WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DNATA, Dnata Travel Centre v. Viorel Alin Sandu

Case No. DRO2019-0013

1. The Parties

The Complainant is DNATA, Dnata Travel Centre, United Arab Emirates, represented by HGF Limited, United States of America.

The Respondent is Viorel Alin Sandu, Romania.

2. The Domain Name and Registrar

The disputed domain name <dnatacatering.ro> is registered with ROTLD (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2019. On November 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 8, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 22, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 25, 2019.

The Center sent an email communication to the Parties on November 22, 2019 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Romanian. The Complainant submitted a request for English to be the language of the proceeding on November 25, 2019. The Respondent did not submit any communication regarding the language of the proceeding.

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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2019.

The Center appointed Mihaela Maravela as the sole panelist in this matter on January 3, 2020. 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. Language of the proceedings

Paragraph 11(a) of the Rules provides 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 this case the language of the registration agreement is Romanian, and the Respondent is Romanian.

The Complainant has requested that the language of the proceedings in this case should be English, arguing, inter alia, that the disputed domain name contains the English word “catering” and is therefore directed to consumers with knowledge of English that would understand that the offered services are in the field of food and drink, that the Complainant does not understand Romanian and it would be disproportionate to require the Complainant to submit the Complaint in Romanian as this would result in additional expense and unnecessary delay for the Complainant.

The Respondent has provided no answer to the Center’s email related to the language of the proceedings, and has provided no Response either in Romanian or in English.

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. First, the Complainant does not understand Romanian. Second, the Respondent has failed to provide any comment on the language of the proceedings despite being notified of the present proceedings both in Romanian and in English language. Also, the Registration agreement for “.ro” country code Top-Level domain names (“ccTLD”) is available both in Romanian and English and there is no provision for a domain name applicant to choose between English or Romanian as the controlling language of the registration agreement. The Panel considers that the Complainant would be disadvantaged if a translation of the Complaint into Romanian would be required and the proceedings would be unduly delayed in such case. For a similar finding see Amazon Europe Core S.à.r.l. v. Daniel Tudor, WIPO Case No. DRO2018-0001.

5. Factual Background

The Complainant is one of the largest air services providers, offering ground handling, cargo, catering and travel services to more than 400 airlines in over 80 countries. The Complainant is using the trademark DNATA for catering services among other services.

The Complainant is the exclusive owner of a number of registered trademarks consisting of the word DNATA, including the following:

- the European Union trademark for the word DNATA with registration number 015148811, registered on September 14, 2016, for classes 39, 42 and 43;

- the European Union trademark for the word DNATA, with registration number 09941634, registered on November 16, 2011, for classes 39, 42 and 43.

The Complainant owns and operates the website at <dnata.com>, registered from June 6, 1995.

The disputed domain name was registered on August 8, 2019. According to the unrebutted evidence put forward by the Complainant, the disputed domain name resolved at the date of the Complaint to a website offering catering services. At the date of this decision the disputed domain name is inactive and it appears that the hosting account has been suspended.

6. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is closely similar to the DNATA trademark in which the Complainant has earlier rights. In addition, the Complainant argues that DNATA is the distinctive and dominant element of the disputed domain name and “catering” is descriptive for the services offered by the Complainant.

Moreover, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name as the Respondent is not a licensee of the Complainant, otherwise affiliated with the Complainant or allowed by the Complainant to use its DNATA trademark in a domain name or otherwise. Also, the Complainant contends that the Respondent’s use of the disputed domain name infringes the rights of the Complainant in the DNATA trademark and the Respondent has not made a bona fide use of the disputed domain name.

The Complainant argues that the disputed domain name has been registered and used in bad faith for commercial gain since the Respondent has copied the Complainant’s DNATA trademark and displayed it on the website and displayed contact details similar to those of the legitimate Romanian affiliate of the Complainant. Further, the Complainant contends that the Respondent misrepresented itself as the Complainant to third parties, who were confused into believing that the orders originate from the Complainant and invoiced the Complainant for such orders.

