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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

SC Tip Top Food Industry SRL v. S.C. WEB4COMM SRL/ web4COMM S.R.L. Romania

Case No. DRO2008-0013

 

1. The Parties

The Complainant is S.C. Tip Top Food Industry S.R.L., Bucharest, of Romania.

The Respondent is S.C. WEB4COMM S.R.L./ web4COMM S.R.L. ROMANIA, Bucharest, of Romania.

 

2. The Domain Names and Registrar

The disputed domain name <tiptop.ro> is registered with RNC.ro (the "Registrar").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 9, 2008. On July 11, 2008, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the disputed domain name. On July 11, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details. In light of the publicly available WhoIs information on July 23, 2008, the Center sought further clarification from the Registrar regarding Registrant's identity. The Registrar confirmed on the same day that web4COMM S.R.L. ROMANIA is the Registrant, and Catalian Alexandru Tibulca is the Registrant's contact person. 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 August 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2008. The Respondent submitted a communication via e-mail and hard copy on July 25, 2008 before the commencement of the administrative proceedings. Subsequent to commencement, the Respondent submitted an informal Response, which did not in certain respects comply with the Rules. Accordingly, the Center acknowledged receipt of the Respondent's Response

The Center appointed Marilena Oprea (the "Panel") as the sole panelist in this matter on September 17, 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.

Language of the proceedings

As the Complaint had been submitted in English, on July 23, 2008 the Center forwarded a notice to the Complainant stating that the Complainant should (a) provide evidence of an agreement between the parties that proceedings be English; (b) translate the Complaint into Romanian; or (c) submit a request that English be the language of the proceedings. The Complainant provided a Romanian translation of the Complaint on July 23, 2008, and on July 24, 2008 requested the language of proceedings to be English, without providing any arguments.

The Respondent filed its response in Romanian, quoting various legal texts, including the Romanian Constitution which stipulates that Romanian is the official language in Romania, and stated that the language of legal proceedings should be Romanian.

The Registrar of the disputed domain name has informed the Center that the language of the relevant registration agreement is Romanian.

The Panel determines according to Rules, paragraph 11(a), that the language of these proceedings be English for the following reasons:

- the Complainant has translated the Complaint into Romanian. Accordingly, the Panel does not believe that the Respondent could have had any difficulty in understanding the substantive claims made against it in these proceedings;

- the Respondent has been involved as a respondent in several administrative proceedings before WIPO panels, all conducted in English (see e.g., OSRAM GmbH v. WEB4COMMSRL Romania, WIPO Case No. DRO2005-0004);

- there were 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 the moment of registration of the disputed domain name; accordingly by registering the domain name, such applicant accepts the use of both languages in the relationship with the domain name (see for example, Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L., WIPO Case No. DRO2006-0001).

 

4. Factual Background

The Complainant is a Romanian company registered in 1993 under the name S.C. Tip Top Food Industry S.R.L. Complainant's activity is related to the manufacture and sale of confectionary and pastry products, having its own chain of confectionery shops. The Complainant has been active in the field since its incorporation, operating under the name "TIP TOP". Currently, it has 19 shops in Bucharest and other cities (Pitesti, Targoviste, Ploiesti), reaching a number of more than 500 employees.

Complainant has a national registration for the word mark TIP TOP number 52556 of January 22, 2003.

In accordance with Paragraph 3(b)(xiii) of the Rules, the Complainant has submitted, with respect to any challenges that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of the Complaint, to the jurisdiction of the courts of the location of the principal office of the concerned Registrar in Bucharest, Romania.

The disputed domain name <tiptop.ro> was registered on April 20, 2001.

The Respondent is a Romanian company, S.C. WEB4COMM S.R.L./ web4COMM S.R.L. ROMANIA which is the current registrant of the disputed domain name.

