WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Newsphone Hellas Commercial Société Anonyme Of Tele - Audio Information Services and Integrated Computer and Communication Services (“Newsphone Hellas SA) v. Hercules Capritsas, Telia/ PrivacyProtect.org
Case No. DTV2014-0002
1. The Parties
The Complainant is Newsphone Hellas Commercial Société Anonyme Of Tele - Audio Information Services and Integrated Computer and Communication Services “Newsphone Hellas SA” of Athens, Greece, represented internally.
The Respondent is Hercules Capritsas, Telia of Attiki, Greece / PrivacyProtect.org of Nobby Beach, Queensland, Australia, represented by Vassilis Hatzopoulos, Greece.
2. The Domain Name and Registrar
The disputed domain name <oroskopos.tv> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2014. On July 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 2014, 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 July 23, 2014 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 July 24, 2014.
On July 24, 29, and August 5, 2014, the Center received the Respondent’s email communications, of which the Center acknowledged receipt.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2014. The Response was filed with the Center on August 18, 2014.
The Center appointed Luca Barbero as the sole panelist in this matter on August 28, 2014. 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.
On September 2, 2014, the Complainant submitted a Supplemental Filing. On September 3, 2014, the Respondent sent an email communication to the Center requesting that the Complainant’s Supplemental Filing not be considered in this proceeding.
4. Factual Background
The Complainant is a Greek company established in 1995 active in the field of telecommunications and operates a web site in Greek language with astrology content at the domain name <oroskopos.gr>, which was registered on April 3, 2003.
The Complainant is the owner of the Greek trademark registration OROSKOPOS.GR (figurative mark), filed on November 21, 2013, in class 38.
The disputed domain name <oroskopos.tv> was registered on April 19, 2013. The Respondent registered and uses the disputed domain name for a web site with astrology content.
5. Parties’ Contentions
The Complainant states that this is a refiled Complaint since it is the second complaint involving the same domain name and the same respondent as in an earlier complaint that had been denied in Newsphone Hellas Commercial Société Anonyme of Tele - Audio Information Services and Integrated Computer and Communication Services “Newsphone Hellas SA” v. PrivacyProtect.org/ Maria Papadopoulou, WIPO Case No. DTV2013-0008. The Complainant highlights that the first complaint had been denied because the panel ruled that the Complainant did not rely on any registered and unregistered mark and contends that the refiling of the Complaint is justified on the ground that new acts have occurred subsequent to the earlier decision in the original complaint that will influence the panel to decide this case in a different way. In particular, the Complainant underlines that its Greek trademark OROSKOPOS.GR, filed on November 21, 2013 in class 38, has now been registered.
The Complainant alleges that it has reputation in Greece in connection with telecommunication services and that it operates its web site with astrology content at the domain name <oroskopos.gr>.
It states that it is the owner of the trademark OROSKOPOS.GR, that it uses since 2003 in connection with the services provided on its web site “www.oroskopos.gr”, in its newsletters, in the advertisements of its site and in its astrology programs transmitted through YouTube.
The Complainant claims to have acquired significant goodwill in the trademark OROSKOPOS.GR since 2003 through the use of the name to distinguish its services from the goods and services of others and asserts that, over the years, the public has come to recognize the Complainant’s site in connection with astrology content provided by well known astrologers.
The Complainant informs the Panel that it has invested considerable time and effort in developing a presence on the Internet and states that, as a result, the services offered under its trademark can now be obtained through thousands of web sites which have posted a link to the Complainant’s web site.
The Complainant has also advertised its services under the trademark OROSKOPOS.GR through traditional magazines and newspapers as well as via the social media, Google and through the participation to various events. As a result of this advertising, marketing and promotion of our services, the Complainant’s site has 89.115 registered users and the revenues earned by the services of the site indicatively from January 1, 2010 until October 31, 2013, are EUR 413.504,73.
The Complainant contends that the disputed domain name <oroskopos.tv> is identical or confusingly similar to its trademark OROSKOPOS.GR.
As to the Respondent’s rights or legitimate interests in the disputed domain name, the Complainant points out that the Respondent is not commonly known by the disputed domain name, that the Complainant’s domain name <oroskopos.gr> and the use of the Complainant’s mark predate the registration of the disputed domain name, that the Complainant never granted the Respondent any license, rights, permission or authorization to use its mark or incorporate this in a domain name registration and that there is no business link between the Complainant and the Respondent.
