The Complainant is SC FRA.BO RO SRL of Bucharest, Romania, represented by Ciuca Marius Florin, Romania.
The Respondent is SC Technova Invest SRL of Romania.
2. The Domain Name and Registrar
The disputed domain name <frabo.ro> is registered with RNC.ro.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2009. On January 21, 2009, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the disputed domain name. On January 21, 2009, 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 24, 2009.
The Center appointed Marilena Oprea as the sole panelist in this matter on March 5, 2009. 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 January 26, 2009 the Center forwarded a notice to the Complainant stating that the Complainant should either (a) provide evidence of an agreement between the parties that proceedings should be in English; (b) translate the Complaint into Romanian; or (c) submit a request for English to be the language of the proceedings. The Complainant requested the language of proceedings to be English, providing in its response several arguments such as: at the time of registration of the disputed domain name the language of the registration agreement was English and Romanian, the documents already submitted are in English, the information regarding the WIPO domain name administrative procedures is available in English and that the Respondent is well aware of the English language, using this language in its daily activity with its foreign partners.
The Registrar of the disputed domain names has informed the Center that the language of the relevant registration agreement is Romanian.
The Respondent did not submit any response or any comments regarding the language of the proceedings in this present procedure.
The Panel determines according to Rules, paragraph 11(a), that the language of these proceedings be English for the following reasons:
- 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, SC Tip Top Food Industry SRL v. S.C. WEB4COMM SRL/ web4COMM S.R.L. Romania, WIPO Case No. DRO2008-0013; Inter-IKEA Systems B.V. v. SC Agis International SportS.R.L., WIPO Case No. DRO2006-0001);
- even if the Complaint was not translated into Romanian, all the communications made by the Center were in both languages, Romanian and English. Thus, the Respondent was able to understand the procedures initiated against it;
- the Respondent's website has the option to use the English language, and, according to their company's presentation, Respondent has collaboration with several international companies. Accordingly, it is very likely that the Respondent is familiar with the English language;
- the Complainant opted for the English language to be used in these proceedings;
- the Respondent did not submit any comments on the Complainant's request that English shall be the language of the proceedings.
4. Factual Background
The Complainant is a Romanian company, S.C. FRA.BO RO S.R.L., having as main shareholder the Italian company FRA.BO. S.P.A. The Complainant was incorporated initially in Oradea in 2002 and relocated its headquarters in Bucharest in the year 2005 (Complaint, Annex 5); its activity is related to the manufacture and sale of fittings made of copper and other materials.
FRA.BO. S.P.A. Italy holds the international registration for the mark with figurative elements FRA.BO number 547479 of December 28, 1989 valid until 2009, designating, among other countries, Romania, covering goods in classes 6 and 11.
The Complainant holds <fra-bo.ro> domain name; FRA.BO. S.P.A. Italy's main web site is “www.frabo.net”.
The disputed domain name <frabo.ro> was registered on January 15, 2003.
The Respondent is a Romanian company, S.C. TECHNOVA INVEST S.R.L., incorporated in Oradea county in Romania.
5. Parties' Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are met in the present case, as follows:
(i) The domain name <frabo.ro> is identical to the FRA.BO trademark;
The main shareholder of the Complainant is the holder of the international registration for FRA.BO and the disputed domain name is identical to the trademark used in Romania only by the Complainant. Further more, the Complainant and the trademark holder concluded a commercial agreement containing provisions regarding Complainant's rights to use the trademark and its obligation to protect the same on the Romanian territory, including in relation with domain name matters in the “.ro” field.
(ii) The Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name;
The Complainant has exclusive right to use the trademark FRA.BO in Romania, the trademark holder did not conclude any other such agreement with another entity on the Romanian market. Respondent's use does not satisfy the test for bona fide use as the Respondent sells on its website “www.technova.ro” products of the Complainant's competitors. The Respondent is not known for the disputed domain name, in fact the Respondent used the domain name to redirect consumers to its main website. The Respondent is making a commercial use of the domain name.
(iii) The domain name was registered and is being used in bad faith.
The Respondent has registered the disputed domain name after acknowledging the incorporation of the Complainant, a subsidiary of the main international producer of cooper fittings, the Respondent being one of the main competitors of the FRA.BO products. The disputed domain name is used to redirect Internet users on the Respondent's main website. The Respondent's main e-mail address contact (“[email protected]”) is almost identical to Complainant's email address (“[email protected]”), thus redirecting and confusing Complainant's customers. The Respondent's response to the amicable attempt to transfer the domain name was “for a financial offer that cannot be refused”. The disputed domain name was registered to disrupt Complainant's business, and to prevent it to reflect its trademark into the corresponding domain name. Redirecting the disputed domain name, the Respondent attempted to attract the Internet users on its main webpage, for its commercial gain, by creating a likelihood of confusion with Complainant's trademark.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
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 has no 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 that the above-mentioned circumstances are present in this matter.
