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Počkaj Pohištvo d.o.o., v. Povše Silvo [2005] GENDND 1305 (14 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Počkaj Pohištvo d.o.o., v. Povše Silvo

Case No. D2005-0351

1. The Parties

The Complainant is Počkaj Pohištvo d.o.o., of Kozina, Slovenia, represented by Colja, Rojs & Partnerji, Slovenia.

The Respondent is Povše Silvo, of Naselje Srecka Kosovela, Zagorje ob Savi, Slovenia.

2. The Domain Names and Registrar

The disputed domain names <alfastreet.com> and <alfastreet.net> are registered with CORE Internet Council of Registrars.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2005. On April 6, 2005, the Center transmitted by email to Intercosmos Media group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain names. The registrar by response advised that the correct registrar for the domain names at issue was CORE Internet Council of Registrars. On April 14, 2005, the Center transmitted by email a request to CORE Internet Council of Registrars for registrar verification in connection with the disputed domain names. On April 15, 2005, CORE Internet Council of Registrars 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.

On April 22, 2005, the Complainant amended the Complaint by indicating CORE Internet Council of Registrars as correct registrar for the disputed domain names.

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 paragraphs 2(a) and 4(a) of the Rules the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 22, 2005. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 12, 2005. The Response was filed with the Center on May 12, 2005.

The Center appointed Irina V. Savelieva as the Sole Panelist in this matter on June 1, 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 paragraph 7 of the Rules.

On June 1, 2005, the Complainant delivered unsolicited additional submissions to the Center which were accepted by the Panel on June 15, 2005, in accordance with established practice confirmed in numerous WIPO cases. The same day the Respondent requested to also file additional submissions. On June 17, 2005, the Panel in line with the principle of impartiality allowed an additional submissions by the Respondent not later than June 23, 2005, and indicated a new decision date as July 7, 2005.

4. Factual Background

The Complainant, a legal entity incorporated in Slovenia is the owner of trademarks incorporating the word “Alfastreet” as a word and as a part of graphic design. The trademarks are registered at national level in Slovenia and in other countries (USA, Chile, Columbia, Venezuela). The Complainant is holder of the domain name <alfastreet.si>.

The Complainant has been using the word “Alfastreet” since 1997 in connection with its business (mainly electronic gaming machines and incorporated components).

The Respondent is a national of Slovenia. The Respondent was involved in business with the Complainant since 1997. The Respondent is the owner of trademarks incorporating the word “Alfastreet” registered in Slovenia in different classes than the Complainant’s trademark.

The Complainant and the Respondent have ongoing court proceeding in Ljubljana District Court with regards to the trademarks incorporating the word “Alfastreet”.

The Respondent registered the disputed domain names on February 22, 1999 <alfastreet.com> and March 4, 2002 <alfastreet.net>.

5. Parties’ Contentions

A. Complainant

(a) The disputed domain names <alfastreet.com> and <alfastreet.net> are identical to the Complainant’s trademarks:

- The Complainant has registered numerous trademarks incorporating the word “alfastreet” on international and national levels for various classes (09, 16, 20, 28, 41 and 34) (Annex 3 to the Complaint),

- The Complainant has been using the trademark since 1997,

- The disputed domain names <alfastreet.com> and <alfastreet.net> are identical to the Complainant’s trademarks.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain names:

- The Respondent was acquainted with the trademark being a supplier of computer components to the Complainant.

- The Respondent filed for trademark registration which incorporates the word “alfastreet” on December 17, 2002, six days after Complainant’s filing for his trademark.

- On August 27, 2004, the Complainant brought a law suit in Ljubljana District Court for cancellation of trademarks registered by the Respondent on the ground of lack of conditions for registration and registration in bad faith.

- Respondent has no rights for registering an identical trademark for the same/similar goods, when the Complainant has already made filing for registration of the same trademark and in addition the Respondent’s filing was not good faith.

- On November 24, 2004, the Complainant received the decision of Ljubljana District Court with which the Court fully awarded the claim. Nevertheless, the decision is still not final as the Respondent has filed a request to reinstate the case.

- The Respondent is not entitled to use the disputed domain names including the trademarks deriving from it.