The Complainant contends that the public is likely to be confused as to the source of the services offered on the Respondent’s web site as the unaware visitor may perceive it as the Complainant’s site. The Complainant also states that the Respondent does not use the disputed domain name for any legitimate, noncommercial or equitable purpose or in connection with a bona fide offering of goods and services, but with the intent to misleadingly divert consumers for commercial gain, as the disputed domain name is pointed to a web site in Greek language offering services competitive with the Complainant’s ones and with a look and feel similar to the Complainant’s site.
The Complainant alleges that OROSKOPOS.GR has been used since 2003 as the mark of the astrology services of the Complainant and is recognizable by the wider public as originating from the Complainant, being a distinctive identifier associated with the Complainant’s services in the provision of astrology content.
The Complainant states that the incorporation of the term “oroskopos” in the disputed domain name attempts to create confusion in the minds of consumers with the Complainant’s operation of astrology activities and that, given the nature of the Complainant’s services, the use of the term “oroskopos” does not only fail to distinguish the disputed domain name from the mark, but also reinforces the association of the disputed domain name with the Complainant’s mark. The Complainant also contends that the Respondent has chosen to emphasize the word “oroskopos”, in the logo published on its site, with bold purple color leaving the suffix “.tv” in white color in order to confuse Internet users about the source of its astrology services.
The Complainant also states that the Respondent’s web site has commercial purpose, as the services provided on the Respondent’s site are not free of charge. Internet users can in fact receive astrology content by calling a premium rate phone number or sending a chargeable SMS to a short code.
With reference to the bad faith registration requirement, the Complainant contends that the disputed domain name was registered in bad faith, as it is highly unlikely that it was registered without prior knowledge of the Complainant’s mark and an Internet search reveals that the site “www.oroskopos.gr” is one of the top astrology sites in Greece. The Complainant also indicates that the disclaimer published on the Respondent’s site as to the non-affiliation with the Complainant can also show that the Respondent had prior knowledge of the Complainant’s trademark.
The Complainant informs the Panel that it has a section in its site named “Web Tv Oroskopos.gr” and that such service was advertised as of April 2011. Therefore, the Complainant concludes that, by registering and using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark and web site.
The Complainant further notes that Greek law protects marks the distinctiveness of which has been acquired through use and that the active use of the disputed domain name by the Respondent is an act of unfair competition.
The Complainant highlights as a further circumstance evidencing bad faith that the Respondent’s use of a privacy service in combination with the provision of incomplete contact information to such service or a continued concealment of the “true” or “underlying” registrant upon the institution of a UDRP proceeding is evidence of bad faith. The Complainant also highlights that, on the Respondent’s site, there is neither contact information nor details on the company that operates it, and concludes that the lack of provision of contact details by the Respondent is an attempt to conceal its true identity.
The Respondent concurs with the Complainant that the Complaint is a refiled one since, although the name technically appearing in the WhoIs records of the privacy protection service through which the disputed domain name is registered is now Hercules Capritsas, Telia, the real owner and holder of the disputed domain name is Maria Papadopoulou, the respondent in the prior UDRP case.
Therefore, the Respondent acknowledges that the current Complaint concerns “the same domain name, the same respondent and the same issue”.