B. Respondent

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

7. Discussion and Findings

Notwithstanding the fact that no Response has been filed by the Respondent, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

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

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark 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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.

Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the DNATA trademark.

As regards the question of identity or confusing similarity for the purpose of the Policy, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing” (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Here the disputed domain name wholly incorporates the Complainant’s DNATA trademark in addition to the generic term “catering”. This addition does not distinguish the disputed domain name from the Complainant’s trademark.

The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The addition of a descriptive term does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0.

It is well accepted by UDRP panels that a ccTLD, such as “.ro”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark.

This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:

(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 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 trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has established that it holds rights over the trademark DNATA and claims that the Respondent is not sponsored by or affiliated with the Complainant in any way and that the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “dnata”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.

From the unrebutted evidence put forward by the Complainant, the website to which the disputed domain name resolved included, without any disclaimer of non-affiliation, the DNATA trademark. This does not amount to a bona fide offering of goods and services. See Fendi S.r.l. v. Ndiaye Therese, WIPO Case No. D2018-0179.

By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding Cash Converters Pty Ltd v. Mirriam Musonda-salati, WIPO Case No. D2014-1839.

With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

To fulfil the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.

According to the unrebutted assertions of the Complainant, its DNATA trademark is widely used in commerce well before the registration of the disputed domain name in August 2019. The disputed domain name incorporates the Complainant’s trademark and descriptive word in addition to the relevant ccTLD. Furthermore, the website associated with the disputed domain name contained at the date of the Complaint the trademark of the Complainant as well as offers related to the goods and services offered by the Complainant. Under these circumstances, the Panel considers that the Respondent has registered the disputed domain name with knowledge of the Complainant’s trademark DNATA. See MasterCard International Incorporated v. Capital Conservator Group LLC, WIPO Case No. D2009-1051.

As regards the use of the disputed domain name, paragraph 4(b)(iv) of the Policy has direct bearing to the present case:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the said website location or of a product or service on that website location.”

The conduct of the Respondent falls under the above provisions. The disputed domain name is confusingly similar to the DNATA trademark of the Complainant. On the website to which the disputed domain name resolved similar services to those of the Complainant were offered under the DNATA trademark. Under these circumstances, the Internet users will likely be confused as to the source of the services sold or offered on such website. The Panel agrees with findings of previous UDRP panels that “the Respondent’s bad faith registration and use of the disputed domain name is reflected in the Respondent’s intention to mislead Internet users into believing that the Respondent is the Complainant, or that the Respondent is acting for the Complainant. [..] In this regard, the Panel finds, at the very least, that the Respondent intends to mislead Internet users into accessing its website in the false belief that they were accessing Complainant’s website, and that it did so by registering and using the disputed domain name, which is confusingly similar to Complainant’s trademark, and including Complainant’s trademark MIGROS in the website to which the disputed domain name resolved.” See, Migros-Genossenschafts-Bund v. James Okogb, Micrio, WIPO Case No. D2017-0647; Migros-Genossenschafts-Bund v. Patrizio De Bortoli, MediaEtCetera GmbH, WIPO Case No. D2017-0980.

The fact that the website is currently inactive does not have any impact on such an assessment, as 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). Applied to this case, even if the disputed domain name does not currently resolve to an active website, the Panel notes that passive holding does not preclude a finding of bad faith (see, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The following factors were also considered by the Panel as indicative of bad faith registration and use of the disputed domain name: (i) the Respondent’s lack of response to the Complaint. See, Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210; (ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name as per paragraph 4(b) of the Policy; (iii) the apparent change of the content of the website to which the disputed domain name resolves after the receipt of the Complaint. The change to the Respondent’s website further supports a finding of bad faith. See Maplin Electronics Limited v. Lee Jeongsoon, WIPO Case No. D2006-0011 (change in website after receiving complaint was evidence of bad faith) and V&V Supremo Foods, Inc. v. pxlchk1@gmail.com, WIPO Case No. D2006-1373.

The Panel concludes that the disputed domain name was registered and used in bad faith.

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 <dnatacatering.ro> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: January 17, 2020