WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ROZA VETROV d.o.o. v. Miha Kos / Blackbird Group Ltd.
Case No. D2019-0472
1. The Parties
The Complainant is Roza Vetrov d.o.o., Slovenia, represented by Ceferin and partners Ltd, Slovenia.
The Respondent is Miha Kos, Slovenia / Blackbird Group Ltd., Germany.
2. The Domain Name and Registrar
The disputed domain name <gremojadrat.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2019. On February 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 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 Complainant filed a first amended Complaint on March 5, 2019. The Center sent a Complaint Deficiency Notification to the Complainant on March 6, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response to this notification by the Center, the Complainant filed a second amended Complaint on March 7, 2019.
The Center verified that the Complaint together with the amended Complaints 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 March 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2019. The Response was filed with the Center on March 20, 2019. The Complainant sent an email communication to the Center on March 25, 2019.
The Center appointed Assen Alexiev as the sole panelist in this matter on May 14, 2019. 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 Complainant has filed a supplemental filing in this proceeding. Under paragraph 12 of the Rules, the Panel may request, in its sole discretion, further statements or documents from either of the Parties. The supplemental filing deals with arguments of the Respondent raised in its Response to which the Complainant should be allowed to respond, and its acceptance would not delay the proceeding. Therefore, the Panel has decided to admit and take into account the supplemental filing of the Complainant.
4. Factual Background
The Complainant provides rental services for sailing boats, catamarans and motor boats in Croatia, the Adriatic Sea, Greece, and Italy.
The Complainant is the owner of the trademark GREMO JADRAT with registration No. 201771308, applied for on November 13, 2017 and registered on June 1, 2018 in Slovenia for goods and services in International Classes 12 and 39 (the “GREMO JADRAT trademark”).
The Complainant’s official website is located at the domain name <gremojadrat.si>, registered on March 7, 2012.
The disputed domain name was registered on April 8, 2016. It resolves to a website that offers boats for rent in Croatia.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name is identical to the GREMO JADRAT trademark and to the Complainant’s <gremojadrat.si> domain name, because they are all composed of the words “gremo jadrat” translated in English as “let’s sail”, and the only difference between them is the generic Top-Level Domain (“gTLD”) “.com” in the disputed domain name.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant points out that it registered the domain name <gremojadrat.si> four years before the Respondent registered the disputed domain name. The domain name <gremojadrat.si> and the GREMO JADRAT trademark were registered by the Complainant for the purposes of its activity, and the Complainant contends having exclusive rights in them. According to the Complainant, the Parties are two completely autonomous legal entities and there is no legal relationship between them that could entitle the Respondent to use a domain name that is identical to the GREMO JADRAT trademark or to the Complainant’s domain name <gremojadrat.si>. The Complainant also points out that the Respondent’s use of the disputed domain name is of a commercial nature and for gaining profit, because it uses for a website where it advertises the same services that are offered by the Complainant.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the Respondent registered the disputed domain name to hinder the business performance of the Complainant who is its competitor, and uses it to increase profits by attracting Internet users to its website by misleading them that it is related to the Complainant. The Complainant points out that the Respondent’s website is in Slovenian – the same language as the Complainant’s website, and both Parties target consumers from Slovenia and offer them the renting of boats and other vessels in Croatia. According to the Complainant, the Respondent knew or should have known that the domain name <gremojadrat.si> was registered and used by the Complainant, given that both Parties carry out the same or very similar activities and are both targeting consumers from Slovenia.
The Complainant points out that the Respondent has also engaged in a similar conduct in respect of another of its competitors. The company Euronautic d.o.o. from Slovenia has registered and uses the domain name <euronautic.eu> to offer boat renting services in Croatia and in the Mediterranean region, while the Respondent has registered and uses the domain name <euronautic.net> to offer the same services in Croatia. According to the Complainant, the Respondent’s conduct shows that it attempts to take over the customers of the Complainant and of Euronautic d.o.o. by misleading them through the use of domain names that are identical to those of the Complainant and of Euronautic d.o.o.
In its supplementary submission the Complainant states that it has been using the GREMO JADRAT trademark since 2012, when it also registered the domain name <gremojadrat.si>, and that notwithstanding the date of registration of the GREMO JADRAT trademark, the Complainant has a stronger right than the Respondent. The Complainant refers to Article 116 of the Slovenian Industrial Property Act, according to which a person may, by lawsuit, request the competent court to establish that the sign used in the trade for the purposes of marking its goods or services is identical or confusingly similar to the sign that is used by another to mark the same or similar goods or services and that the claimant’s sign was commonly known before the other person started using its sign. The Complainant also refers in this regard to Article 8(4) of Regulation (EU) 2017/1001.
