ADMINISTRATIVE PANEL DECISION
Billa Aktiengesellschaft v. Ganea Nicolae
Case No. DRO2002-0001
1. The Parties
Complainant is Billa Aktiengesellschaft, represented by Dr. Andreas Natterer, Attorney at Law, Tuchlaben 13, 1014 Vienna, Austria, hereinafter the "Complainant".
Respondent is Nicolae Ganea, Car Impex i Malmoe, Husievegen 90, 21233 Malmoe, Sweden, hereinafter the "Respondent".
2. Domain Name and Registrar
The domain name in dispute is <billa.ro>, hereinafter the "Domain Name".
The Registrar for the disputed Domain Name is National Institute of R&D in Informatics, Bd. Averescu 8-10, Sector 1, Bucharest 71316, Romania.
3. Procedural History
The essential procedural history of the Administrative Proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a complaint, received by the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on April 4, 2002. On April 11, 2002, the Center sent an Acknowledgement of Receipt of Complaint to the Complainant.
(b) On April 15, 2002, the Center transmitted a Request for Registrar Verification to the Registrar, with the Registrar’s Verification received by the Center on April 22, 2002 confirming that the Domain Name was registered through National Institute of R&D in Informatics.
(c) On April 22, 2002, the Center sent a Complaint Deficiency Notification to the Complainant, and an Amended Complaint was received by the Center on April 23, 2002.
(d) On April 30, 2002, the Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent, after having satisfied itself that the Complainant had complied with all formal requirements pursuant to the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999 ("the Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
(e) No Response has been submitted by the Respondent. Accordingly, the Center issued a Notification of Respondent Default on May 24, 2002.
(f) In view of the Complainant’s designation of a Sole Panelist, the Center invited Mr. Peter Nitter to serve as a Panelist. Having received his Statement of Acceptance and Declaration of Impartiality and Independence of June 7, 2002, the Center formally appointed him as Sole Panelist. The parties were notified of the Appointment of Administrative Panel on June 7, 2002.
(g) The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. The Administrative Panel shall issue its decision based on the Complaint, the Policy, the Rules and the Supplemental Rules. The proceedings have been conducted in English.
4. Factual Background
Complainant has operated a supermarket chain in Austria since 1961, and has now expanded to Italy, the Czech Republic, Slovakia, Hungary and Romania. The first supermarket in Romania was opened in February 1999.
Complainant has presented listings showing registrations of the trademark BILLA in several European countries.
Complainant is currently using the domain names <billa.at>, <billa.it> and <billa.cz>, and has registered other ccTLD domains in countries where they plan to go into business.
The Respondent has registered the domain name <billa.ro>. Respondent has also registered the domain names <sas.ro> and <budget.ro>.
Prior to the filing of the Complaint, there was some communication between the parties. Complainant urged Respondent to transfer the Domain Name to the Complainant’s Romanian subsidiary, and Respondent offered to transfer the Domain Name if a precise offer would be made.
There was a meeting between the parties, at which Complainant offered to pay the registration fee of USD 100 for the transfer of the Domain Name. This offer was rejected by Respondent, and so was an offer of USD 10.000. An offer of USD 50.000 was presented, and Respondent wanted to consider this offer.
5. Parties’ Contentions
The Complainant asserts that:
The Domain Name is identical to Complainant’s trademark and tradename.
The Respondent has not put forward any rights or legitimate interests in the Domain Name. In the year 2000, the Respondent offered the Domain Name for sale on the page <http://www.billa.ro>.
The website under the Domain Name is not active. The website is only intended to create the impression that actual use would be made of the disputed domain by creating the impression of a password protected active website.
The fact that Respondent has not even considered Complainant’s offer to reimburse their out-of-pocket costs in respect of the Domain Name and that Respondent has bargained very high for a payment for a transfer of the Domain Name, constitutes a clear indication that Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting or otherwise transferring it to the Complainant.
