WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kerakoll S.P.A. v. SC Aris Co Group SRL
Case No. DRO2017-0006
1. The Parties
The Complainant is Kerakoll S.P.A. of Sassuolo, Italy, represented by Bugnion S.p.A., Italy.
The Respondent is SC Aris Co Group SRL of Timisoara, Romania.
2. The Domain Name and Registrar
The disputed domain name <kerakoll.com.ro> is registered with ROTLD (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2017. On November 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 8, 2017, 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.
Pursuant to the Complaint submitted in English and the registrar verification dated November 8, 2017 stating that Romanian is the language of the registration agreement of the disputed domain name, on November 27, 2017, the Center sent a request in English and Romanian that the Parties should submit their comments on the language of the proceeding. On November 29, 2017, the Complainant submitted its request for English to be the language of the proceeding, to which 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 in both Romanian and English, and the proceedings commenced on December 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2017.
The Center appointed Marilena Comanescu as the sole panelist in this matter on January 23, 2018. 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
The Complainant Kerakoll SPA is an Italian joint stock company established in 1968 who produces mortars and adhesives for the construction industry under the trademark KERAKOLL for more than 40 years. Currently, the Complainant employs more than 1,340 people, has 12 international branches and exports in almost 100 countries worldwide. KERAKOLL marked goods were used to build important international edifice projects. For the above, the Complainant alleges its KERAKOLL trademark enjoys a strong reputation and renown through the world.
The Complainant holds trademark registrations for the mark KERAKOLL, such as:
- International Trademark Registration No. 696461 registered on July 8, 1998 and valid until July 8, 2018, for goods in International Class (IC) 1, designating, inter alia, Romania; and
- The European Union Trademark Registration No. 012022026 filed on July 29, 2013, and registered on December 23, 2013, for goods in IC 1, 2 and 19.
The Complainant promotes itself on the website “www.kerakoll.com”.
Between May 27, 2010 and February 2017, the Parties had commercial relations, namely the Respondent was a reseller of Complainant’s goods particularly based on orders and invoices. According to Complainant’s statements uncontested by Respondent, there was no agreement between Parties, such distribution or license agreement that would entitle the Respondent to use or register Complainant’s KERAKOLL mark in Romania, or to incorporate it in a domain name.
Prior to commencing this proceeding, the Complainant sent to the Respondent a cease-and-desist letter followed by several reminders requesting the transfer of the disputed domain name to the Complainant. The Respondent did not respond.
The disputed domain name was registered on April 15, 2011, and at the time of filing the Complaint it was not actively used; when accessing the website corresponding to the disputed domain name a default message appears reading the following: “SORRY! If you are the owner of this website, please contact your hosting provider: “@kerakoll.com.ro”. It is possible you have reached this page because: The IP address has changed./There has been a server misconfiguration./The site may have moved to a different server.”
5. Parties’ Contentions
The Complainant alleges its KERAKOLL trademark enjoys a strong reputation and renown through the world and asserts the disputed domain name is identical to its KERAKOLL trademark; the Respondent has no rights or legitimate interests in the disputed domain name; and the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy is directed towards resolving disputes concerning allegations of abusive domain name registration.
As part of the process, the Complainant must provide evidence and submissions in support of its Complaint. The expectation is that the Complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The Respondent is given full opportunity to respond. In this instance, the Respondent is in default.
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and to obtain relief. These elements are that:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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 in bad faith.
Each of three elements must be established by the Complainant to warrant relief.
6.1. Preliminary Procedural Issue. Language of the Proceeding
The Complainant has asked the language of proceeding be English and the Respondent did not react to the Center’s email related to the language of the proceeding, nor provided any Response in any language whatsoever.
Under paragraph 11 of the Rules, the language of the proceeding is the language of the registration agreement of the disputed domain name, unless both parties agree otherwise, or the Panel determines otherwise based on one party’s request. The Panel decides that proceeding should be conducted in another language generally when it is necessary due to different nationalities of the parties and when the complainant does not understand the language of the registration agreement and it would therefore be unfairly disadvantaged by the fact that it must translate all the documents involved in such proceeding.
In the present proceeding, the Complainant does not understand Romanian. At the same time, the Complainant provided evidence of commercial correspondence had with the Respondent in English. The Respondent has failed to file a Response, or to comment on the language of the proceeding. The Panel considers that the Complainant will only be disadvantaged if required to translate the Complaint into Romanian and the proceeding will be unduly delayed.
