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WIPO Arbitration and Mediation Center

 

EXPERT DECISION

Automobile Dacia S.A. v. Inan Isik

Case No. DCH2006-0030

 

1. The Parties

The Claimant is Automobile Dacia S.A., Jedetel Arges, Romania, represented by Cabinet Dreyfus & Associйs, Paris, France.

The Respondent is Inan Isik, Menziken, Switzerland.

 

2. Domain Name

The dispute concerns the following domain name: <dacia.ch> (“Domain Name”).

 

3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2006. On November 2, 2006, the Center transmitted by email to SWITCH a request for verification in connection with the Domain Name at issue. On November 3, 2006, SWITCH transmitted by email to the Center its verification response confirming that the Respondent is listed as the holder of the Domain Name and providing the relevant contact details. The Center verified that the Request satisfied the formal requirements of the Rules of procedure for dispute resolution proceedings for .ch and .li domain names (the Rules of Procedure), adopted by SWITCH, the .ch and .li registry, on March 1, 2004.

In accordance with the Rules of Procedure, paragraph 14, the Center formally notified the Respondent of the Request, and the Dispute resolution proceedings commenced on November 9, 2006. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was November 29, 2006.

No Conciliation conference has taken place within the deadline specified in paragraph 17(b) of the Rules of procedure.

The Respondent has neither filed a formal Response nor expressed his readiness to participate in a Conciliation in accordance with paragraph 15(d) of the Rules of Procedure.

The Respondent filed informal statements on November 9, 2006, and on December 13, 2006.

On December 11, 2006, the Center notified the Claimant accordingly, who on December 5, 2006, made an application for the continuation of the Dispute resolution proceedings in accordance with specified in paragraph 19 of the Rules of Procedure and paid the required fees.

On December 11, 2006, the Center appointed Mr. Michael Bernasconi as Expert in this case. The Expert finds that it was properly constituted. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties.

 

4. Factual Background

Claimant is a car manufacturing company based in Romania. Claimant is currently held by the French Group Renault. It sells cars in a vast number of countries, including among others Switzerland.

Claimant has obtained worldwide registration for the trademark “DACIA”; it also owns and operates the website “www.daciagroup.com”.

The disputed Domain Name was registered by the Respondent on March 21, 2005.

The Respondent is an individual residing in Switzerland; he is said to be professionally active in the second hand car sale market.

 

5. Parties’ Contentions

A. Claimant

Claimant contends that the registration of the disputed Domain Name infringes Claimant’s right in a distinctive sign under the laws of Switzerland or Liechtenstein. Further, Claimant argues that Claimant itself and its products are well known in many countries, including Switzerland. Finally, the Claimant underlines that the disputed Domain name currently points to an inactive website.

Claimant therefore requests that the disputed Domain Name be transferred to the Claimant.

B. Respondent

The Respondent did not file a formal answer to the Claimant’s contentions. In rather informal statements to the Center the Respondent argued basically with the “first come, first served” principle. The Respondent stated that the disputed domain name is used for a cultural and religious site, but no evidence relating to such use has been submitted. The Respondent also confirmed his willingness to transfer the disputed Domain Name, if paid a considerable amount of money. Alternatively, if the Claimant would not be willing to pay the amount requested, the Respondent stated that the domain name might be transferred to the manager of Michael Schumacher.

 

6. Discussion and Findings

According to paragraph 24 of the Rules of Procedure, the Expert shall decide on the request on the basis of the parties’ contentions and pleadings, taking in consideration the documents submitted in compliance with the Rules of Procedure.

In accordance with paragraph 24 of the Rules of procedure, an expert shall support the request of a claimant if the registration (or the use) of the domain name at stake constitutes a clear infringement of a right in a distinctive sign which the claimant owns under the law of Switzerland or Liechtenstein.