In addition, the Panel has been able to find out that the Respondent has seemingly been previously involved as Respondent in six proceedings before WIPO, namely: (i) Praktiker AG v. web4COMM SRL Romania, WIPO Case No. DRO2003-0001 (disputed domain name <prakitker.ro>); (ii) Auchan v. Web4comm SRL Romania, WIPO Case No. DRO2005-0001 (disputed domain name < auchan.ro>); (iii) Beiersdorf AG v. Web4comm SRL Romania, WIPO Case No. DRO2005-0002 (disputed domain names <beiersdorf.ro> and <nivea.ro); (iv) OSRAM GmbH, v. web4COMM SRL Romania, WIPO Case No. DRO2005-0004 (disputed domain name <osram.ro>); (v) Accor v. Catalin Alexandru Tibulca/Web4Comm SRL Romania, WIPO Case No. DRO2005-0003 (disputed domain name <novotel.ro>); and (vi) DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA, WIPO Case No. DRO2006-0003 (disputed domain name <chrysler.ro>). In all these cases, the appointed Panels ordered the transfer of the disputed domain names from Web4COMM SRL Romania to the corresponding complainants.

 

5. Parties' Contentions

A. Complainant

The Complainant's commercial name is S.C. Tip Top Food Industry S.R.L, and, as the Complainant asserts, this name has been used in commerce as TIP TOP since 1993. The Complainant is the holder of the TIP TOP word mark no. 52556/2003.

The Complainant alleges the well known status of its mark, however, no supporting document was filed (e.g. a court decision attesting this status). Also, the Complainant further states, without providing evidence, that "the domain name <tiptop.ro> is identical to the main element of the domain names registered by S.C. TIP TOP FOOD INDUSTRY S.R.L."

The Complainant contends that the domain name <tiptop.ro> is identical to the commercial name and trademarks TIP TOP. In Complainant's opinion, the identity above mentioned will mislead the relevant public, thus creating an association between the disputed domain name and the Complainant.

Also, the Complainant states that "tiptop" is an "acronym" from the company name TIP TOP INDUSTRY, therefore no other company will use this name in connection with its own activity otherwise than with the intention to create a connection with the Complainant.

Further, Complainant states that the Respondent has no right or legitimate interest in respect of the domain name, as it was not authorized or otherwise permitted to register and use the domain name, nor a trademark.

As Complainant's mark TIP TOP had become well known in the confectionery-pastry field, the Complainant considers that Respondent registered the disputed domain name in order to obtain financial benefits from the Complainant or its competitors. Moreover, the Complainants assume that the mere potential impression of the affiliation between itself and the disputed domain name would have possible lead to benefits for the Respondent.

The Complainant has notified the Respondent of its rights on June 27, 2008. No further documents or comments in relation to the Respondent's reaction or otherwise on the record. .

B. Respondent

Respondent has not contested Complainant's allegations, but argues in Romanian that the Center is not a competent forum to hear this dispute due mainly to the following reasons:

(i) the Complainant, the Respondent and the Registrar are all Romanian entities;

(ii) there is no arbitration clause concluded between himself and the Complainant;

(iii) the requirements of the arbitration procedure provided by the Romanian Civil Procedure Code are not met;

(iv) starting with January 1^st, 2007 Romania is an European Union member state (whereas Switzerland is not), and Romanian is an official language used in EU procedures.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer of the disputed domain name:

(A) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(B) the Respondent does not hold rights or legitimate interests in respect of the domain name; and

(C) the domain name has been registered and is being used by the Respondent in bad faith.

Consequently, the Panel shall further analyze the eventual concurrence of the above-mentioned circumstances in the present case. Nonetheless, before entering in the said analysis, the Panel deems it necessary to examine the issue raised by the Respondent in connection with the applicability of the Policy to this dispute.

Applicability of the Policy, Jurisdiction

The relevant Registrar of the disputed domain name is RNC.ro. The article 6 of the RNC.ro Registration Agreement and article 32 of the RNC.ro Rules for Registration incorporate, and thereby rend applicable to this dispute, the Uniform Domain Name Dispute Resolution Policy endorsed and approved by ICANN. Furthermore, as per article 5 of the RNC.ro Registration Agreement, the Registrar may revise and change the terms and conditions of the Registration Agreement, any such revision or change being binding and effective immediately.

