Cerere la WIPO pentru transferarea domeniului sentimente.com către deţinătorul mărcii sentimente.ro

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Renalo Investments Limited v. Dot Coms, Inc. / Mr. Fulviu Fodoreanu
Case No. D2008-1791

1. The Parties

The Complainant is Renalo Investments Limited, Nicosia, Cyprus, represented by Iulian Lucian Maidanuc, Romania.

The Respondent is Dot Coms, Inc. / Mr. Fulviu Fodoreanu, Anaheim, California, United States of America, represented per se.

2. The Domain Name and Registrar

The disputed domain name <sentimente.com> (the "Domain Name") is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 20, 2008. On November 21, 2008, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the Domain Name. On November 21, 2008, Wild West Domains, Inc. 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 Center sent an email communication to the Complainant on November 28, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 3, 2008 in electronic format and December 9, 2008 in hardcopy. The Center verified that the Complaint together with the amendment to 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 December 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2008. The Response was filed with the Center on December 25, 2008.

The Center appointed Luca Barbero as the sole panelist in this matter on January 15, 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.

On February 11, 2009 the Panel issued an order pursuant to paragraph 12 of the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") requesting the Respondent to submit evidence of the registration prior to November 20, 2008 date of filing of the Complaint of the two patents registered with the United States patents and Trademark office and a confirmation of the application number issued from USPTO and further relevant information about at least the publicly accessible data (such as the claims of the Patent) of such invention/software. Furthermore, the Respondent was asked to provide documentary evidence supporting or in connection to the statement of have been promoting and selling the software to numerous prestigious companies such as copies of communication sent and also received from such companies before November 20, 2008.

The Complainant was requested to provide any relevant evidence of the registration and use of the domain name <sentimente.ro> in 2001 and/or before January 3, 2002, such as for example (in relation to use) any records of "time-dated" screenshots of material posted on the domain name, or of Internet user traffic to or consumer recognition of the domain name in connection with the offering of the Complainant's services, or of any publicity or the marketing of services offered by the Complainant on or through the domain name <sentimente.ro>, at the relevant time period.

Pursuant to Rules paragraph 10(c) the above documents were to be filed with the Center via email no later than February 13, 2009 and pursuant to Rules paragraph10 (b) the parties were granted 5 (five) additional days to file with the Center, via email only, any comments strictly limited to any new documents and statement filed by the other party in accordance with the Panel's order.

4. Factual Background

The Complainant is the owner of the trademark SENTIMENTE.RO together with the motto, "what really matters" in Romania NR. 78907 June 6, 2006 (SENTIMENTE.RO, ceea ce conteaza). The Complainant is operating an online dating and networking website.

The Complainant indicates to have continuously used the domain name <sentimente.ro> since September 2001.

The Respondent registered the Domain Name <sentimente.com> on March 1, 2002.

5. Parties' Contentions

A. Complainant

The Complainant indicates that it operates an online dating and networking website, with the domain name <sentimente.ro>. The Complainant states that such website currently has over 620,000 members and approximately 41,000 daily users, and is the most popular dating website for Romanian individuals. The Complainant also makes its website and services available in multiple languages (English, German, French, Spanish, Italian, Russian, Hungarian and Japanese) and is well known outside of Romania.

The Complainant contends to have spent a substantial amount of time and monetary funds to promote the website and service and increase its customer base.

The Complainant alleges that the Domain Name is identical to its trademark.

With reference to rights or legitimate interests in respect of the Domain Name, the Complainant alleges that the Respondent has no rights or legitimate interest in the disputed domain name and is trading on the goodwill associated with the website "www.sentimente.ro".

The Complainant asserts that the Respondent's use of the Domain Name is to redirect bona fide users of "www.sentimente.ro" to its website "www.diasporaromana.com".

The Complainant states that the Respondent is copying the Complaint's homepage thus infringing Complainant's copyright and trademark rights and creating a likelihood of confusion as to the source of the Respondent's website.

The Complainant contends that the Respondent commercially benefits from the Complainant's established fame.

With reference to the circumstances evidencing bad faith, the Complainant states that the Respondent registered the Domain Name and copied the content of the homepage of the Complainant to commercially benefit from the global reputation associated with "www.sentimente.ro".