For all the above, the Panel decides that English is the language of this proceeding.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The Complainant holds trademark registrations for KERAKOLL. The disputed domain name <kerakoll.com.ro> incorporates the Complainant’s trademark in its entirety without any alteration.
It is well established in decisions under the UDRP that indicators for country code or generic Top-Level Domains (e.g., “.ro”, “.it”, “.com”, “.org”) are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain name <kerakoll.com.ro> is identical to the Complainant’s trademark KERAKOLL, pursuant to Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interests in respect to the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or a bona fide offering of goods or services. In line with the previous UDRP decisions, the Panel accepts that the Complainant has provided a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, and the burden of production shifts to the Respondent. See section 2.1 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
According to the Complaint, prior to registering the disputed domain name, the Respondent was a reseller of Complainant’s goods in Romania. Since Panels have recognized that resellers using a domain name containing a complainant’s trademark to undertake sales related to complainant’s goods may be making a bona fide offering of goods and thus have a legitimate interest in such domain name, in this case, the key question under this element is whether the Respondent’s use of the disputed domain name amounts to a bona fide offering of goods under paragraph 4(c)(i) of the Policy.
The current state of UDRP panel decisions in relation to this issue is helpfully summarized in the section 2.8 of the WIPO Overview 3.0, based on panel decisions such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. According to the “Oki Data test”, several cumulative requirements will be applied in the specific conditions of a UDRP case, including the fact that the respondent must actually be offering the goods or services at issue and therefore it must actively use the website under the disputed domain name. In this case, according to the available record, at the time of filing the Complaint the disputed domain name was directed to a default page and therefore the Oki Data test cannot apply.
Further, cases applying the Oki Data test usually involve a domain name comprising the mark plus descriptive terms (e.g., “parts”, “repairs”, “location”). The risk of misrepresentation has led panels to find that a respondent lacks rights or legitimate interests in cases involving a domain name identical to the Complainant’s trademark. Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.
The Respondent chose not to challenge the Complainant’s allegations, nor react to Complainant’s prior cease-and-desist letters.
All these facts cannot constitute a legitimate noncommercial or a bona fide offering of goods or services in relation to the disputed domain name.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant holds trademark registrations for KERAKOLL in many jurisdictions worldwide starting 1998. The disputed domain name was registered in April 2011.
According to the case file evidence, prior to registering the disputed domain name, the Parties entered in a commercial relationship and the Respondent became a reseller of the Complainant’s “Kerakoll” goods. However, Parties had no agreement regarding the use, or registration by Respondent of KERAKOLL trademark in a domain name.
For the above, the Panel concludes that the Respondent registered the disputed domain name in bad faith.
At the time of filing of the Complaint, the disputed domain name was not actively used, the website corresponding to the disputed domain name displayed a defaulted page.
From the inception of the UDRP, panelists have found that the non-use of a domain name (including a black or “coming soon” or other similar inactive page) would not prevent a finding of bad faith under the doctrine of passive holding. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be relevant circumstances found to be indicative of bad faith include the degree of distinctiveness or reputation of the Complainant’s mark and the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use. See section 3.3 of the WIPO Overview 3.0.
The Complainant’s trademark KERAKOLL is distinctive for the claimed goods and is used worldwide for decades, the Respondent was properly notified by the Center with regard to the commencement of the present proceeding but it remained silent.
Also, the disputed domain name reproduces the Complainant’s mark in its entirety without any alteration or addition. The Complainant claims it did not grant any right to the Respondent to register a domain name comprising its trademark.
The Respondent is a commercial company activating in the same business with the Complainant. One non-exhaustive bad faith scenario enumerated in the UDRP, under paragraph 4(b)(iii) presents the situation when the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor. As detailed in section 3.1.3 of the WIPO Overview 3.0, in the UDRP procedure, the notion of “competitor” is extended beyond the concept of an ordinary commercial or business competitor, and covers inter alia, prior customers or business partners. In the present case, the Respondent included a commercial partner’s distinctive trademark in a domain name without any approval, keeps the disputed domain name inactive, refuses to participate in the present proceeding and to provide arguments in its favor.
Given the other circumstances of the case, such behavior of the Respondent may be considered as evidence of bad faith in registering and using the disputed domain name.
For the above, the Panel finds that the Respondent registered and is using the disputed domain name <kerakoll.com.ro> in bad faith, pursuant to Policy, paragraph 4(a)(iii).
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 <kerakoll.com.ro> be transferred to the Complainant.
Date: February 1, 2018