Iglo.ro - Jurisprudenta WIPO

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Iglo Nederland B. V. v. Relaxi Taxi, *Relaxi Taxi [P.J.]*
Case No. DRO2008-0016

1. The Parties

The Complainant is Iglo Nederland B.V., Boult of Netherlands, represented by Boult Wade Tennant, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Relaxi Taxi, *Relaxi Taxi [P.J.]*, Romania, represented by Cimpoeru Anisoara, Romania.
2. The Domain Name and Registrar

The disputed domain name <iglo.ro >is registered with National Institute of R&D on Informatics.
3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2008. On August 18, 2008, the Center transmitted by email to National Institute of R&D on Informatics a request for registrar verification in connection with the domain name at issue. On August 19, 2008, National Institute of R&D on Informatics transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 1, 2008. 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”), 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 September 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2008. The Response was filed with the Center on September 29, 2008.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on October 9, 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.

Following the response of the Registrar indicating that the registration language is Romanian, on August 27, 2008, the Complainant and the Respondent were notified by the Center on the language of the proceeding.

By the said notification, the Complainant was instructed to either

- provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English,

- submit the Complaint translated into Romanian, or

- submit a substantiated request for English to be the language of the administrative proceedings.

By the same notification, the Respondent was instructed to indicate any objection against an eventual choice of English as language of these proceedings by the Complainant.

On September 2, 2008 the Complainant confirmed its request that the language of the proceedings should be English. Following a request of the Center to substantiate the confirmation on September 3, 2008 the Complainant answered that the correspondence between the parties had been in English. The Center received an e-mail from the Respondent on September 5, 2008 stating that it did not speak English and had someone translate the e-mail for it. The Center acknowledged receipt of the e-mail. The Center proceeded to commence proceedings on the basis that a Response would be accepted in either English or Romanian, and that a Panel familiar with both languages would be appointed to decide the matter.

The Response was provided by the Respondent on September 29, 2008 in English. The Response does not contain any comment in connection to the language of the proceeding.

Considering the aspects above, the Panel finds that the language of the present proceedings 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, according to Rules, paragraph 11(b), the language of the proceedings shall be English for the following reasons:

- the Complainant requested to have English language proceedings based on the previous correspondence in English,

- the Respondent did not object to this request and provided a detailed Response in English, accepting implicitly English as the language of the proceedings.
4. Factual Background

The Complainant owns trademark rights in the mark IGLO including Community trademark Registration No. 5740238.

IGLO represents one of the strongest food brands with important brand awareness.

The Respondent is a Romanian company Relaxi Taxi SRL with the main object of activity taxi transportation.

The Respondent registered the disputed domain name on April 14, 2006.
5. Parties’ Contentions
A. Complainant

The Complainant contends that:

- the disputed domain name is identical with the Complainant’s trademark IGLO registered also as a Community trademark,

- the trademark is distinctive and unusual and at the same time well-known in continental Europe,

- the Respondent has no rights or legitimate interests in respect of the domain name in dispute and the disputed domain name was registered in order to disrupt the business of the Complainant or obtain commercial advantage by way of monetary compensation from the Complainant,

- the disputed domain name has been registered or has been acquired primarily for the purpose of selling the domain name to the Complainant or to a competitor of the Complainant for valuable consideration in excess of documented out of pocket expenses (Euro 20,000)
B. Respondent

The Respondent replies that:

- the disputed domain name has meanings in Romanian and describe a type of “construction” made out of ice blocks and used as dwellings in the northern hemisphere: IGLO and IGLU,

- the protection offered by the trade mark used by the Complainant is protecting only for the classes 29 and 30,

- the Respondent’s intention was to develop two projects covered by classes 37 and 43 construction of IGLOs and a network of pubs called IGLO. In this sense, a third person with whom the Respondent has an agreement has applied for the registration of trademark IGLO for classes 37 and 43,

- the Respondent was informed that for the IGLO trademark, the application was partially refused by OSIM regarding the class 37,

- in July 2008, the Respondent was informed that the application for the trademark IGLO was accepted by OSIM on May 21, 2008 under the deposit number M 2007 08225 that it was published in the bulletin from May 2008 and that the fees at OSIM had been paid,

- the Complainant will have maybe 25% Romanian market share in 2008, which could not have insured a well known position in Romania

- the alleged correspondence of the Complainant in connection to the disputed domain name had been made with an individual M. I. Cimpoieru,

- the Respondent has not initiated nor has received any correspondence with the Complainant in connection to the disputed domain name.