The Complainant contends that the Respondent's website is displaying links to websites containing graphic adult content such as "www.nud.com". According to the Complainant, the Respondent's conduct is "in direct contravention to the principles of Complainant's website and business purpose". The Complainant emphasizes that it "maintains a strict policy and ethos of quality content and the virtues of family and friendship, through strict electronic and human monitoring of photos, profiles, and uploaded content."

The Complainant asserts that the intentional copying of the Complainant's website content constitutes actual knowledge of the Complainant's business and the overall goodwill associated with the Complainant's website and trademark.

The Complainant infers from the above and from the prior decisions involving the Respondent that the Respondent registered an identical domain name in which he has no legitimate interest and is using the disputed domain name in bad faith.

Pursuant to the procedural order, the Complainant provided the Panel with a detailed explanation of the chain of title between the first registered owner of <sentimente.ro> and the current Complainant also enclosing convincing evidence of the use <sentimente.ro> prior to the registration of the Domain Name since 2001.

B. Respondent

The Respondent states that <sentimente.com> is a software developed in 2000, and registered in 2002 by dot coms, inc. together with two patents registered in the United States efs ids 4335705 and 4336900.

The Respondent points out that the <sentimente.com> software has nothing to do with the website "www.sentimente.ro" which was registered in Romania only in 2006.

According to the Respondent, "allegations contained in the complaint, refering to the communications between our company and theirs, as well as to the conflicts presented, are fabricated by complainant in order to create confusion and deceipt to infringe on our patented invention <sentimente.com> and should be ignored by this panel, and the complaint should be denied.

The Respondent highlights to use <sentimente.com> since 2002, 4 years before <sentimente.ro> was registered in Romania and to hold 2 patents on <sentimente.com> in the United States of America.

With reference to rights or legitimate interests in respect of the Domain Name, the Respondent indicates to promote and sell the <sentimente.com> software to numerous prestigious companies, as well as using it for internal projects, such as the international beta community <project diasporaromana.com>, <psychologyclub.com>, <nud.com> and other communities.

The Respondent states that the software <sentimente.com> was also used for <prietenii.com> as well as for <vreausamafut.com>, and so forth even before <sentimente.ro> existed.

The Respondent further contends to make a legitimate non-commercial fair use of the Domain Name which is patented without intent for commercial gain or misleadingly to divert consumers or to tarnish the trademarks or service marks of SENTIMENTE.RO.

With reference to the circumstances evidencing bad faith, the Respondent asserts to have registered the Domain Name as this is the name of its patented software in good faith, and to promote it as its software, branding the name internationally.

The Respondent states that "the communications between dot coms, inc. and their company presented by complainant as well as the conflicts between "www.sentimente.ro" website and <sentimente.com> patented software are fabricated and are not true, as they are trying to manipulate this panel in getting the rights to our patented software <sentimente.com> using deceipt and false evidence as we have never communicated and/or offered what is stated in their complaint, ever! the domain name <sentimente.com> was available for registration at the time of our interest back in 2002".

The Respondent further underlines to have no intention to compete with <sentimente.ro> nor to have any idea <sentimente.ro> even existed at the time, and to have no competing interests.

In response to the procedural order, the Respondent provided the Panel with documents issued by the United States Patent and Trademark office but only confirming that the application was first filed on November 21, 2008. To the request of the Panel to provide documentary evidence supporting or in connection to the statement of "have been promoting and selling the software to numerous prestigious companies" such as copies of communication sent and also received from such companies before November 20, 2008, the Respondent refused to produce any evidence, indicating that the communication pertaining to the software transactions were "sealed under confidentiality agreements and thus could not be disclosed" to the Panel.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of the trademark containing SENTIMENTE.RO (SENTIMENTE.RO, ceea ce conteaza, i.e., "sentiments [dot] ro "underscored by motto "what actually matters").

The Panel finds that the Domain Name is therefore confusingly similar to the most distinctive part of the trademark owned by the Complainant.

In comparing the Complainant's marks to the Domain Name with reference to <sentimente.com> it should be taken into account the well-established principle that the generic top level domain, may be excluded from consideration as being merely a functional component of a domain name. See i.e. Rollerblade, Inc. v. Chris McCradyWIPO Case No. D2000-0429, "the specific top level of the domain name such as ‘.net' or ‘.com' does not affect the domain name for the purpose of determining whether it is identical or confusingly similar"; Chevy Chase Bank, F.S.B. v. Peter OjoWIPO Case No. D2000-1770 "the accused domain name <chevychasebank.org> is legally identical to Complainant's trade name CHEVY CHASE BANK".