As the above mentioned must be accepted by the registrant (otherwise the domain name registration procedure cannot be completed), it is clear that the Respondent has accepted the Registration Agreement (and implicitly the Domain Name Dispute Resolution Policy) of the RNC.ro. registrar, and its further revised and/or changed versions.

Further on, it is at the Complainant's discretion to select the administrative dispute resolution provider from among those approved by ICANN (paragraph 4(d) of the Policy). The Center is one of these providers.

In addition, the Respondent is obviously familiar with the Policy and the proceedings (see cases listed under 4. Factual Background chapter ) , and the Panel therefore concludes as other panels in similar cases in which the Respondent was involved (see for example, Beiersdorf AG v. Web4comm SRL Romania, WIPO Case No. DRO2005-0002) that the jurisdiction objection is merely a strategy of the Respondent quite possibly in an attempt to confuse the Panel and avoid filing a substantial response to the allegations made by the Complainant.

As per the above mentioned, the Panel finds that the dispute is properly within the scope of the Policy and that the Panel has jurisdiction to decide the present dispute.

A. Identical or Confusingly Similar

There are two requirements that a Complainant must establish under this paragraph, namely: that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the mark.

Complainant grounds its Complaint on a "whole list of registered trademarks as previous rights", however it provides only one copy of a Romanian trademark certificate for the word mark TIP TOP number 52556 registered on January 22, 2003 (without the list of goods and services). Having conducted a search on the publicly available register¹, the Panel contends that (i) the TIP TOP trademark no. 52556 is registered for services in classes 39, 43; (ii) the trademarks nos. 52596 and 08597 (mentioned in the cease and desist letter addressed to the Respondent prior to the present administrative proceedings) correspond in fact to other trademarks; and (iii) the Complainant holds another word mark TIP TOP no. 078626 of July 28, 2006 for goods in class 30.

Furthermore, Complainant invokes further rights such "the special protection of its commercial name according to the provisions of art. 8 from the Paris Convention" and potential domain names held by the Complainant. The Panel considers unnecessary to analyze these assertions made by the Complainant, including whether these are or are not relevant pursuant to the provisions of the Policy, paragraph 4(a)(i).

The disputed domain name was registered on April 20, 2001.

The Panel agrees that <tiptop.ro> domain name, after disregarding the ".ro" country-code Top-Level Domain, is in fact a combination of the words "tip" and "top". Accordingly, it is virtually identical to the Complainant's TIP TOP trademark.

Even though more strictly relevant under the third element of the UDRP, the Panel finds it convenient to note here that the registration of the disputed domain name predates the Complainant's trademark registration by almost two years.

In relation to the first element of the Policy, the current consensus view² on the matter of registration of a domain name before a complainant acquires trademark rights in a name is that this of itself does not prevent a finding of identity or confusing similarity. The Policy makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However it can sometimes make it difficult for a Complainant to prove that the domain name was registered in bad faith, as it may be difficult for a complainant to show that the domain name was registered with a future trademark in mind." Accordingly, this will be further analyzed by the panel below under paragraph 6.C..

As per the above mentioned, the Panel finds that the first element of the Policy is met, and the disputed domain name is identical with the trademark in which the Complainant has rights, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

As to the second element of the Policy, the Complainant asserts, inter alia, that there is no relationship between the Complainant and the Respondent that would give rise to any authorization or permission by which the Respondent could register or use the disputed domain name. The Respondent did not submit a substantive response on this issue. So, it may further be assumed that there is no legal and/or business relationship between the Respondent and the Complainant which could give Respondent any right in the denomination TIP TOP.