(c) The domain names were registered and are being used in bad faith:

- The Respondent registered the disputed domain names being aware of the Complainant’s trademark which in Complainant’s view demonstrates bad faith.

- The Respondent’s bad faith is shown by the mere registration since Respondent a) had no reasonable ground for registering domain in his name and b) was fully aware of the fact that the domain name was being used by another entity for the purposes of labeling and marketing its products.

- As a business partner the Respondent offered help with registration of domain name <alfastreet.com> and recommended the firm Softnet Ltd. to carry out the registration. The Complainant was assured that this domain name was registered in the Complainant’s name. The Complainant never authorised the Respondent to register the domain name in Respondent’s name and became aware of the fact that it was not registered in the Complainant’s name only after business cooperation between the parties was already terminated. According to the Complaint, shortly after that on March 5 2002, the Respondent registered in his name the domain name <alfastreet.net> without any notice to the Complainant.

- The Complainant on several occasions approached the Respondent with an offer to settle all outstanding issues concerning the disputed domain names, on July 28, 2004, the Complainant sent a letter to the Respondent to which no response was received.

- According to the Complainant, it is the Complainant who is paying for the maintenance of the disputed domain names and is actually using them. This creates a further legal uncertainty as the result of which the Complainant is suffering business and material losses.

- The Complainant through its business activity achieved for the domain name <alfastreet.com> to become known as the Complainant’s domain name. This name is the first pick with the existing search engines. However, since this domain name is registered to the Respondent’s name he may change IP of the domain name server and create links to his own web page through which he is marketing goods competitive to the Complainant’s goods.

- The domain names were registered in bad faith with intent to gain advantage and to obstruct the Complainant’s business.

- The Respondent is holding the disputed domain names as an argument for filing an objection against the Complainant’s trademark registration No. 200171742 which was not accepted by the Slovenian Intellectual property Office. Only when this objection was filed by the Respondent in fact the Complainant has become aware that the domain name was registered in Respondent’s name.

B. Respondent

(a) The disputed domain names <alfastreet.com> and <alfastreet.net> are identical to the Complainant’s trademarks:

- The Respondent acknowledges that the Complainant owns the trademarks listed in the Complaint. However, the Respondent himself is the owner of trademarks incorporating the word “Alfastreet” namely ALFASTREET, ALFASTREET.COM and ALFASTREET.NET for classes 9, 38 and 42 since December 17, 2002 (Annex 1 to the Response).

- The decision of the Ljubljana District Court in not final and considering that both the Complainant and the Respondent have registered trademarks in different classes the Court may recognise the rights of both parties to their respective trademarks.

- The Respondent denies that the Complainant being a legal entity Počkaj Pohištvo d.o.o has use the trademark prior to the domain name registration. The documents which are used by the Complainant to prove this fact (Annex 4 to the Complaint) are not the documents related to the above company but to another legal entity namely: Mizarstvo Iztok Počkaj s.p. The Respondent further contests the authenticity of these documents and that there not are in fact official documents.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain names:

- The majority owner of the company Počkaj Pohištvo d.o.o. (the Complainant) is an individual Iztok Počkaj. He and the Respondent were very good friends since the beginning of the 80s. In December 1997 they started a business project called “Alfastreet’ for development and manufacturing of electro-mechanical roulette. Mr. Počkaj was in charge of producing wood and metal components, the Respondent through his company Electra d.o.o. was in charge of electronic components. The Respondent’s company Electra d.o.o. was also a supplier of computers for the project.

- The Respondent registered the domain name <alfastreet.com> as an official domain name for the project and not as his own domain name. It followed the agreement between Mr. Počkaj and the Respondent and actual registration was made when Mr. Počkaj was away on vacation. The first application of the domain name <alfastreet.com> had two email addresses: silvo.povse@alfastreet.com and iztok.pockaj@alfastreet.com.

- The cooperation between the partners in this project was soon terminated and the Complainant decided to arrogate the name of the common project “Alfastreet”.

- The Respondent contests the fact that the domain name registration was done without authorisation. It was based on the agreement between the Complainant and the Respondent and although the registration was made in the Respondent’s name it was registered for common business project.

- The Respondent informed the Complainant about the domain name registration in February 1990 by email sent to Mr. Počkajs address at mizarstvo.pockaj@siol.net (Annex 2 to the Response).