B. Respondent
The Respondent contends that it is not infringing the trademark rights of the Complainant. It points out that the disputed domain name was registered on April 8, 2016, which is two years before the registration of the GREMO JADRAT trademark by the Complainant.
The Respondent also maintains that the disputed domain name is different from the Complainant’s GREMO JADRAT trademark and is not misleading for consumers. According to the Respondent, the disputed domain name is a generic term, which translates from the Slovenian language as “let’s sail” or “let’s go sailing”.
The Respondent contends that the disputed domain name is not used in bad faith. It points out that it is in the yacht charter business, and refers to its website at “www.blackbirdgroupltd.com”. The Respondent denies that it has registered the disputed domain name for the purpose of selling, renting or transferring it, and maintains that it is using the disputed domain name for offering its yacht charter services and not to misleadingly divert consumers.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the GREMO JADRAT trademark, which was registered in 2018. The Respondent has pointed out that this trademark was registered after the registration of the disputed domain name. As summarized in section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), while the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed. The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element. The Panel is therefore satisfied that the Complainant has standing to file the present case, and will proceed to reach a conclusion on the issue of whether the disputed domain name is identical or confusingly similar to the GREMO JADRAT trademark of the Complainant.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the gTLD section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.
The relevant part of each of the disputed domain name is therefore “gremojadrat”, which is composed of the words “gremo” and “jadrat”. This combination of words is identical to the word element of the GREMO JADRAT trademark, and the Respondent has not provided any compelling arguments for its bare assertion that the disputed domain name is not identical or similar to the GREMO JADRAT trademark; indeed it is hard to imagine that the Respondent could do so as a matter of logic.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the GREMO JADRAT trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Since the Complainant has failed to establish that the Respondent has registered the disputed domain name in bad faith, the Panel is not required to reach a conclusion on the issue of whether the Complainant has established that the Respondent does not have rights and legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In the present case, the GREMO JADRAT trademark was applied for and registered after the Respondent registered the disputed domain name. The Complainant contends that in 2012 it had registered the domain name <gremojadrat.si> and it had started using the yet unregistered GREMO JADRAT trademark. However, the Complainant has not submitted any evidence showing that the domain name <gremojadrat.si> or the sign GREMO JADRAT had become a distinctive identifier which consumers associated with the Complainant’s services by April 2016, when the Respondent registered the disputed domain name. Both Parties agree that the words “gremo jadrat” mean “let’s sail” in English, and in the lack of any supporting evidence, the Panel is not able to reach a conclusion that Internet users are more likely than not to exclusively associate this slogan with the Complainant. The Complainant has not even shown that it had started to use its domain name <gremojadrat.si> or the GREMO JADRAT trademark prior to the registration of the disputed domain name by the Respondent. The Complainant refers to Article 116 of the Slovenian Industrial Property Act, but this legal provision requires a ruling of a competent court which the Complainant does not allege to have been requested or issued. In view of the above, there is no basis for a finding that the Complainant had unregistered trademark rights in the signs <gremojadrat.si> or GREMO JADRAT when the Respondent registered the disputed domain name. See section 1.3 of the WIPO Overview 3.0.
As summarized in sections 1.1.3 and 3.8.2 of the WIPO Overview 3.0, where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith. As an exception, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith. Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application. None of these circumstances has been alleged to exist or established by the Complainant in the present proceeding. The Complainant refers to the conduct of the Respondent in respect of the company Euronautic d.o.o., but this entity however is not a party to this proceeding so its position on this issue is unknown and there is no evidence of whether any relationship between the Respondent and this third party exists, so the Panel is not in a position to conclude whether this allegation of the Complainant has any relevance to the present proceeding. The Panel also notes that by clicking on the “English” button on the Complainant’s website, users are redirected to <yachtcharteradria.com> such that the Parties seem to both be engaged in use of domain names to redirect to various of their websites. While the fact that the Parties are competitors does raise a question as to whether the Respondent could even claim to not have been aware of the Complainant, given the highly descriptive nature of the Complainant’s mark and the use by the Respondent for such purpose, on balance the Panel finds this case not to be a clear matter of cybersquatting but rather of a trademark dispute.
In view of the above, and while it is certainly possible, the Panel is not satisfied based on the evidence provided by the Complainant that it is more likely than not that the Respondent actually did target the Complainant when it registered the disputed domain name. Therefore, the Panel finds that the Complainant has not established that the Respondent has registered the disputed domain name in bad faith, and for this reason the Complaint must fail.
7. Decision
For the foregoing reasons, the Complaint is denied.
Assen Alexiev
Sole Panelist
Date: May 28, 2019