With reference to the refiling of the Complaint, the Respondent notes the following:
- As no appeal is contemplated by the Policy and no case has so far been brought by the Complainant before the Greek courts and tribunals, the Complainant has made no use of the “review” procedure foreseen by the Rules, but is trying to force a second panel to review the decision of the previous panel;
- In the prior case involving the disputed domain name and the Respondent, the Complainant was, extraordinarily, given the opportunity to file a reply to the response, thus prompting the Respondent to file a supplemental response. Hence, the Complainant already had an extra occasion to provide any additional elements or arguments it thought fit, before the panel delivered its decision;
- If the Complainant chose to submit its original complaint, without waiting for the outcome of its pending registration claim for the mark OROSKOPOS.GR, it should bear the consequences;
- Since the Complainant consciously made the choice not to wait for the registration of its mark and brought the first Complaint to the Center in order to cover its lack of diligence and the fact that it was late in applying for a mark, it should not be given a second chance, now that it did manage to register a mark;
- The choice of the timing for filing the first complaint was linked to an interested assessment of the legal situation, as the Complainant was aware of the fact that the Respondent’s applications for the marks “oroskopos” and “oroskopos.tv” predated its trademark application by three months (as they were submitted on August 20, 2013) and would, presumably, lead to registration of the Respondent’s marks before the Complainant’s, and thus tried to preempt the Respondent from using its upcoming marks - which would in any event predate its – and would give the Respondent a definitive right on the disputed domain name;
- The Complainant did not show the necessary diligence by either applying for a mark earlier or delaying its initial complaint for a couple of months in order to wait for the administrative decision on its mark;
- The fact that the Complainant did manage to register a mark may not exert any influence on the outcome of this case since the term “oroskopos” lacks distinctiveness and may not be registered in relation to the services in class 45 offered by the Complainant under the domain name <oroskopos.gr>;
- Since the only reason put forward by the Complainant is the registration of the mark OROSKOPOS.GR in class 38, the only possible grounds for the new Complaint to be declared admissible are either “newly discovered (preexisting) evidence” provided such evidence is conclusive for the reconsideration of the case, or “new acts subsequent to the first decision”. None of these, according to the Respondent, apply in the present case because a) the registration of the Complainant’s mark is neither “new” nor “newly discovered” since the procedure leading to the registration had already been discussed by the Complainant in the first complaint, b) the registration of the Complainant’s mark was reasonably foreseeable at the time of the first UDRP proceedings, c) registration does not correspond to an “act” of any of the parties but a, by default, legal development and, as such it may not grant review of a previously settled case, d) registration of a mark for a class of activity alien to the one the Complainant is pursuing through its domain name is inconclusive and e) the Complainant’s registration is posterior to the registration of the Respondent’s marks OROSKOPOS and OROSKOPOS.TV. Hence, the Complainant has decidedly not met the requirement to demonstrate “exceptional circumstances” in order for a re-filing to be accepted;
- In the circumstance where the Panel should consider that such registration does constitute the “exceptional circumstances” required for re-filing, it is not “material” to the case and does not affect the rationale of the original decision due to the fact that the mark was not granted in the class the disputed domain name concern, i.e. the provision of astrological services;
- In any event, the evaluation of the Complaint should be strictly restricted to the sole new element, i.e. the newly registered mark, to the exclusion of any other circumstance, fact or legal argument brought forward in the new Complaint.
With reference to the Complainant’s registered trademark, the Respondent claims that the mark OROSKOPOS.GR can neither confer to the Complainant exclusive rights nor restrain the Respondent or others from using the same mark in the field of astrological etc services, as, despite the fact that the trademark of the Complainant is combined (verbal, figurative and colour combination), the trademark of the Complainant is registered only in class 38, which refers to information services through the Internet, while a trademark of the Complainant in class 45 for astrological services was not accepted for registration.
The Respondent also informs the Panel that its two Greek trademarks OROSKOPOS and OROSKOPOS.TV filed on August 20, 2013 have been registered and states that, since then, it has the right to an exclusive use of said marks in the field of software, as well as the right to restrain others from using the same or other mark in such a manner that may cause confusion. Therefore, the Respondent states that, if any of the parties may rely on their marks in order to protect the disputed domain name, this is the Respondent and not the Complainant, both ratione tempore and ratione materiae.
The Respondent concludes that, in any case, it is settled case law that when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established, 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.