In view of the above, the Panel finds that the Complainant has proven that the Domain Name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name.

The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) that it has made 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 prior to the dispute; or

(ii) that it is commonly known by the Domain Name, even if he has not acquired any trademark rights; or

(iii) that it intends to make a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests in respect of the Domain Name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

It is also well-established that it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name in order to shift the burden of proof on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o.WIPO Case No. D2004-0110MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Case No. FA 852581).

The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant's trademarks.

Furthermore, there is no indication before the Panel that the Respondent is commonly known by the Domain Name, has made preparations to use the Domain Name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the Domain Name and the Respondent has not provided in the Response any convincing evidence of the above.

The Panel notes that the Domain Name was at the time of the filing of the Complaint pointing to a Romanian language website nearly identical to the Complainant's website where the Complainant's trademark was used.

The Panel finds that such use can be considered neither as a bona fide offering of goods or services nor as a legitimate non commercial or fair use of the Domain Name. Such willful conduct clearly shows, to the contrary, that the Respondent was not interested in using the Domain Name in connection with any legitimate purpose.

The Respondent, notwithstanding the procedural order, has not provided the Panel with any convincing evidence of rights or legitimate interests since the patent applications claimed as basis of such rights were filed after the Respondent received notice of the present dispute procedure.

Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the Domain Name; or

(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on the holder's website or location.

As to bad faith registration, the Panel notes that the fact that the website corresponding to the Domain Name is almost identical to the Complainant's official website and in Romanian language, suggests that the Respondent was well aware of the Complainant's trademarks.

The Panel shares the view held in Riedel Electronics, LLC d/b/a Telstar Electronics v. Ross MarshallWIPO Case No. D2003-0231 where the Panel found that "Respondent copied certain portions of Complainant's website, namely, the background art and scripted PREDICTA font, and incorporated such material on an eBay auction for the sale of a Philco television. Complainant demanded Respondent cease and desist from all use of Complainant's intellectual property. It was at this time that Complainant made Respondent aware of Complainant's federally registered trademark for PREDICTA. Accordingly, the evidence clearly supports a conclusion that Respondent was aware of Complainant's "www.predicta.com" website and Complainant's trademark rights to the name PREDICTA and PREDICTA TV, prior to Respondent's registration of the Domain Name. This evidence also supports the conclusion that Respondent intentionally, and with knowledge of Complainant's trademark rights, registered the Domain Name for the specific purpose of trading off the name and reputation of the Complainant."

With reference to use of the Domain Name in bad faith, the Panel finds that the Respondent's use of a website almost identical to the Complainant's official website demonstrates that the only purpose of the Respondent was to use the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to such a website, creating a likelihood of confusion with the endorsement of the Complainant's website.

As stated in Kelley Blue Book Company, Inc. v. Nikolay Golovin aka Buy-movie.net WIPO Case No. D2005-0837. "Even if the Panel is not convinced that the texts posted on Respondent's web site directly infringe on Complainant's copyrighted web content, it is satisfied that such content leads Internet users into confusion. Because the disputed domain name is almost identical to Complainant's mark, users searching for Complainant's web site and inadvertently misspelling "Kelley" may connect to Respondent's web site, and after seeing its content, they may believe that it is Complainant's web site. The resulting confusion provides a ground for a finding of bad faith use."

The Panel also observes that the website corresponding to the Domain Name was used to redirect Internet users to the Respondent's website "www.disaporaromana.com" through a link displayed on the top of the home page.

The Panel therefore finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted (and probably succeeded) to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's services.

The Panel finds paragraph 4(b)(ii) also applicable in this case since the Respondent has registered the Domain Name in order to prevent the Complainant from using the mark and has clearly engaged in a pattern of such conduct since it has also registered other Domain Names incorporating registered trademarks that have been subject i.e. to the following proceedings Casio Keisanki Kabushki Kaisha, dba Casio Computer Co., Ltd v. Fulviu Mihai Fodoreanu WIPO Case No. DRO2003-0002 and Steven Polakoff v. Fulviu Fodoreanu, NAF Case No. FA 0114276.

In view of the above, the Panel finds that the Domain Name was registered and is being used in bad faith.

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 <sentimente.com> be transferred to the Complainant.

Luca Barbero

Sole Panelist

Dated: February 28, 2009

(http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-1791.html)