Symantec.ro -Jurisprudenta OMPI

 

1. The Parties

The Complainant is Symantec Corporation, Cupertino, California, United States of America, represented by SD Petosevic Romania SRL, Romania.

The Respondent is SC SOFTCONCEPT S.R.L., Targu Mures, Mures County, Romania.

 

2. The Domain Name and Registrar

The disputed domain name <symantec.ro> is registered with RNC.ro.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2008. On August 1, 2008, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the domain name at issue. On August 4, 2008, 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”), 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 August 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2008.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on September 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.

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, according to Rules, paragraph 11(b), the language of the proceedings shall be English for the following reasons:

- at the apparent registration date of the disputed domain name - January 1, 1996 (according to the Whois data and registrar’s verification reply) - there were no possibility for a domain name applicant to choose between English or Romanian as the controlling language of the registration agreement, as this Panel found in other previous cases: Inter-IKEA Systems B.V. v. SC Agis International Sport S.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 McGraw-Hill Companies, Inc. v. Bucharest Business Week, WIPO Case No. DRO2006-0005,

- the registration agreement was simultaneously English and Romanian, so the domain applicant accepts the use of both languages;

- the Complaint had been filed also in Romanian language;

- the Respondent’s default in filling the Response is indication that it does not oppose to English as the language of these proceedings.

 

4. Factual Background

The Complainant was founded in 1982 and is one of the world’s largest computer software companies. The Complainant is the sole and exclusive owner of all rights, title and interest in and to the trademark SYMANTEC and SYMANTEC & Design, which Complainant uses in connection with its products and services.

The Complainant has registered its SYMANTEC and/or SYMANTEC & Design marks throughout the world including Romania. The Complainant has for example a SYMANTEC mark that has been registered since April 21, 1992 in the United States of America, and several SYMANTEC & Design marks that have been registered in that jurisdiction since then.

The mark registration in Romania is as follows:

Mark: SYMANTEC

Appl. no.: M 2006 003582

Reg. No.: 075896

Filing Date: March 31, 2006

Reg. Date: March 31, 2006

Status: Registered

Goods:

Class 9 – Computer software, hardware and firmwares and peripherals; computer software, hardware, firmwares and peripherals for data security and network and Internet system protection and stocking, server, client and management of applications performance; downloadable computer software; computer hardware appliances that provide firewall, content filtering, intrusion alert, virus protection, virtual private networking and other security functions; electronic publications, electronic user manuals sold as a unit therewith;

Class 42 – Computer services; network and Internet, security services; providing service in the field of service applications; computer consultancy services; notification and delivery of software updates; providing information in the fields of computer network and Internet security and data storing; computer programming, design computer, software for others; licensing and leasing of computer software and intellectual property, hardware, peripherals and firmwares.

In addition, the Complainant has multiple registered domain names such as <symantec.net>, <symantec.nl>, <symantec.co.nl>, <symantec.de>, <symantec.org>, <symantec.info>, <symantec.us>, <symantec.com> and multiple hierarchies of it such as symantec.com/hu, symantec.com/ru etc.

The <symantec.ro> domain name was apparently first registered on January 1, 1996 (according to the Whois data and registrar’s verification reply).

The Respondent appears to be a Romanian Limited Liability Company set up in June 1999, which seemingly provides mainly computer software related services, web-design, desktop programming.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The disputed domain name is identical and therefore confusingly similar to the Complainant’s SYMANTEC trademark, as used and registered by the Complainant, tradename and the main element of its registered domain names.

- Further to the receipt of the Cease and Desist letter sent by the Complainant, the representative of the Respondent, Mr. Suciu Alexandru, called the Complainant’s representatives and offered to transfer the <symantec.ro> domain name to the Complainant provided that he was compensated in the amount of two thousand (2,000) USD.

- The Respondent should be considered as having no rights or legitimate interest with respect to the disputed domain name, as the Complainant has not licensed the SYMANTEC mark or the disputed domain name to the Respondent and there is no relationship between the Complainant and the Respondent that would give rise to any license, permission or other right by which the Respondent could apply for or use any domain name or trademark incorporating any of the Complainant’s marks.

