision in Marden Group B.V. v. Tucows.com.co, WIPO Case No. D2011-1061, the panel stated as follows:

"There are cases that suggest that what actually matters here is (a) whether at the time of registration of the domain name the relevant term embodied in the domain name was being (or about to be) used in a trade mark sense by the complainant and (b) whether the domain name was registered with knowledge of that use and with the intention of taking advantage of the reputation that had or would attach to that term by reason of that use (see for example St Andrews Links Ltd v Refresh Design, WIPO Case No. D2009-0601 and the cases cited in paragraph 3.1 of the WIPO Overview 2.0). On this approach although the proposition to be found in paragraph 3.1 of the WIPO Overview 2.0 is 'generally speaking' correct, this is not so much because 'the registrant could not have contemplated the complainant's then non-existent right" but because in the absence of such rights or trade mark use, it is likely to be very difficult to show that the registration was with the complainant's trade mark use of that term in mind."

6.20 Here the Domain Name was clearly chosen because of the Complainant's previous use of the term "Solgar" in a trade mark sense.

6.21 These findings are therefore, sufficient for the Panel to conclude that the Domain Name has been registered and is being used in bad faith. The Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.

6.22 The Complainant has claimed that there is constructive knowledge in this case. The Panel rejects that proposition. For the reasons set out in paragraph 3.4 of the WIPO Overview 2.0, this is not a case where the constructive knowledge concept might be applicable. However, as the Panel has held that the Respondent had actual knowledge of the Complainant's trade mark use of the term at the time that the Domain Name was registered, it does not matter.

6.23 In view of the above, the Panel concludes that the Respondent registered and is using the Domain Name in bad faith.

7. Decision

7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <solgar.ro> be transferred to the Complainant.

Matthew S. Harris
Sole Panelist
Date: July 15, 2015