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.
The holder of the FRA.BO trademark is the Italian company FRA.BO. S.P.A., which is the parent company of the Complainant. Further more, the commercial agreement concluded in 2006 between the Complainant and the trademark holder (Complaint, Annex 7) specifically provides the Complainant a right to use the trademark and its obligation to protect the same, including in relation to the corresponding domain names in the “.ro” field.
Thus, the present Panel appreciates that the Complainant has rights in the FRA.BO trademark (see also paragraph 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions and cases cited therein).
The FRA.BO trademark was registered in 1989. The disputed domain name was registered on January 15, 2003.
Even though not conclusive under the first element of the Policy, the Panel notes that the Complainant's trademark rights predate the domain name registration.
Further, the Panel must appreciate whether the trademark is identical or confusingly similar to the disputed domain name.
The trademark is FRA.BO and the disputed domain name is <frabo.ro>. As previous panels have stated, the use or absence of punctuation marks, does not alter the fact that a domain name is identical or confusingly similar to a trademark (see Chernow Communications, Inc. v. Jonathan D. Kimball,
WIPO Case No. D2000-0119; Draw-Tite, Inc. v. Plattsburgh Spring Inc.,
WIPO Case No. D2000-0017).
The trademark in question has figurative elements; the dominant elements of the mark being the stylized letters “F” and “B” and the word element FRA.BO.
For all the above, the Panel respectfully disagrees with the Complainant's statement that the disputed domain name is identical to the trademark, and concludes that the domain name is, after disregarding the “.ro” ccTLD, confusingly similar to the trademark.
As per the above mentioned, the Panel finds that the first element of the UDRP is established, and the Complainant has proven that the disputed domain name is confusingly similar to 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 mark holder, the Complainant's parent company 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 response on this therefore, it may further be assumed that there is no legal and/or business relationship between the Respondent and the Complainant which could give the Respondent any right in the denomination FRABO/FRA.BO.
Also, with its silence, the Respondent has failed to rebut Complainant's prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name.
Thus, analyzing the example defenses provided under paragraph 4(c) of the Policy, the Panel couldn't find (i) any demonstrable preparations to use the domain name in a bona fide manner before any notice of the dispute, (ii) evidence attesting the fact that Respondent is commonly known by the domain name; or (iii) evidence that the Respondent is making a legitimate noncommercial use o the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Although the Complainant states (without providing supporting evidence) that the disputed domain name is used to redirect Internet users on the Respondent's main web page, the Panel noted that the disputed domain name cannot be accessed because the server cannot be found, and was not able to find archive pages to attest the contrary.
However, the Respondent's main webpage clearly indicates that the Respondent is a competitor of the Complainant.
The passive holding of a domain name confusingly similar to a competitor's trademark cannot constitute nor justify a right or a legitimate interest.
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
The disputed domain name was registered on January 2003, after the incorporation of the Complainant in October 2002. Moreover, both entities (the Complainant and the Respondent) were registered in the same county in Romania and are carrying similar activities. According to the presentation from its main website, the Respondent offers goods produced in many countries, one of its first partners being an Italian manufacturer; in the same time, the FRA.BO trademark holder was founded and has a factory in Italy even since 1969. FRA.BO trademark was registered in 1989. For all the above, it is not difficult for the Panel in this present case to infer actual knowledge of the Complainant's mark, trade name and business at the time Respondent registered the disputed domain name.
Even if there is no evidence that the Respondent used the disputed domain name to redirect Internet users on its website or that Complainant's customers were actually diverted to the Respondent's website or have contacted the Respondent on the similar e-mail address, the Panel finds sufficient to establish the bad faith use element the fact that Respondent has registered a competitor's distinctive trademark as a domain name, without having any right or legitimate interest, thus registering the disputed domain name primarily for disrupting the business of a competitor (paragraph 4 (b)(iii) of the Policy).
Moreover, the evidence has been submitted to the effect that the Respondent requested the Complainant “a financial offer that cannot be refused” in order to transfer the domain name to the Complainant. Furthermore, the Respondent chose not to participate in this administrative procedure. These, along with the other elements of the present case, constitute further evidence of bad faith registration and use of the domain name.
For all these reasons, the Panel finds that the third element of the UDRP is met accordingly the disputed domain name was registered and is being 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 <frabo.ro> be transferred to the Complainant.
Marilena Oprea Sole Panelist
Dated: March 16, 2009
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