In particular, based on paragraph 24 lit. d, a clear infringement of an intellectual property right exists when:

i. both the existence and the infringement of the claimed Right in a distinctive sign clearly result from the wording of the law or from an acknowledged interpretation of the law and from the presented facts and are proven by the evidence submitted; and

ii. the respondent has not conclusively pleaded and proven any relevant grounds for defence; and

iii. the infringement of the right justifies the transfer or deletion of the domain name, depending on the remedy requested in the request.

A. Language of the Proceedings

Paragraph 7(a) of the Rules of Procedure provides that the proceedings shall be conducted in the language of the registration agreement without prejudice to the authority of the Dispute resolution service provider, a Conciliator or an Expert, exceptionally to determine otherwise on application by one or both parties or at their own discretion in view of the circumstances of the Dispute resolution proceedings.

In his communications of November 9 and 22, 2006, the Respondent seems to pretend not to understand the English language very well. However, the communications between the parties have been conducted in the English language and the registration agreement is available in English, French, German and Italian. Furthermore, the Complainant has argued that it would be an undue burden for it to pursue these proceedings in German, thereby referring to Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679 and to Editora Globo SA v. 3V Networks, WIPO Case No. D2006-0367.

The Expert notes that as mentioned, the correspondence between the parties was in the English language. Furthermore the statements filed by the Respondent with the Center are in both the German and the English language, even though the Center explicitly allowed the Respondent to submit a Response in either the English or the German language.

In view of the foregoing, the Expert deems it appropriate to maintain English as the language of these proceedings and this decision.

B. The Claimant has a right in a distinctive sign

The Claimant is the owner of numerous trademarks in Romania, Switzerland and throughout the world, covering and using the name “Dacia”. Among such trademarks for instance the “Dacia” International Trademark No. 427 707 filed on 20 December 1976 and thereafter renewed.

Besides such trademark protection, the word “Dacia” is also part of the trade name of the Claimant.

The Expert finds that the Claimant has thus met its burden of proof as set forth by paragraph 24(d)(i) of the Rules of Procedure.

C. The registration or use of the Domain Name at issue constitutes a clear infringement of the Claimant’s right

The disputed Domain Name is <dacia.ch>. The trade name of the Claimant is “Automobile Dacia S.A.” and contains the word “dacia” with an additional not distinctive “Automobile” suffix. Furthermore, the Claimant is holder of numerous trademarks for amongst others DACIA and AUTO DACIA.

Thus, the disputed Domain Name is identical to Claimant’s trade name and trademarks. The evidence produced by the Claimant further shows that the Claimant was and is internationally known under its trade name and and its trademarks.

The Respondent failed to prove that an active web site was operated under the disputed Domain Name. Respondent was neither able to prove any legitimate use of the disputed Domain Name nor did he provide any reasonable explanation why he registered the Domain Name. Respondent’s claim that the disputed Domain Name was intended for use by a Swiss cultural association has not be proven nor does it seem likely on the basis of the information and documents disclosed to the Expert.

Finally, the Respondent did not dispute the Claimant’s allegations according to which the Respondent is active in the second hand car sale market and that it was for this purpose that the Respondent has registered the Domain Name. By doing so the Respondent was creating a likelihood of confusion, even if the disputed Domain Name is currently inactive.

Against this background, the Expert holds the view that the Respondent, by registering the disputed Domain Name, was trying to take advantage of the Claimant’s widely known trade name and trademarks.

In the Expert’s view the Respondent’s infringement of the Claimant’s tradename and trademark and the Claimant’s legitimate interest in having its trade name and trademarks not be confused with those of a third party without any justification (protection under Unfair Trade Law) clearly justifies the transfer of the disputed Domain Name to the Claimant.

The Expert finds that the Respondent violates Claimant’s right in a distinctive sign. Therefore the Claimant has met its burden of proof under paragraph 24(d)(ii) and (iii) of the Rules of Procedure).

 

7. Expert Decision

For the above reasons, in accordance with Paragraphs 24 of the Rules of Procedure, the Expert orders that the domain name <dacia.ch> be transferred to the Claimant.

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Michael Bernasconi
Expert

Dated: December 25, 2006