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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

3shape A/S v. Nicolaie Sebastian Valentin Radu

Case No. DRO2019-0002

1. The Parties

The Complainant is 3shape A/S of Copenhagen, Denmark, represented by BrandIT GmbH, Switzerland.

The Respondent is Nicolaie Sebastian Valentin Radu of Buzau, Romania.

2. The Domain Name And Registrar

The disputed domain name <3shape.ro> (“Disputed Domain Name”) is registered with ROTLD (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2019. On February 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 14, 2019, 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 15, 2019, the Center sent a communication in both Romanian and English to the Parties regarding the language of the proceeding. On February 18, 2019, the Complainant submitted a request for English to be the language of proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2019. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on March 25, 2019.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on April 4, 2019. 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 is a global developer and manufacturer of 3D scanners and CAD/CAM software solutions for dental and audio industries based in Denmark, Copenhagen. Since the Complainant’s establishment in 2000, it has been using 3Shape commercially as its business name for 19 years and has offices across the world, including China, Europe, United States of America and Latin America.

The Complainant holds registered trade mark rights in the 3SHAPE mark in various jurisdictions through a number of international and European Union registrations, including, inter alia:

(i) the device mark incorporating the word 3SHAPE in classes 9 and 42 registered on December 15, 2001 under International Trade Mark registration no. 779184;

(ii) the word mark 3SHAPE in classes 9 and 42 registered on May 17, 2013 under European Union Trade Mark registration no. 010828598 (extending to Romania amongst other countries); and

(iii) the word mark 3SHAPE in class 10 registered on October 28, 2015 under European Union Trade Mark registration no. 013799127 (extending to Romania amongst other countries).

The Complainant also owns and uses numerous domain names that incorporate the 3SHAPE mark, including its main company website <3shape.com> and various domain names with country code Top-Level Domains (“ccTLD”) such as <3shape.de>, <3shape.fr>, and <3shape.eu>, etc.

The Respondent is an individual based in Buzau, Romania. The Disputed Domain Name was registered by the Respondent on September 15, 2017 and does not currently resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant’s primary contentions can be summarised as follows:

(a) The Disputed Domain Name is identical or confusingly similar to the Complainant’s registered trade mark 3SHAPE;

(b) The Disputed Domain Name does not appear to have ever been used since its registration and the Complainant has not licensed or otherwise authorised the Respondent to use its 3SHAPE mark, therefore the Respondent has no rights or legitimate interests in the Disputed Domain Name; and

(c) The Respondent must have been aware of the Complainant and its rights in the 3SHAPE mark prior to his registration of the Disputed Doman Name, as the Complainant has been marketing and selling its goods in Europe for many years prior to the registration of the Disputed Domain Name. The Complainant tried to email a copy of its cease and desist letter to the Respondent on September 26, 2018 (the “Complainant’s Email”). The Respondent sent an email on September 27, 2018 stating “There is no letter attached to this mail” (the “Respondent’s Email”). On the same date, the Complainant sent an email attaching the cease and desist letter. The Complainant sent four follow up emails to the Respondent in October and November 2018 requesting a response to their cease and desist letter, but received no reply. The Respondent’s passive holding of the Disputed Domain Name, combined with the Respondent’s lack of response to the Complainant’s communications and failure to provide any evidence of actual or contemplated good-faith use, support the fact that the Respondent registered and is using the Disputed Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favor of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

6. Language of the Proceeding

Paragraph 11(a) of the Rules stipulates that: “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”. In addition, paragraph 10(c) of the Rules stipulates that “the Panel shall ensure that the administrative proceeding takes place with due expedition.”

The Panel notes that the Complainant filed the Complaint in English and submitted a request for the language of the proceeding to be English. The Respondent did not comment on this or respond to the request by the specified due date. Although the registration agreement for the Disputed Domain Name is in Romanian, it is noted that the Respondent’s Email was in English, and the Respondent never indicated that he had trouble understanding the contents of the Complainant’s Email. Furthermore, the Respondent never responded to the issue of the language of the proceeding despite having been given the opportunity to do so. Requiring the Complainant to translate the Complaint and the supporting evidence into Romanian would go against paragraph 10(c) of the Rules for “due expedition” in the administrative proceeding.

In light of the circumstances, the Panel determines that it is appropriate in this case for English to be adopted as the language of the proceeding.

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 or is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the 3SHAPE trade mark, based on its international and European Union registrations also extending to Romania. The Disputed Domain Name incorporates the Complainant’s 3SHAPE mark in its entirety.

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 ccTLD extension “.ro” may be disregarded.

As such, the Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s 3SHAPE mark and accordingly, paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, 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 3SHAPE mark, and there is no relationship between the Complainant and the Respondent, which would otherwise entitle the Respondent to use the 3SHAPE mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.

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:

(1) before any notice to him 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

(2) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or

(3) 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.

No evidence has been provided to demonstrate that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that he has become commonly known by the Disputed Domain Name.

The Disputed Domain Name does not currently resolve to an active website. There is therefore no evidence before the Panel that the Respondent has used, or has made any demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services or for noncommercial or fair use purposes. In addition, the Panel notes that the Disputed Domain Name is identical to the Complainant’s mark, which carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

It is generally recognised that the passive holding of a domain name does not prevent a finding of bad faith. See section 3.3 of the WIPO Overview 3.0. In addition, the Panel notes the nature of the Disputed Domain Name being identical to the Complainant’s mark, which implies a high risk of affiliation.

In this case, the Panel finds that the passive holding of the Disputed Domain Name by the Respondent amounts to bad faith registration and use due to the following:

(i) the Complainant’s 3SHAPE trade mark is well-known, and has been in use since at least 2001. A quick Internet search shows that the top results returned for the keyword “3shape” are the Complainant’s website and affiliated social media pages;

(ii) the Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name, or any explanation as to the reasons why he chose to register a domain name that incorporates “3shape” – the Respondent’s Email clearly indicates that he had received the Complainant’s Email, and therefore would have received the cease and desist letter and four follow up emails sent by the Complainant requesting a response to their cease and desist letter; and

(iii) it is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given the Disputed Domain Name is identical to the Complainant’s 3SHAPE mark and registered domain names, which would inevitably result in misleading Internet users into believing that the Disputed Domain Name is associated with the Complainant.

In this particular case, the Panel notes that the Respondent was given ample opportunity to refute the Complainant’s allegations in both the cease and desist letter and the Complaint, but failed to provide any submissions or evidence.

In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.

8. 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 <3shape.ro> be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Date: April 18, 2019

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