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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alphyra Romania S.A. v. Redpoint Software Impex S.R.L.

Case No. DRO2008-0001

1. The Parties

The Complainant is Alphyra Romania S.A., Bucharest, Romania, represented by AlphaGrup, Romania.

The Respondent is Redpoint Software Impex S.R.L., Bucharest, Romania.

2. The Domain Name and Registrar

The disputed domain name <payzone.ro> is registered with RNC.ro.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2008. On January 18, 2008, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the domain name at issue. On January 24, 2008, RNC.ro transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 February 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2008.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on March 5, 2008. 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.

The Panel finds that the language of the present proceeding should be English, although the Registrar of the disputed domain name has informed the Center that the language of the relevant registration agreement was Romanian.

The Panel concludes that, according to Rules, paragraph 11(b), the language of the proceedings shall be English for the following reasons:

- the Complainant has filed the complaint initially in English and at the Center’s request has provided a translation in Romanian of the initial complaint;

- there are no provisions on the Registrar’s website for a domain name applicant to choose between English or Romanian as the controlling language of the registration agreement at this moment, and in the past as this Panel found in other previous cases: Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L., WIPO Case No. DRO2006-0001; DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA, WIPO Case No. DRO2006-0003; Companie Gйnйrale des Йtablissements Michelin - Michelin & Cie. v. IPSOS New Media Research SRL, WIPO Case No. DRO2006-0004; Dell Inc. v. C.I.T. GRUP SRL, WIPO Case No. DRO2007-0007. The registration agreement language was, at least until 2006, simultaneously English and Romanian, so the domain name applicant has accepted the use of both languages (the disputed domain name was registered in 2003).

4. Factual Background

The Complainant is the owner of the combined trademark PAYZONE registered with OSIM starting with April 27, 2005 for Nice classes 9, 16, 35, 36, 38 and 42.

The disputed domain name is <payzone.ro> registered with RNC on July 10, 2003. The Respondent is a Romanian company for which the on-line listed date by the National Office of the Trade Registers provides for an apparent expiry of activities and non-submission of the financial situation for the year 2005. The disputed domain name is not active.

5. Parties’ Contentions

A. Complainant

The Complainant contends that

- the disputed domain name is identical with the PAYZONE trademark used by the Complainant;

- there is no use of the PAYZONE trademark by the Respondent, prior or after the trademark has been registered by the Complainant;

- there are circumstances indicating that the domain name has been registered primarily for the purpose of selling or otherwise transferring the domain name registration to the owner of the trademark or service mark (normally the Complainant) or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name;

- the attempts of the Complainant to contact the Respondent have failed;

- the data used in the registration of the domain name are not valid any more as the Respondents’ registration for his primary business place has expired and the Respondent also did not fill in the annual fiscal declaration for the year 2005, as shown in Annex 4;

- the e-mail address that has been used to register the domain name is not valid.

B. Respondent

Even though given notice of these proceedings by all reasonably available means in line with paragraph 2 of the Rules, the Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Even though more relevant under the second and third element of the UDRP, the Panel notes that the registration of the disputed domain name predates the Complainant’s trademark registration with almost two years.

In relation to the first element of the UDRP, the current view on the matter of registration date of the disputed domain name in relationship with the trademark registration is expressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, namely:

“1.4 Does the complainant have UDRP-relevant trademark rights in a mark that was registered, or in which the complainant acquired unregistered rights, after the disputed domain name was registered?”

Consensus view: Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However it can be difficult to prove that the domain name was registered in bad faith, as it is difficult to show that the domain name was registered with a future trademark in mind.

Relevant decisions:

Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827, Denied;

AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527, Transfer;

Iogen Corporation v. Iogen, WIPO Case No. D2003-0544, Denied;

Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598, among others, Transfer.

The Complainant’s registered trademark is a combined mark comprising figurative and verbal elements. The “payzone” word is the dominant element in the trademark so as to make it distinctive.

Accordingly, the Panel finds that the disputed domain name is identical with a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Administrative Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the domain name registrant’s rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii) of the Policy:

“(i) before any notice to the domain name registrant of the dispute, the registrant’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the domain name registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or

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

In this case the Respondent has not put forward any circumstances indicating rights or legitimate interest of the Respondent in connection to the disputed domain name. Moreover the disputed domain name appears to be inactive. However this may be, considering the Panel’s finding under the third element of the UDRP, the Panel need not make a finding under this heading.

C. Registered and Used in Bad Faith

According to paragraph 4(a) of Policy, the UDRP administrative procedure is only available for disputes concerning an alleged abusive registration of a domain name; that is, which meet among other criteria the bad faith registration and use of the disputed domain name.

As mentioned above the disputed domain name has been registered two years before the Complainant registered its trademark.

As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, in such cases “it can be difficult to prove that the domain name was registered in bad faith, as it is difficult to show that the domain name was registered with a future trademark in mind”.

The Complainant asserts that there are circumstances indicating that the domain name has been registered primarily for the purpose of selling or otherwise transferring the domain name registration to the owner of the trademark or service mark (the Complainant) or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name but it does not expressly explain or demonstrate these circumstances.

As a further element of bad faith the Complainant alleges that the attempts of the Complainant in order to contact the Respondent have failed and the data used in the registration of the domain name are not valid any more and that the e-mail address that has been used to register the domain name is not valid.

Even though such elements here may amount to an interpretation of an abandonment of the company, such provision of false contact details may as well be considered a negligent conduct. In any event, based on the record before this Panel, considering that the disputed domain name was clearly registered prior to the Complainant obtained trademark rights, such false contact details do not assist the Complainant here.

In the circumstances of this case and on the record the Panel has before it, the Panel cannot find any indication of bad faith in registration of the disputed domain name, and finds the Complainant’s assertion of bad faith registration primarily for the purpose of selling or otherwise transferring the domain name registration to the owner of the trademark or service mark (the Complainant) or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name as unestablished.

The Panel finds that the third element of the UDRP has not been established.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Beatrice Onica Jarka
Sole Panelist

Dated: March 19, 2008