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S.C. Romtelecom S.A. v. ET [2005] GENDND 1136 (1 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

S.C. Romtelecom S.A. v. ET

1. The Parties

The Complainant is S.C. Romtelecom S.A., Bucharest, Romania, represented by Catalin Dima, Romania.

The Respondent is ET, Paris, France; c/o Eduard, Saint Cloud, France.

2. The Domain Name and Registrar

The disputed domain name <romtelecom.com> is registered with Gandi SARL.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2005. On March 18, 2005, the Center transmitted by email to Gandi SARL a request for registrar verification in connection with the domain name at issue. On March 18, 2005, Gandi SARL transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 7, 2005. 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 April 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2005. The Response was filed with the Center on May 9, 2005.

The Center appointed Zbynek Loebl as the Sole Panelist in this matter on May 18, 2005. 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.

4. Factual Background

The following information is derived from the Complaint and the supporting evidence and material submitted by the Complainant.

The Complainant, S.C. Romtelecom S.A., is a dominant telecommunications operator in Romania. The Complainant’s name “Romtelecom” is used since 1991. The Complainant also owns, from November 17, 1997, a trademark “ROMTELECOM”. The Complainant owns a number of additional trademarks containing the word “Romtelecom”. On May 4, 1998, the Complainant also registered its official website under the name “www.romtelecom.ro”.

The Respondent registered the disputed domain name <romtelecom.com> on April 13, 1998. The Respondent operates under the disputed domain name a website with a discussion forum dedicated to telecommunications in Romania. The Respondent had operated discussion forums related to the same topic even earlier, starting approximately in 1994 and continuing until the present time.

In November 2004, the Complainant sent a letter to the Respondent requesting the transfer of the disputed domain name. The Respondent did not answer this letter.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is identical or confusingly similar to its registered trademark and corporate name of the Complainant; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.

Further, the Complainant argues that (i) it has never granted the Respondent the right to use ROMTELECOM trademark; (ii) the Respondent is not known by the disputed domain name; (iii) the Respondent has not publicized its discussion forum; and (iv) the disputed domain name is not used for non profit purposes or in good faith, but with the intention to misleadingly divert consumers in view of obtaining commercial advantages and to tarnish the trademarks of the Complainant.

Further, the Complainant argues that the disputed domain name was registered by the Respondent knowing about the trademark ROMTELECOM of the Complainant and that the disputed domain name is used primarily to mislead customers, potential customers and/or business partners of the Complainant and/or to publish notices about the Complainant with an obscene or denigrating content.

B. Respondent

Respondent challenges the arguments of the Complainant that the Respondent has no rights or legitimate interests in respect of the domain name and that the disputed domain name was registered and is being used in bad faith.

The Respondent argues that he has a legitimate interest in <romtelecom.com> domain name. The Respondent argues that in 1998 he was not aware of the trademark ROMTELECOM and that he as a political refugee could not know about such a trademark. The Respondent argues that he selected the disputed domain name for his intended discussion forum about telecommunications in Romania using “romtelecom” as a short descriptive term of Romanian telecommunications, based on a suggestion from a user of the Respondent’s previous discussion forum.

The Respondent also argues that the disputed domain name was not registered and is not used in bad faith. He argues that the domain name has been used for non-commercial purposes. He also argues that he is not a cybersquatter but a person known for protecting intellectual property. The Respondent also argues that in fact the Complainant attempts to reverse hijack the disputed domain name by stating incorrect information about the Respondent’s commercial benefits from exploiting the disputed domain name and about other issues.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements which Complainant must satisfy in order to succeed:

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

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

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

A. Identical or Confusingly Similar

As evidence that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademark the Complainant presented documents evidencing that its trademark and corporate name are identical with the disputed domain name.

The Panel finds that the disputed domain name <romtelecom.com> is identical with the Complainant’s trademark ROMTELECOM as evidenced by the Complainant and identical with Complainant’s corporate name.

B. Rights or Legitimate Interests

The answer to the question whether the Respondent has rights or legitimate interests in the disputed domain name is in this case inseparably connected with whether the disputed domain name was registered in bad faith. The Respondent argues that he got to know that “Romtelecom is in fact the new name of “Posta and Telecomunicatii”, the name of the national telephone company until 1990”, only in 1999 from users of his discussion forum. In addition, the Respondent argues that he got to know about the trademark of the Complainant only in 2000, when the trademark was published in the bulletin of Romanian Trademark Office OSIM. The Respondent also argues that he made several available Internet searches about similar trademarks and/or domain names before registering the disputed domain name.

At the same time, though, the Respondent argues that between “1994 and 1998, there was an exchange of emails between the Respondent and various groups of telecommunication users in Romania.” His specialized forum continued in 1998 by creating “www.romtelecom.com”. As mentioned above in this decision, the name Romtelecom has been used by Romtelecom company since 1991. In addition, in 1997, Romtelecom was transformed into a private company and in 1998 was partially privatized and OTE entered Romtelecom as a new shareholder. These developments were most probably among the most discussed and most significant topics in relation to telecommunications in Romania. The Panel finds it very hard to believe that the Respondent, with his professional background and interest in telecommunications and Romania, having participated in on-going discussions about Romanian telecommunications during these years, did not learn about Romtelecom until 1999. The Panel concludes that it is very likely that the Respondent knew about Romtelecom in 1998.

In addition, the Respondent portrays himself as familiar with IP protection. He argues that he made several on-line checks about potential conflicting trademarks or domain names when registering the disputed domain name. As an IP expert, he must have known that there was a significant probability that a large corporation would protect as a trademark the name used as its corporate name. Therefore, the Panel concludes that the Respondent either knew or should have known at the time of registering the disputed domain name of the trademark ROMTELECOM.

As evidenced by the Complainant, it is clear to the Panel that the disputed domain name must have mislead many consumers who believed that the disputed domain name was an official website of S.C. ROMTELECOM S.A. Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

For the reasons mentioned under B. above, the Panel also concludes that the disputed domain name has been 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, <romtelecom.com> be transferred to the Complainant.

Zbynek Loebl
Sole Panelist

Dated: June 1, 2005