The disputed domain name was registered on April 20, 2001, and, since its registration, it has not been used in any way apart from having an announcement that the web site is under construction combined with a banner from a company named Netfirms which apparently provides the Respondent with free hosting services, some announcements and a ranking counter (to be analyzed below). This use is rather similar with all the previous cases before the Center in which the Respondent was involved.

As prior WIPO panels have decided (see e.g., Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270), once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of proof on this element shifts to the Respondent to rebut the showing.

Moreover, prior WIPO panels (see for example, Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L., WIPO Case No. DRO2006-0001), have accepted that the silence of the Respondent might support a finding, based on other relevant circumstances, that he has no rights or legitimate interests in respect of the disputed domain name. In this dispute, the Respondent did not file any substantial Response.

In any case, the Panel considers it necessary to analyze whether any of the example defenses provided in the paragraph 4(c) of the Policy can be applicable in the present case:

(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;

As mentioned above, the disputed domain name has seemingly been under construction since its registration in 2001. Also, no evidence of preparation to use the disputed domain name was provided.

Accordingly, the Panel considers implausible that the Respondent holds legitimate rights or aims at developing fair use activities by means of the disputed domain name.

(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;

The Respondent is not called ‘Tip Top" and does not appear to trade under that name.

(ii) 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.

As above mentioned, the domain name has not been actively used.

For these reasons, the Panel finds that the second element of the Policy is met, and the Respondent has no rights or legitimate interests in respect of the domain name, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

As mentioned under the first element above, the Panel notes that the registration of the disputed domain name predates the Complainant's trademark registration by almost two years.

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". Moreover, the consensus WIPO Overview of WIPO Panel Views on Selected UDRP Questions stipulates that "normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant's non-existent right" however, "in certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found".

In the present dispute, Complainant's trade name TIP TOP was used extensively in Bucharest (where the Respondent is located, as well) long before the trademark was filed, and thus before the disputed domain name was registered. Therefore, the Panel finds it likely that the Respondent was aware of Complainant's trade name, and possible future trademark registration.

As per Complainant assertions, the domain name has been registered primarily for the purpose of selling or otherwise transferring the same to the owner of the trademark or service mark (the Complainant) or to a competitor of the Complainant, or to produce confusion for the public. However, it does not expressly explain or demonstrate these circumstances, nor provide supporting documents.

In any case, having in mind the circumstances of this case and the Policy, the Panel deems it necessary to conduct further analysis. The Policy provides few circumstances which, if found to be present by the Panel, are deemed to provide evidence of bad faith in registering and using the domain name; moreover, UDRP jurisprudence is abundant with regard to the third element of the UDRP. Further, the Panel will analyze certain circumstances, as follows:

(i) paragraph 4(b)(ii) of the Policy stipulates the following situation as evidence of bad faith "you [Respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct";

According to evidence presented in the previous case (Praktiker AG v. web4COMM SRL Romania, WIPO Case No. DRO2003-0001), same "Respondent has registered a number of other domain names including fairly well-known marks, such as <thebodyshop.ro>, <the-body-shop.ro>, <chrysler.ro>, <rexona.ro>, <wrigley.ro> and others." In fact the list submitted by Complainant shows that Respondent has registered more than 100 domain names of which a great number contains internationally known trademarks. Respondent has not commented on why such a number of registrations of domain names incorporating fairly well known trademarks have been made, despite the fact that this is an important element in determining whether bad faith exists in respect of the particular domain name at issue in this case.

In any case, it is important to mention the fact that, as found in the previous cases, specifically OSRAM GmbH v. WEB4COMMSRL Romania, WIPO Case No. DRO2005-0004 , Respondent owned or still owns numerous domain names corresponding to third-parties' trademarks without being entitled to do so. Hence, the Respondent has behaved in accordance to a "pattern of conduct" which may prove as registration and use in bad faith in accordance with paragraph 4 (b)(ii) of the Policy."

Accordingly, the Panel agrees with the previous panels, the Respondent has behaved in accordance with a "pattern of conduct" which may support a finding of registration and use of the domain name in bad faith.

