WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The McGraw-Hill Companies, Inc. v. Bucharest Business Week

Case No. DRO2006-0005

1. The Parties

The Complainant is The McGraw-Hill Companies, Inc., of New York, New York, United States of America, represented by Alexandru Harsany, Romania.

The Respondent is Americelt Publishing SRL (Bucharest Business Week), Romania, represented by Constantin Dadalau, Romania.

2. The Domain Names and Registrar

The disputed domain names <businessweek.com.ro>, <businessweek.ro> are registered with RNC.ro.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2006. On October 25, 2006, the Center transmitted by email to RNC.ro. A request for registrar verification in connection with the domain names at issue. On October 31, 2006, 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 for the administrative, billing, and technical contact. 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 November 9, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2006. The due date for decision was extended by the Center at the Respondent’s request to December 6, 2006. The Response was filed with the Center on December 6, 2006.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on January 10, 2007. 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 submitted a Supplemental Filing on December 13, 2006. The Center informed the Complainant that no express provision is made for Supplemental Filings by either party, except in response to a deficiency notification, or if requested by the Panel. The Panel finds that, in this case, there is no apparent compelling reason or exceptional basis on which the Supplemental Filing should be considered. Accordingly, the Supplemental Filing has not been considered.

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, consistent with its authority under paragraph 11(b) of the Rules, the language of the proceedings shall be English, for the following reasons:

- the Complainant requested the English language to be used in these proceedings;

- there were no provisions on the Registrar’s website, at the registration date, 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 SportS.R.L.WIPO Case No. DRO2006-0001, DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA, WIPO Case No. DRO2006-0003, Companie Générale des Établissements Michelin - Michelin & Cie. v. IPSOS New Media Research SRL, WIPO Case No. DRO2006-0004;

- the registration agreement was available in both English and Romanian, and in the absence of any statement to the contrary from the Respondent the Panel draws the inference that the domain applicant accepts the use of both languages;

- the Respondent submitted its Response in the English language.

4. Factual Background

The Complainant is an American company which has been publishing the widely circulated “Business Week” magazine since 1929. The Complainant has been using continuously the BUSINESS WEEK trademark in commerce since 1930.

The Complainant also holds registrations of this trademark worldwide. Among these registrations, the Complainant holds the Community registrations, for its class of products, no. 000030577, filed in 1996 (with a listed filing date of “01/04/1996”).

The Complainant registered the national verbal trademark BUSINESS WEEK, in Romania on May 11, 2000, and is the holder of several domain name registrations including: <businessweek.com>, <businessweek.com.cn>, <businessweek.com.mx>, <businessweekasia.com>, <businessweekeurope.com>.

The Respondent is a Romanian company which is the holder of the trademark registration for BUCHAREST BUSINESS WEEK since 1997.

The Respondent has registered the disputed domain names <businessweek.com.ro> and <businessweek.ro> on September 12, 2000.

5. Parties’ Contentions

A. Complainant

The Complainant contends in relevant part that:

- the disputed domain names are identical or confusingly similar to its notorious mark BUSINESS WEEK;

- the Respondent has no rights or legitimate interests in the disputed domain names;

- the Respondent has registered and has been using the disputed domain names in bad faith as it knew of the existence of the notorious mark BUSINESS WEEK and it has held the disputed domain names without using them.

B. Respondent

The Respondent contends in relevant part that:

- It has owned the rights to the trademark BUCHAREST BUSINESS WEEK since 1997, as registered with OSIM, the Trademark Office in Romania and it has published a weekly newspaper, since 1997, entitled “Bucharest Business Week”, consistently and comprehensively distributed on the local market, as compared to the “Business Week” magazine distributed by the Complainant;

- It has rights or legitimate interests in respect of the domain names, as it has been involved in ongoing discussions including Anamcara Media Group SRL, present owner of Bucharest Business Week newspaper, Celidea Consulting SRL and other potential investors), to launch information websites in Romanian language using <businessweek.ro> and <businessweek.com.ro>, according to decisions reached together with all parties involved;

- the domain names have not been registered and used in bad faith;

- the Complainant seeks a finding of attempted reverse domain name hijacking.