The Respondent also requests that the Panel issue a Reverse Domain Name Hijacking decision since:
- The Complainant filed an application for the registration of the mark OROSKOPOS.GR in November 2013 and immediately afterwards filed its first UDRP complaint without waiting for the outcome of the procedure as the Complainant knew that the Respondent had applied for the marks OROSKOPOS and OROSKOPOS.TV before the Complainant and wanted to preempt it, through the issuance of a UDRP decision, from using them to secure the disputed domain name;
- Although the Complainant got its mark definitively registered in February 2014, it is only in August 2014 that it submitted the second Complaint, thus obliging the Respondent to file our response before August 19, 2014;
- In view of the fact that the Complainant had duly been notified of the decision of Newsphone Hellas Commercial Société Anonyme of Tele - Audio Information Services and Integrated Computer and Communication Services “Newsphone Hellas SA” v. PrivacyProtect.org/ Maria Papadopoulou, supra and that it knew of the Respondent’s registered marks predating the Complainant’s, the Complainant was perfectly conscious of the fact that the second Complaint had no chance whatsoever of succeeding. Hence, the Respondent concludes that the Complainant deliberately abused of this Administrative Proceeding and attempted what under the UDRP is known as Reverse Domain Name Hijacking;
- The Complainant knew a) that according to the Greek authorities and the UDRP panel in the prior case decided on the disputed domain name <oroskopos.tv>, the term “oroskopos” on its own had no distinctive power in astrological sector and could not be protected, b) that the Respondent had registered marks which predated the Complainant’s ones and c) that the Respondent’s marks corresponded fully/more closely to the disputed domain name than the Complainant’s ones. Despite all the above the Complainant did not refrain from submitting a second Complaint, exposing the Respondent to continuous costs of litigation and in the hope that the Respondent would not be in a position to meet the strict procedural deadlines.
C. Complainant’s Supplemental Filing
In its unsolicited Supplemental Filing, the Complainant states that:
- The registration of its mark before the Greek Trademark Office is a new act/action subsequent to the first decision that justifies the refiling of the Complaint, as the panel who decided the prior case accepted that the registration of the mark could lead to a different outcome of our case;
- The Respondent is not the owner of the registered trademark OROSKOPOS and OROSKOPOS.TV since the trademark is registered in the name of Maria Papadopoulou and not Hercules Capritsas;
- the Complainant’s registered mark for class 38 is more in line with the Complainant’s activity than the Respondent’s marks OROSKOPOS and OROSKOPOS.TV which have been registered for class 42;
- The registration of the marks OROSKOPOS and OROSKOPOS.TV is an evidence of bad faith because it appears to be a pretense for the Respondent (in case the Panel concludes that the marks have been registered by the Respondent) to justify an abusive domain name registration. It does not evidence a legitimate interest in the disputed domain name under the circumstances of this case. According to the Complainant, the facts in this case indicate that the trademarks have been registered to facilitate the Respondent in taking unfair advantage of the Complainant’s previously existing unregistered, then trademark rights in OROSKOPOS.GR;
- The fact that the Respondent in its response argues only for the procedural issues (the refiling of the complaint, and the Reverse Domain Name Hijacking issue), does not mention anything about the bona fide business on its part and does not provide a reasonable explanation for the selection of the name “oroskopos” for its site, evidences that it knows that is in bad faith;
- the Respondent does not claim to have been commonly known by the disputed domain name, despite having acquired trademark rights.
D. Respondent’s reply Supplemental Filing
The Respondent requests that the Panel do not consider the Complainant’s Supplemental Filing as the Complainant a) has already had ample opportunities to submit its arguments, b) in view of its lack of legal argument, is nonetheless trying to drive the Respondent out of the market by exposing it to extraordinary legal costs, c) is clearly abusing the lack of clear procedural rules under the UDRP. The Respondent also states that, if legal certainty, expediency and low cost are the UDRP’s main objectives, the Complainant’s procedural practice clearly aims to all the opposites.
6. Discussion and Findings
A. Preliminary issues: Refiled Complaint and Complainant’s Supplemental Filing
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.4, a refiled case concerns the complainant submitting a second complaint involving the same domain name and the same respondent as in an earlier complaint that had been denied. A refiled case may only be accepted in limited circumstances, which include when the complainant establishes in the new complaint that relevant new actions have occurred since the original decision, or that a breach of natural justice or of due process has occurred, or that there was other serious misconduct in the original case (such as perjured evidence). A refiled complaint would usually also be accepted if it includes newly presented evidence that was reasonably unavailable to the complainant during the original case. In addition, a re-filing complainant must clearly indicate the grounds allegedly justifying the refiling and the failure to clearly identify that its complaint is a re-filing of an earlier UDRP complaint may constitute a material omission for the purpose of any panel assessment of Reverse Domain Name Hijacking.