- there are at least three companies in Romania using as names or brands words that can be confused with IGLO: Iglu (which deals with real estates “www.iglu.ro” ), Igloo (which deals with architecture, publishing business etc. “www.igloo.ro”) and Relaxi Taxi (the Respondent), here in discussion.

- from 2006 when the site was registered and went online, the Respondent hasn’t received any notification from the Complainant regarding the site itself, the content of the site or any other matter whatsoever.

- in 2006 a hosting service at the Registrar was paid for the website, by which the Respondent uploaded a start page, while in June 2008, when the hosting was over for the site “www.iglo.ro”, the Respondent agreed to suspend the site because it was about “Energy efficient dwellings” and the class 37 which should have covered the construction was refused for the trade mark named IGLO (Annex 9).

- all the files were transferred to a new hosting service bought by Monolitic Line SRL. A statement from the company, which created the new site was requested but it didn’t arrived in due time.

- the Respondent, as owner of the site “www.iglo.ro”, used the site at the beginning to promote a project – a new type of building (called IGLO in Romanian). Because the dwellings are of monolithic type, the sites “www.monolithic.ro” and “www.monolitic.ro” were also bought by the Respondent. The sites “www.monolthic.ro” and “www.monolitic.ro” were parked on the hosting space held at the Registrar for the domain <iglo.ro>.

- as owner of the rights of use for the site “www.iglo.ro”, the Respondent was informed that the application for the trade mark IGLO (class 43) was accepted,

- the Respondent decided to wait till the IGLO trademark was granted in order to proceed with another project of his, in co-operation with Monoltic Line SRL, namely a network of pubs built by Monolitic Line SRL and having the shape of an IGLO and the same trade mark,

- in August 2008, after having checked on the site of OSIM that the trademark IGLO was granted and waiting for oppositions, the Respondent, agreed to have the domain name <iglo.ro> parked on the hosting package of the site “www.monolitic.ro” as a recognition to the future protection offered by the trade mark IGLO (class 43),

- the registration and the use in bad faith of the domain name <iglo.ro> by the Respondent cannot be sustained,

- the Respondent could not have disrupted a business of which it was not aware of. Moreover, after the notification from Cimpoeru Marius Ilie, the Respondent, agreed to the future licensing proposed by Cimpoeru Marius Ilie for several projects that included the shape of an IGLO. One of them included creating a network of bars (pubs) having the shape of an IGLO. The Respondent was not using any trade mark on the site “www.iglo.ro”, while the site was on, the site itself being mainly in connection with domes,

- the Respondent was making a legitimate noncommercial and 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 and in the future intends to use the domain name in relation with a granted trade mark in Romania.
6. Discussion and Findings
A. Identical or Confusingly Similar

The Complainant owns trademark rights in the mark IGLO including Community trademark Registration No. 5740238 for

Class 29

Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; frozen prepared meals; instant meals and snack products; and:

Class 30

Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

IGLO is one of the umbrella brands of the frozen-foods business, used mainly in Europe.

The Respondent’s domain name <iglo.ro> is identical to the Complainant’s trademark, as it incorporates 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 S. & 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, WIPO Case No. DRO2005-0004).

The fact that the IGLO community trademark for classes 29 and 30 had been registered after the registration of the disputed domain name does not prevent this Panel from finding that the disputed domain name is identical with the trademark in which the Complainant has rights. The IGLO mark had been introduced in other jurisdictions according to the evidence provided by the Complainant starting with 1956.

The Panel further does not agree with the Respondent as to the descriptiveness of the word “IGLO” in the Romanian language for the description of the Inuit snow houses. The Romanian Explicative Dictionary (http://dexonline.ro) does not recognize the word IGLO, which does not exist as such in the Romanian language.

In any event the Panel finds that the Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name as the disputed domain name is not active and the Respondent indicated no purpose of use in connection to the disputed domain name.