(ii) the trademark TIP TOP is rather fanciful, as the combination thereof has no meaning in the Romanian language. Therefore, it is difficult to conceive, having in mind all the circumstances of the present case, that the Respondent invented the combination of words TIP and TOP as such;

Further more, the requirement of the Policy of a domain name "being used in bad faith" is not limited to positive actions. Accordingly, the following circumstances established by the UDRP jurisprudence have in appropriate cases been considered as use in bad faith:

(iii) non use of the disputed domain name;

The Panel notes that domain name at issue was registered on April 20, 2001 and was seemingly not used since then. The words "under construction", the banner from Netfirms, Google announcements and the ranking counter cannot be considered use of the domain name. In many UDRP decisions it was ascertained that a passive holding of a domain name for a long period of time may be sufficient to constitute bad faith, taking into consideration the overall context of the Respondent's behavior (see for example, Praktiker AG v. web4COMM SRL Romania , WIPO Case No. DRO2003-0001; Auchan v. Web4COMM SRL Romania, WIPO Case No. DRO2005-0001; Beiersdorf AG v. Web4COMM SRL Romania, WIPO Case No. DRO2005-0002; or Accor v. Catalin Alexandru Tibulca/Web4comm SRL Romania, WIPO Case No. DRO2005-0003).

Moreover, the fact that the Respondent has posted a counter at the web site which records traffic to the site can be considered an indication that the web site may be for sale and an indicator of its value (see for example, Home Interiors & Gifts, Inc. v. Home Interiors, WIPO Case No. D2000-0010).

Again, the Panel finds similarities with the previous cases, and cannot find another reason than bad faith for the pasive holding of this domain name and many others reflecting third parties trademarks.

(iv) the Respondent has not contested any of the allegations made by the Complainant, and did not provide any evidence whatsoever of any legitimate commercial, non commercial or fair use of the disputed domain name.

There are previous cases (see for example, Banque Transatlantique S. A. v. DOTSCOPE, WIPO Case No. D2004-1100), where the Panel found that "[a]dditionally, it is important to outline the fact that the lack of action by the Respondent vis-à -vis the cease-and-desist letter sent to it by the Complainant and during this proceeding shows the Respondent's clear absence of interest in proving the existence of a fair or legitimate interest on the Domain Name. Many decisions adopted under the Policy (...) have considered that by defaulting and failing to respond, the Respondent fails to offer the Panel evidence of any of the circumstances foreseen by Paragraph 4(c) of the Policy or any other evidence of its rights or legitimate interests on the Domain Name."

Since the Respondent has not denied these facts in the Response, and failed to provide any evidence of nor alleged any actual or contemplated good faith use, it seems clear for the Panel that the Respondent registered and used the domain name in bad faith. The fact of having been condemned six times under the Policy for identical reasons reinforces this approach.

Also, it is clear to the Panel that the Respondent is familiar with trademarks' field, as he registered a considerable number of domain names reflecting third parties' trademarks. Therefore, the only conclusion that can be drawn is that the Respondent is engaged in the business of acquisition of domain names, considering third parties' trademarks and with the presumed purpose of selling them, or otherwise obtaining material advantages (see for example, OSRAM GmbH, v. web4COMM SRL Romania, WIPO Case No. DRO2005-0004, where the Respondent "informally replied it by offering the transfer of the domain name jointly with the provision of several technical services. In consideration for the said transfer and services, the Respondent requested € 5,000 from the Complainant".)

Therefore, the Panel concludes that the Respondent did register the disputed domain name knowing about Complainant, its business, trade name and trademarks.

For all these reasons, the Panel finds that the third element of the UDRP is met, accordingly the disputed domain name was registered and was used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <tiptop.ro> be transferred to the Complainant.

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Marilena Oprea
Sole Panelist

Dated: September 29, 2008

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¹ As to the legitimacy of the Panel doing so, see paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions and cases cited therein.

² See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 1.4 and the cases cited therein.