The fact that Respondent has registered at least two other domain names identical to well-known trademarks as a pattern of conduct clearly indicates that Respondent has registered the Domain Name in order to prevent Complainant from reflecting their trademark and tradename in a corresponding domain name.
The fact that Respondent does not actively use the website – even more the fact that Respondent by installing password protection intentionally has tried to create the impression that the website would be actively used – further fosters the conclusion that Respondent has registered and is using the Domain Name in bad faith.
The Complainant requests the Administrative Panel to issue a decision that the Domain Name be transferred to the Complainant.
The Respondent has not submitted a Response, and is thus in default. Respondent has not made any submissions after the Notification of Respondent Default.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three tests that a complainant must satisfy in order to succeed. The Complainant must satisfy the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of such domain name; and
(iii) the domain name has been registered in bad faith and is being used in bad faith.
6.1 Identical or Confusingly Similar to a Trademark or a Service Mark in which the Complainant has Rights
Complainant has not presented copies of trademark registrations for the mark BILLA. However, based on the presented listings of registrations and the annexed leaflet, the Panel finds that the Complainant has rights to the trademark BILLA.
The Domain Name at issue is <billa.ro>.
The Panel considers that the suffix ".ro" has no influence on the similarity consideration, and so the Panel finds that the Domain Name is identical to the Complainant’s trademarks.
6.2 Rights or Legitimate Interest in the Domain Name
The Panel has considered the allegations made by the Complainant as to the lack of rights or legitimate interests of the Respondent in respect of the Domain Name.
Respondent is not a representative or licensee of the Complainant, nor has Respondent any other authorization to use the Complainant’s trademarks.
The Panel has visited the <http://www.billa.ro> website of the Respondent in order to investigate whether there could be found any evidence as to Respondent’s rights or legitimacy of interest with regard to the Domain Name.
The address leads to a website with a picture of a car, and the option to either send an e-mail or enter a password. The Panel agrees with the Complainant that it appears that no active password check is actually conducted, as no error messages appear after typing random words, letters or numbers. Based on this the Panel could not find any such evidence of rights or legitimate interest.
As a result of its default, the Respondent has not contested the allegations put forward by the Complainant. Nor has the Respondent presented any rights or legitimate interests in the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interest in the Domain Name.
6.3 Registration and Use in Bad Faith
The Panel has considered Complainant’s allegations and evidence with regard to the Respondent’s registration and use of the Domain Name in bad faith.
The Panel agrees with the Complainant that the rejection by Respondent of Complainant’s offer to reimburse the Respondent’s out-of-pocket expenses, and the willingness to consider a possible offer of USD 50.000 in this case indicates that the Domain Name was registered for the purpose of selling, renting or otherwise transferring the Domain Name to Complainant.
Although Respondent has a Swedish address, the Panel finds that Respondent in all probability has been aware of the Complainant’s trademark when registering the Domain Name. It is not likely that any trader would choose and register a domain name including the trademark BILLA under the Romanian ccTLD at approximately the same time as Complainant entered into the Romanian market if not to create an impression of association with the Complainant.
Respondent has also registered the domain names <sas.ro> and <budget.ro>, both domain names reflecting famous trademarks. Together with the registration of the Domain Name, this shows a pattern of conduct as to registering domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.
The way the Respondent has organized the website at <http://www.billa.ro> indicates that Respondent wishes to give the impression that it conducts a legitimate use of the Domain Name. As stated above, the Panel finds that there is actually no active use of the site, and this action by Respondent indicates that the Domain Name is being used in bad faith.
By not submitting a Response, Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the Domain Name in bad faith.
Based on the above discussion, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith.
The Panel has found that the Domain Name <billa.ro> is identical to a trademark held by the Complainant, and that the Respondent has no rights to or legitimate interest in the Domain Name. The Panel further finds that the Domain Name has been registered in bad faith, and that it is being used in bad faith.
Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel decides that the Domain Name be transferred to the Complainant.
Peter G. Nitter
Dated: June 26, 2002