In the case at hand, both the earlier and the current Complaint were originally filed against the same privacy service, PrivacyProtect.org. In both cases, the concerned Registrar, upon receipt of the Center’s request for verification, disclosed the underlying registrant’s name and contact details as being different from the ones indicated in the complaint. Precisely, the underlying registrant in the first UDRP case involving the disputed domain name was identified as “Maria Papadopoulou”, while in the present case “Hercules Capritsas, Telia” was indicated as registrant according to the registrar’s disclosure.
Notwithstanding the different name and contact details of the underlying registrant of the disputed domain name, the Complainant expressly maintains, in its Amended Complaint, that its Complaint is a re-filed one, stating that the disputed domain name and the Respondent are the same as the ones involved in the prior UDRP case (Newsphone Hellas Commercial Société Anonyme of Tele - Audio Information Services and Integrated Computer and Communication Services “Newsphone Hellas SA” v. PrivacyProtect.org/ Maria Papadopoulou, supra) which was concluded with a denial for the Complainant.
The Respondent, on its side, does not explain what relationship between the person indicated as underlying registrant in the previous UDRP case, i.e. Maria Papadopoulou, and the one currently indicated by the Registrar, Hercules Capritsas, Telia. However, it states that, notwithstanding the name appearing in the WhoIs database of the Privacy Protection Service adopted in connection with the disputed domain name, the real owner and holder of the disputed domain name is Maria Papadopoulou, i.e. the respondent in Newsphone Hellas Commercial Société Anonyme of Tele - Audio Information Services and Integrated Computer and Communication Services “Newsphone Hellas SA” v. PrivacyProtect.org/ Maria Papadopoulou, supra.
The Complainant submits that the refiling of the Complaint is justified on the ground that new acts have occurred subsequent to the earlier decision that will influence the Panel to decide this case in a different way. The Respondent rebuts the Complainant’s assertion stating that the requirements needed for the admission of a refiled complaint are not met.
In view of the documents and statements submitted by the parties, the Panel accepts that that this is a refiled Complaint and decides to consider it since the registration of the Complainant’s trademark is a circumstance apt to influence the Panel’s determination on the presence of the first of the three elements required by the Policy to succeed in a UDRP complaint, even though it may not be decisive for the outcome of the case.
Indeed, the appointed panel in Newsphone Hellas Commercial Société Anonyme of Tele - Audio Information Services and Integrated Computer and Communication Services “Newsphone Hellas SA” v. PrivacyProtect.org/ Maria Papadopoulou, supra declined the complaint due to the Complainant’s failure to satisfy the first requirement in absence of a registered and unregistered trademark (“The Panel does not believe that the evidence filed on behalf of the Complainant supports the view that extensive use and reputation has made the word “oroskopos” a common law trade mark. The Complainant does not otherwise rely on any registered mark. For the above reasons, the Panel cannot hold that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights”).
As to the Complainant’s Supplemental Filings, the Panel notes that, according to the consensus view of the UDRP panelists as summarized in the WIPO Overview 2.0, paragraph 4.2, it is in its discretion whether to accept it, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting the supplemental filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. In addition, most UDRP panels that have allowed unsolicited filings have also tended to require some showing of “exceptional” circumstances.
While the Panel notes that there is no “exceptional circumstances”, this Panel has reviewed the unsolicited supplemental filing as noted above under section 5.B and 5.D of this decision.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant demonstrate that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has provided evidence of ownership of the Greek trademark registration No. 223787 for OROSKOPOS.GR (figurative mark), registered on November 21, 2013 in class 38.
The Panel finds that the Complainant has established rights in a trademark according to paragraph 4(a)(i) of the Policy, since the trademark registration date, the country of registration and the goods or services for which the mark is registered are not relevant for the purpose of finding rights in a trademark under the first element of the UDRP.
The Panel notes that the core of the Complainant’s trademark is the wording OROSKOPOS.GR. Since both the disputed domain name and the Complainant’s mark contain the same word “oroskopos” and the device elements comprised in the mark and the country code Top-Level Domain (ccTLD) “.tv” can be disregarded in the assessment of confusing similarity, the Panel is satisfied that the disputed domain name is confusingly similar to the Complainant’s trademark according to paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
With respect to this requirement, a complainant is generally required to make a prima facie case that a respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name (WIPO Overview 2.0, paragraph 2.1).