- The Respondent has never been commonly known by the disputed domain name and, thus, does not have any rights or legitimate interests in the disputed domain name on that basis.

- The Respondent does not produce or market any of its goods or services under the SYMANTEC name or mark.

- When the Complainant put the Respondent on notice of its rights, the Respondent did not put forward any legitimate claim to the disputed domain name.

- The Respondent’s representative, Mr. Alexandru Suciu, Administrator, agreed to transfer the <symantec.ro> domain name to the Complainant for compensation of two thousand (2,000) USD, an amount of money exceeding the out-of-pocket costs directly related to the disputed domain name.

- To the knowledge of the Complainant, the Respondent has not shown any use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services.

- Although it was registered more then eight (8) years ago, the disputed domain name does not resolve to any website and it’s currently inactive.

- The Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.

- The disputed domain name was registered in bad faith as the Respondent is engaged in similar or closely related business field as the Complainant is. The Respondent operates in the field of computer software and given the Complainant’s prominence in this field, it is reasonable to believe that the Respondent must have had knowledge of the Complainant’s activity, its products and services as well as its famous SYMANTEC trademark when registering the domain name.

- Since the Respondent does not use the SYMANTEC trademark, and the Respondent operates in the same niche of computer software as the Complainant, there is no doubt that the Respondent either knew or should have known of the Complainant’s prominent use.

- The Respondent’s bad faith is demonstrated by its offer to transfer the disputed domain name to the Complainant for compensation in the amount of two thousand (2,000) USD, which is in excess of his out of pocket costs directly related to the disputed domain name.

- The Respondent’s registered contact Mr. Alexandru Suciu is known in past WIPO cases to have acted in bad faith for example, Advanced Micro Devices, Inc. v. Softconcept S.R.L., Suciu Alexandru, WIPO Case No. DRO2008-0002.

- The fact that the disputed domain name had been registered but remained inactive since at least 2000, by which one can infer that the Respondent does not have a bona fide intention to make good use of the domain name.

- The Respondent’s registration of the <symantec.ro> domain name prevents the Complainant from legitimately registering its rights in the form of the sign SYMANTEC as a corresponding top-level domain name in Romania.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant holds trademark registrations for SYMANTEC and/or SYMANTEC & Design mark throughout the world including Romania.

In Romania, the Complainant holds in particular the registration for the mark: SYMANTEC as follows:

Appl. no.: M 2006 003582

Reg. No.: 075896

Filing Date: March 31, 2006

Reg. Date: March 31, 2006

Status: Registered

Goods:

Class 9 – Computer software, hardware and firmwares and peripherals; computer software, hardware, firmwares and peripherals for data security and network and Internet system protection and stocking, server, client and management of applications performance; downloadable computer software; computer hardware appliances that provide firewall, content filtering, intrusion alert, virus protection, virtual private networking and other security functions; electronic publications, electronic user manuals sold as a unit therewith;

Class 42 – Computer services; network and Internet, security services; providing service in the field of service applications; computer consultancy services; notification and delivery of software updates; providing information in the fields of computer network and Internet security and data storing; computer programming, design computer, software for others; licensing and leasing of computer software and intellectual property, hardware, peripherals and firmwares.

The Respondent’s domain name <symantec.ro> is identical to the Complainant’s SYMANTEC mark, 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 SYMANTEC trademark had been registered in Romania several years after the registration of the disputed domain name does not prevent this Panel finding that the disputed domain name is identical with trademarks in which the Complainant has rights. The Complainant has in any event had SYMANTEC marks registered in other jurisdictions around the world since at least 1992, several years before the disputed domain name was first registered.

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

B. Rights or Legitimate Interests

As well established in the WIPO UDRP jurisprudence (see Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 ; Chanel, Inc v Estco Technology Group, WIPO Case No. D2000-0413 ; Inter-Continental Hotel Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252 ), once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of proof on this element shifts to the Respondent to rebut the showing.

In these proceedings, there are sufficient elements to consider that the Complainant established a prima facie showing that the Respondent does not have rights or legitimate interest with respect to the disputed domain name.

