WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aquaqueen Group owned by Aquaqueen Australian Spring Water Pty Limited v. Aqua Queen S.R.L., owner Lorel Nica Mihai/Mikai
Case No. DRO2016-0003
1. The Parties
The Complainant is Aquaqueen Group owned by Aquaqueen Australian Spring Water Pty Limited of Rosebery, Australia, represented by S. Penson, Australia.
The Respondent is Aqua Queen S.R.L., owner Lorel Nica Mihai/Mikai of Bucuresti, Romania.
2. The Domain Name and Registrar
The disputed domain name <aquaqueen.ro> ("Disputed Domain Name") is registered with ROTLD (the "Registry").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 31, 2016. On February 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 2, 2016, 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. On February 8, 2016, the Center informed the Parties that the Complaint had been submitted in English and that according to information received from the concerned registrar, the language of the registration agreement for the disputed domain name is Romanian. On February 10, 2016, the Complainant requested English to be the language of the proceeding. The Respondent did not reply.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2016. The Response was filed in Romanian with the Center on March 5, 2016. On April 4, 2016, the Complainant filed Supplemental Submissions.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on April 6, 2016. 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 Panel extended the Decision due date, in accordance with its general powers (Rules, paragraph 10).
The Panel has decided to accept the Complainant's Supplemental Submissions as they address some issues that were not and could not have been addressed in its Complaint.
4. Language of Proceedings
Based on the Registrar's email dated February 2, 2016, the language of the registration agreement was Romanian. The Complaint was filed in the English language, and included a request that English be the language of the proceedings. Whilst the Response was submitted in Romanian, the Respondent did not make any submissions in relation to the language of the proceedings nor did it object to the Complainant's request.
In accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of the proceedings. The Panel considers that for the purposes of equity and efficiency the language of the present proceedings should be English, taking into consideration the lack of objection from the Respondent, the fact that the Complainant claims to be unfamiliar with the Romanian language, and lastly since the Respondent appears to be familiar with the English language.
5. Factual Background
The Complainant is an Australian company that is in the business of providing bottled water and water related equipment and machinery. In recent years, it has expanded the scope of its products and services to cover food and beverage, fashion, personal care and leisure activities. The Complainant has registered trade mark rights in the AQUAQUEEN trade mark, which it first registered in 1994 in Australia. The Complainant also has registered trade marks rights in the AQUAQUEEN trade mark in the European Union ("EU"), Japan, Singapore and the United States of America. The AQUAQUEEN trade mark was first registered in the EU on October 24, 2006, and the scope of the registration was automatically extended to cover Romania on July 1, 2007 after Romania joined the EU.
The Respondent was founded in 2004. It registered the Disputed Domain Name on September 11, 2010, and also registered the AQUA QUEEN trade mark in Romania with effect from September 23, 2010. The Respondent is in the business of selling bottled water under the AQUA QUEEN trade mark.
6. Parties' Contentions
The Complainant's contentions can be summarized as follows:
(a) The Complainant first registered and began using its AQUAQUEEN trade mark in 1994, and is well known worldwide. The Complainant first registered the domain name <aquaqueen.com> and <aquaqueen.com.au> in 2001. The Complainant first registered its AQUAQUEEN trade mark on October 24, 2006, which was automatically extended to include Romania on July 1, 2007.
(b) The Disputed Domain Name is identical or confusingly similar to the Complainant's AQUAQUEEN trade mark.
(c) The Respondent does not have rights or legitimate interests in the Disputed Domain Name. The Respondent was originally established in 2004, with its company object stated to be "general cleaning of buildings". On September 11, 2010, the Respondent registered the Disputed Domain Name, and the Respondent applied for registration of the AQUA QUEEN trade mark in Romania about two weeks thereafter. The Complainant alleges that the Respondent is attempting to mislead Internet users into believing that it is associated with the Complainant. The Complainant contends that the Respondent cannot be said to be using the Disputed Domain Name in connection with the bona fide offering of any goods or services and it has not been making any noncommercial or fair use of the Disputed Domain Name.
(d) The Respondent registered and is using the Disputed Domain Name in bad faith for the purposes of attempting to attract Internet users to its website by creating a likelihood of confusion as to the source of the website. The Respondent is trying to pass itself off as the Complainant.
(e) The fact that the Respondent's company name is virtually identical to the Complainant's AQUAQUEEN trade mark, and the fact that the Respondent registered the Disputed Domain Name and the AQUA QUEEN trade mark in Romania, is in itself indicative of bad faith, particularly since they were registered many years after the Complainant first registered and began using its AQUAQUEEN trade mark. The Respondent is also using the Disputed Domain Name to sell products that compete with the Complainant's business, which is further evidence of bad faith, and may damage the Complainant's brand image and prevents the Complainant's from reflecting its mark in a corresponding domain name in Romania.
The Respondent's contentions can be summarized as follows:
(a) The Respondent owns the registered AQUA QUEEN trade mark in Romania, with effect from September 23, 2010. The Respondent was established on November 12, 2004 with multiple business objects, including the production of mineral water (as evidenced by the company certificate issued on January 19, 2016).
(b) The Respondent carries out its business activities exclusively in Romania, and its AQUA QUEEN trade mark is well-known in Romania. Its products bearing the AQUA QUEEN trade mark appear on the shelves of major stores in Romania (such as Auchan, Cora and others), and the Respondent has signed contracts with multiple public institutions for the provision of its AQUA QUEEN products. The Respondent is also the sponsor of two famous sports teams in Romania: Dinamo Bucureşti and Steaua Bucureşti. As such, the Respondent claims to have rights and legitimate interest in the Disputed Domain Name.