In response to the Complainant contentions, the Respondent asserts rights or legitimate interests in the IGLO trademark. In this sense, the Respondent alleges that it has had the intention to develop under the disputed domain name two projects covered by classes 37 and 43 construction of IGLOs and a network of pubs called IGLO. In reflecting this intent the Respondent informs that it has an agreement with Marius Ilie Cimpoieru to use this mark after their registration. Following the rejection of the Marius Ilie Cimpoieru application for registration of IGLO trademark for class 37, the Respondent decided to wait until the mark registration of IGLO trademark for class 43 is granted in order to proceed in co-operation with Monoltic Line SRL, with the second project being a network of pubs built by Monolitic Line SRL and having the shape of an igloo and the same trade mark. For this reason, from August 2008, the Respondent agreed to have the domain “www.iglo.ro” parked on the hosting package of the site “www.monolitic.ro” as a recognition of the future protection offered by the trade mark IGLO (class 43).

The Respondent has provided as evidence in this sense the correspondence of Mr. Marius Ilie Cimpoieru with OSIM by which, this individual is informed that the registration of trademark IGLO for class 37 is denied and the registration of the trademark for class 43, public alimentation and accommodation is granted under the deposit no. M2007 08225 currently in opposition procedure.

No agreement in any form between Marius Ilie Cimpoieru and the Respondent had been submitted as evidence in these proceedings. The application date for the trademark IGLO filed by the Marius Ilie Cimpoieru for class 37 and 43 is August 28, 2007.

In the defense provided by the Respondent there are several elements which the Panel noticed as contradictory and apparently disfavoring a strong position of the Respondent in this case. The Panel cannot totally overlook the statements of the Respondent regarding the existence of the word iglo in Romanian language or the total denial of any connection of the Respondent with the correspondence between M I Cimpoeru and the Complainant in relationship to the transfer of the disputed domain name for a price of Euro 20.000. Apparently this correspondence had been made by the Complainant prior to the filing of the Complaint with a M. I. Cimpoieru, whose email address is indicated as the technical contact of the Registrant of the disputed domain name.

From the National Office Trade Register online data in Romania, it appears that the main shareholder in the Respondent is Marius Ilie Cimpoieru.

Considering the said elements, the Panel may presume that Marius Ilie Cimpoieru is M I Cimpoieru who, as majority shareholder in the Respondent and as contact email address indicated in the information listed by the Registrar of the disputed domain name, has corresponded with the Complainant in the name of the Respondent to offer for sale the disputed domain name for a price in excess of the original cost of the domain name registration..

On the other hand, the Panel cannot ignore that evidence submitted in the case indicate circumstances of demonstrable preparations by the Respondent to use the domain name in connection with a bona fide offering of goods or service before any notice to it of this dispute.

In this sense, considering the presumption that M I Cimpoieru is Marius Ilie Cimpoieru majority shareholder in the Respondent and applicant for the trademark IGLO registration in Romania for classes 27 and 43, the Panel notices that the said application date (August 28, 2007) is prior to the initiation of the correspondence by the Complainant regarding the transfer of the disputed domain name (November 13, 2007).

In addition, the application made by Marius Ilie Cimpoieru refers to a combined trademark text with figurative element which clearly indicates what is known as an Inuit snow house.

Also the parking of the disputed domain name to a website which provides explanation about the same kind of construction similar in form with an igloo is a further element to consider the preparation of the Respondent to use the domain name with a bona fide offering of goods or services made before any notice to it of this dispute.

In addition, the preparation by the Respondent to offer services under an IGLO trademark for services and products under other classes than those protected under Complainant’s trademark and the lack of connection between the Complainant’s business under its own IGLO trademark and the future business contemplated by the Respondent leads the Panel to decide that the Complainant has on balance not succeeded in these proceedings in establishing that the Respondent currently lacks rights or legitimate interests in the disputed domain name. If the application for the trademark IGLO were subsequently to fail, or if the Respondent’s claimed intended use of the disputed domain name was to fail to materialize, these are factors that may warrant reexamination in time at the discretion of a subsequent Panel.

But as it is, the Policy is directed at resolving clear cases of cyber squatting, and the fame of the Complainant’s IGLO mark notwithstanding this is not a matter that presently appears to fall into that category. The parties are of course free to pursue options through a court of competent jurisdiction should they choose to do so.
C. Registered and Used in Bad Faith

As the Complainant has failed to establish the second element of the Policy, the Panel shall not further consider the third element of the Policy in these proceedings.
7. Decision

For all the foregoing reasons, the Complaint is denied.

Beatrice Onica Jarka
Sole Panelist

Dated: October 22, 2008