6. Discussion and Findings

A. Identical or Confusingly Similar

A.1. The Complainant’s trademark or service mark rights

It is undisputed that the Complainant has rights in the trademark BUSINESS WEEK, which it has been using continuously in commerce since 1930. Such trademark has become notorious due, among others, to such continuous use. Moreover, the Complainant also holds registrations of this trademark worldwide and in particular in Romania. It has also provided held a Community trademark registration for BUSINESS WEEK (no. 000030577) since 1996.

A.2. The disputed domain names are identical to the Complainant’s trademark

Respondent’s domain names <businessweek.com.ro> and <businessweek.ro> are identical to the Complainant’s BUSINESS WEEK trademark, as they incorporate this mark in its entirety. It is well established that the specific top level of the domain name such as “.com” or “.ro” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to a trademark (see Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr., WIPO Case No. D2000-1525, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001; and OSRAM GmbH, v. web4COMM SRL Romania, WIPOCase No. DRO2005-0004).

The fact that Respondent holds a registration for BUCHAREST BUSINESS WEEK trademark does not make the disputed domain names less identical to or confusingly similar with the Complainant’s BUSINESS WEEK trademark.

For these reasons, the Panel finds the Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant is the owner of a notorious mark. The two disputed domain names are for the purposes of the Policy identical to this mark.

The Respondent asserts rights in the disputed domain names for the reason that he holds a registration in Romania of the trademark BUCHAREST BUSINESS WEEK, in comparison to the Complainant’s registration in Romania of its trademark BUSINESS WEEK. The trademark registered by the Respondent in Romania could be considered confusingly similar to the Complainant’s trademark.

While the Respondent may well engage in legitimate business activities under the name and mark BUCHAREST BUSINESS WEEK, the Panel does not consider this to be sufficient for proving rights and legitimate interests in the disputed domain names in the present case. In addition, the Panel notes that the Complainant is the holder of a Community trademark registration (no. 000030577, with a filing date of “01/04/1996”), which predates the Respondent’s trademark registration in Romania.

Moreover, the Panel considers that the likely intent of the Respondent in choosing these particular domain names is to benefit from the drawing power of the Complainant’s notorious trademark, as the disputed domain names are reproductions of the Complainant’s trademark, and not of the trademark registered by the Respondent in Romania. In the opinion of the Panel, this likely intent vitiates any preparation that may have been undertaken to use the disputed domain names in connection with a bona fide offering of goods or services.

For these reasons, the Panel finds that the Respondent does not have rights or legitimate interests under the Policy in respect of the domain names in dispute in the current proceedings.

C. Registered and Used in Bad Faith

The Panel finds that the disputed domain names were registered with the likely intent of benefiting from the Complainant’s trademark notoriety.

Moreover, the Panel considers that the Respondent’s stated preparations to use the disputed domain names, were they to be implemented, would in all likelihood represent use of the domain names in bad faith, consistent with the circumstances described in Paragraph 4(b) (iv) of the Policy; that is, in order to attract intentionally for commercial gain, Internet users to the websites to which the two domain names would have been resolved, by creating a likelihood with the Complainant’s notorious trademark.

In addition, the apparent passive holding of the disputed domain name by the Respondent provides in the circumstances a further indication of lack of good faith. In direct connection to the other findings in this case, having regard to the notoriety of the Complainant’s mark and the lack of conceivable good faith use, the Panel reaches the conclusion that the disputed domain name is in all likelihood being held by the Respondent in bad faith.

Accordingly, the Panel finds that the Complainant has proven the third element of the Policy.

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 names, <businessweek.ro>, <businessweek.com.ro> be transferred to the Complainant.

Beatrice Onica Jarka
Sole Panelist

Dated: January 31, 2007