(c) The Respondent claims that it was not aware of the Complainant at the time the Respondent was established or the Disputed Domain Name was registered. The Respondent alleges that the Complainant has provided no evidence to show that it is well-known in the EU or Romania, and the Complainant appears to have originally been established in 1992 under the name Sinoz International Trading Pty. Limited.
(d) The Respondent did not register the Disputed Domain Name in bad faith, as the Disputed Domain Name reflects the Respondent's company name and its AQUA QUEEN trade mark, and the Respondent has become well-known in Romania in relation to its AQUA QUEEN branded bottled water.
7. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the AQUAQUEEN trade mark based on its various trade mark registrations (including its EU and Australian registrations).
It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain extension, in this case ".ro", may be disregarded (see Koninklijke Philips Electronics N.V. v. SC Evergreen Consult & Aviation SRL (Catalin Mogoseanu), WIPO Case No. DRO2001-0001; and Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Panel notes that the Respondent is the owner of the registered AQUA QUEEN trade mark in Romania. The difference between the Complainant's trade mark and the Respondent's trade mark is merely a space between the words "aqua" and "queen". For the purposes of satisfying the requirements of paragraph 4(a)(i), all that the Complainant needs to establish is that the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. Whether or not the Respondent also has a similar registered mark (in the same jurisdiction or elsewhere) is not relevant for this requirement, but may be relevant when considering the question of whether or not the Respondent has any rights or legitimate interests in the Disputed Domain Name.
The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's registered trade mark, and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant has not authorised the Respondent to use the Complainant's AQUAQUEEN trade mark.
Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove it has rights or legitimate interests in the Disputed Domain Name.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
In accordance with the Panel's powers granted under paragraph 10(a) of the Rules, the Panel conducted its own factual research. The Panel found that the Respondent's contention that it is a sponsor of the Romanian sports teams Steaua Bucureşti, and that it stocks its AQUA QUEEN branded products in the Romanian supermarket, Cora, is supported by the website of such sports club and supermarkets. The Panel finds that the Respondent has been conducting business in Romania through the use of the Disputed Domain Name, and its AQUA QUEEN trade mark.
The Panel accepts the Complainant's contention that the Respondent (Aqua Queen S.R.L.) was established in 2004, and the Disputed Domain Name and the Respondent's AQUA QUEEN trade mark were registered in 2010, which was many years after the Complainant first registered and began using its AQUAQUEEN trade mark in 1994. However, this Disputed Domain Name concerns the country code Top-Level Domain ("ccTLD") ".ro" (i.e., Romanian) extension, and the Complainant is a company established in Australia and no evidence has been provided by the Complainant (either in the Complaint or in the Supplemental Submissions) to establish that the Complainant has any commercial dealings or is well-known in Romania (or anywhere in the world). In addition, the Respondent's registration and use of the Disputed Domain Name, the registration of its company name (Aqua Queen S.R.L.), the registration of its AQUA QUEEN trade mark, and its business activities in the bottled water industry, all pre-date the pre-action letter issued by the Complainant to the Respondent by at least 5 years (i.e., December 2015). Trade mark rights are territorial and there are plenty of examples of brands that are owned by different entities in different parts of the world. There is no persuasive evidence to establish that the Respondent must have known of the Complainant at the time it registered the Disputed Domain Name. The Respondent set up a company under the name Aqua Queen S.R.L. in 2004. While the scope of the business of the Respondent's company at the time the company was established may have been immaterial then, it may however be relevant at present, e.g., in court proceedings. To all intents and purposes it appears to have been a legitimate business under a name to which the Complainant had no claim at the time, having themselves no established business or presence in Romania and no registered trade marks in Romania yet. The Respondent likely registered the Disputed Domain Name and AQUA QUEEN trade mark subsequently in order to reflect its company name (Aqua Queen S.R.L.) at the time.
As the owner of the AQUAQUEEN trade mark in the EU, which was automatically extended to cover Romania on July 1, 2007, the Panel believes that the Complainant should have received an official notification of the Respondent's trade mark application in Romania when it was filed in September 2010 in the same class. However, no evidence has been presented, nor any assertions been made, by the Complainant (either in the Complaint or the Supplemental Submissions) that it raised any objections to the Respondent's trade mark application or that it has since sought to cancel the Respondent's trade mark registration, or taken any action to compel the change of company name of the Respondent. Given the prior use by the Respondent of the "Aqua Queen" name in that market, it is likely that the Complainant knew this may not be a clear-cut case. The Complaint was also filed over five years after the Disputed Domain Name (and the Respondent's trade mark) was registered. Although it is well established that the doctrine of laches does not apply under the Policy (see Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447; TMK A/S v. woosan, James Motors, WIPO Case No. D2012-2073), an inordinate delay in bringing proceedings may be taken into account when assessing the evidence provided.
In summary, the Panel finds that the parties' relative business and trade mark rights underscore the fact that this is a complex case that involves rights of parties operating in different markets. The Policy is only intended to handle clear cases of cyber-squatting, and so any dispute that the Complainant may have with the Respondent regarding its use of the AQUA QUEEN trade mark is one that should be addressed through the courts, and not via the Policy.
The Panel finds that the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy, the Panel does not need to consider the third requirement under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Date: April 28, 2016