In the present case, the Panel finds that the Complainant has not made a prima facie case and that the Respondent has a legitimate interest in the disputed domain name.
Indeed, the Complainant’s ownership of a registered trademark for OROSKOPOS.GR, though sufficient, in this Panel’s view, to establish rights according to the first element, does not serve to demonstrate the second requirement of paragraph 4(a) of the Policy and, in particular, does not entitle the Complainant to prevent third parties from using the word “oroskopos” in its generic sense.
Indeed, as highlighted in the prior UDRP proceeding which involved the same Respondent and the disputed domain name (Newsphone Hellas Commercial Société Anonyme of Tele - Audio Information Services and Integrated Computer and Communication Services “Newsphone Hellas SA” v. PrivacyProtect.org/ Maria Papadopoulou, supra), “the word ‘oroskopos’ is a Greek word and according to G. Bambiniotis, Dictionary of Modern Greek Language, 2nd edition 2005, it means, in liberal translation, ‘1) astrologist who predicts the future of someone; 2) factor of horoscope of each person separately which relates with the exact time and place of the birth of a person’”.
In said decision, the panel examined the issue whether the word “oroskopos” can be protected and exclusively owned by an individual or company, stating that:
“Both the Complainant and the Respondent applied for the registration of the mark in Greece. The decision of the Greek Court may give us some guidance. In Decision No. EX7074/213, regarding application no. 222655 ‘oroskopos’ of Maria Papadopoulou, the Examiner of the Greek Mark Authority rejected the mark in class 45 for astrological and intellectual services, astrological predictions, services of advice in relation to astrology because of its descriptive character, according to the judgment of the Court. The same for ‘oroskopos.TV’ of the same applicant for nο. 222656 for services in class 45 with the same justification. Concerning the device mark ‘ΩΡΟΣΚΟΠΟΣ’ application no. 222981, filed by the President of the Complainant, it was filed for the classes 16 and 35, but it was not filed for class 45 for astrological services and other similar services. It is clear to the Panel that from the Greek case law up to now the mark ‘oroskopos’ in class 45 for astrological services was not accepted”.
In addition, a review of the Respondent’s web site show that the disputed domain name is being used in connection with the relied-upon meaning, i.e. to provide astrology contents and related services, and not to trade off the Complainant’s rights in the trademark OROSKOPOS.GR or to mislead potential customers of the Complainant visiting its site. Indeed, the logo used by the Respondent on its site, which is also subject of a trademark registration, differs from the Complainant’s figurative trademark, and the Respondent disclaims any relationship with the Complainant.
In view of the above, the Panel finds the Complainant has not established this element.
D. Registered and Used in Bad Faith
For the reasons detailed in the section C above, the Panel finds it not necessary to make a determination under this element of the Policy.
E. Reverse Domain Name Hijacking
In the prior UDRP decision issued on the disputed domain name, the panel stated:
“The Complainant refers, among others, to Panathinaikos Athlitikos Omilos-Football Société Anonym, Green Team S.A. v. Panathinaikos.com, WIPO Case No. D2007-1871.
The Panel does not believe that the cases are similar: the name ‘Panathinaikos’ is famous in Greece and outside Greece for the activities of the football club and other activities. Further, the second complainant in the above case owned a registered trade mark for a figurative mark in Greece containing the image of a shamrock followed by the text ‘1908 PANATHINAIKOS FC’.
The Panel does not believe that the evidence filed on behalf of the Complainant supports the view that extensive use and reputation has made the word ‘oroskopos’ a common law trade mark. The Complainant does not otherwise rely on any registered mark”.
The Panel cannot exclude that, in view of the wording of said decision, which did not address the second and third elements since the Complainant had failed under the first one, the Complainant might have actually refiled the Complaint erroneously believing that the ownership of a trademark registration for its figurative mark could have influenced the final outcome of the second proceeding.
Therefore, the Panel does not deem appropriate to make a finding of Reverse Domain Name Hijacking in this case.
For the foregoing reasons, the Complaint is denied.
The Respondent’s claim of Reverse Domain Name Hijacking is denied.
Date: September 11, 2014