In this sense, the Complainant asserts that it has not licensed the SYMANTEC mark or the disputed domain name to the Respondent and there is no relationship between the Complainant and the Respondent that would give rise to any license, permission or other right by which the Respondent could apply for or use any domain name or trademark incorporating any of the Complainant’s marks.

Further the Complainant asserts that, the Respondent has never been commonly known by the disputed domain name and does not produce or market any of its goods or services under the SYMANTEC name or mark.

In addition, when the Complainant put the Respondent on notice of its rights, the Respondent did not put forward any legitimate claim to the disputed domain name.

And finally the Complainant asserts that although the disputed domain name was registered more then eight years ago, it does not resolve to any website and it’s currently inactive.

None of the assertions made by the Complainant were denied by the Respondent, who has failed to file a Response in these proceedings.

As prior WIPO UDRP panels (See Singapore Airlines limited v. European Travel Network, WIPO Case No. D2000-0641 ; Bayerische Motoren Werke AG v. Null, WIPO Case No. D2002-0937 ) have accepted, the silence of the Respondent might support a finding, based on other relevant circumstances, that it has no rights or legitimate interests in respect of the disputed domain name.

Considering this prior practice and the circumstances of this case, the Panel finds that in these proceedings the Complainant established a prima facie showing that the Respondent has no rights to or legitimate interests in the disputed domain name. The Panel, referring to the Respondent, has no indication whatsoever of any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

The Panel concludes that the Complainant has proved the second element of the Policy.

C. Registered and Used in Bad Faith

There are elements which indicate that disputed domain name was registered and is being used in bad faith.

The Respondent is seemingly engaged in similar or closely related business field as the Complainant. The Respondent appears to operate in the field of computer software and given the Complainant’s prominence in this field, it is reasonable to believe that the Respondent must have had knowledge of the Complainant’s activity, its products and services as well as its famous SYMANTEC trademark when registering the domain name.

In addition, in light of existing domain name registration regulations and the body of Policy-based administrative decisions (see Kabushiki Kaisha ASICS v. SC Gaticonstruct, WIPO Case No. DRO2008-0010), the Panel considers that before registration of a domain name there exists a reasonable due diligence obligation of the registrant to check whether the domain name to be registered infringes a third party’s trademark rights. In this case the exercise of such reasonable due diligence would have revealed the existence of the Complainant’s SYMANTEC trademarks and the potential for infringement of such trademarks rights by registering a domain name comprising these trademarks. The fact that on the Romanian territory the SYMANTEC marks got protection by registration with Romanian State office for Trademarks and Inventions only in 2006, after the disputed domain was registered does not in this age of the internet affect the exercise of such obligation incumbent to the Respondent. The notoriety and distinctiveness of SYMANTEC trademarks in the virtual space of the Internet is in this case sufficient for the Panel to infer that the Respondent registered the disputed domain name in order to benefit from such notoriety and distinctiveness.

Since the Respondent does not use SYMANTEC trademarks in apparent way other than in the registration of the disputed domain name, and since the Respondent operates in the same niche of computer software as the Complainant, there is no doubt in the Panel’s view that the Respondent either knew or should have known of the Complainant’s prominent use of the SYMANTEC mark.

The Respondent’s bad faith use of the disputed domain name is further demonstrated by its alleged offer to transfer the disputed domain name to the Complainant for compensation in the amount of two thousand (2,000) USD, which is in all likelihood in excess of his out of pocket costs directly related to the disputed domain name.

In addition, the Respondent’s registered contact Mr. Alexandru Suciu is known in past WIPO UDRP cases to have acted in bad faith for example, in Advanced Micro Devices, Inc. v. Softconcept S R L, Suciu Alexandru WIPO Case No. DRO2008-0002.

Moreover, the fact that the disputed domain name has been registered but remained inactive since 2000, cannot be interpreted as a bona fide intention to make good use of the domain name. On the contrary, from this fact one may infer that the Respondent’s registration of the <symantec.ro> domain name prevents the Complainant from legitimately registering its rights in the form of the sign SYMANTEC as a corresponding top-level domain name in Romania.

For these reasons, the Panel finds the Complainant has established also 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 name <symantec.ro> be transferred to the Complainant.

Beatrice Onica Jarka
Sole Panelist

Date: September 22, 2008