- The Respondent contests that the maintenance of the domain name is paid by the Complainant, which was and still is paid by the Respondent.

- The Respondent contests the Complainant’s statement that the latter approached the Respondent many times with proposals to resolve the situation with the disputed domain names. After their cooperation was terminated the parties did not have any contacts until 2004. As for the letter sent by the Complainant the Respondent did not respond to it due to short time for responding and vacation period.

- The Complainant is still using the disputed domain name for his official website and the Complainant without notifying the Respondent moved the domain name from IP Softnet d.o.o. to IP Perftech d.o.o.

- Therefore, the Respondent contests that the registration of the disputed domain names by him was done without proper ground, it was done for the common project and there was no intention to use it otherwise.

(c) The domain names are registered and are being used in bad faith:

- The Respondent reiterates his arguments under (b) above.

- The Respondent contested that the registration of the disputed domain names by him was made in bad faith. The registration was done for the common project and there was no intention to use the domain names otherwise.

6. Supplemental Filings

A. Complainant

(a) The disputed domain names <alfastreet.com> and <alfastreet.net> are identical to the Complainant’s trademarks:

- The Complainant contests the Respondent’s statement that there is a possibility that the Ljubljana District Court would decide that both parties have right to use their respective trademarks. The Complainant reiterates that there are facts confirming that the Respondent registered trademarks in bad faith.

- The Complainant states that the documents presented by him to prove that the trademark was used from 1997 are authentic. The legal entity Mizarstvo Iztok Počkaj s.p. mentioned by the Respondent as a third party is fact is a legal predecessor of the current legal entity Počkaj pohisto d.o.o. (the organisational form was changed from a sole contractor to a limited liability company) and suggest possible verification of that through the third parties to whom the documents were addressed.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain names:

- The Complainant reinstates his argument that the relations between the parties in no way were close to any common project and the role of the Respondent was limited solely to sales of computer components. The Respondent was never involved in any product development for the Complainant.

- Except the delivery of components there was never any “common project” between the parties.

- There was never any agreement regarding the disputed domain name registration. The Complainant asked the Respondent to register the domain name for him due to the fact the Respondent was familiar with necessary procedures at Softnet Ltd., the Respondent was never given a mandate to register the domain name in his own name.

- Although the Respondent might have informed the Complainant regarding the registration of the domain name, the Complainant was not informed of the fact that the registration was done in the Respondent’s name.

(c) The domain names were registered and are being used in bad faith:

- The Complainant confirms that indeed it is using the disputed domain name <alfastreet.com> for its products and services. However, this domain name is registered in Respondent’s name which creates legal uncertainty. The Complainant is potentially suffering immense business and material losses.

- The Complainant further confirms that indeed the Respondent is paying maintenance fees and fees for the updates of the domain name <alfastreet.com>. However, monthly fees for this domain name and e-mail accounts are paid by the Complainant. The Complainant further argues that the fact of paying maintenance fees by the Respondent is another example of him acting in bad faith since the purpose of it is to prevent the expiration of registration and possible acquisition of this domain name by the Complainant.

- The Complainant reiterates that there were several attempts to settle with the Respondent the dispute over the disputed domain names at issue.

B. Respondent

(a) The disputed domain names <alfastreet.com> and <alfastreet.net> are identical to the Complainant’s trademarks:

- The Respondent emphasizes that the Ljubljana District Court decision is not final and the dispute between the parties is not yet resolved at judicial level. The Respondent further claims that the first instance court decision was not valid in May 2005.

- The Respondent contests the Complainant’s statement that the documents presented by him to prove that the trademark was used from 1997 are authentic. The legal entity Mizarstvo Iztok Počkaj s.p. was never a predecessor of legal entity Počkaj Pohišto d.o.o. (the Complainant).

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain names:

- The Respondent repeats that his role was not only the supply of computer components. He further claims that it was him who initially convinced Mr. Iztok Počkaj to jointly cooperate in developing electro-mechanical roulette. All electronic parts were developed by the Respondent’s company Electra d.o.o. The Respondent attaches an e-mail from Mr. Iztok Počkaj of December 14, 1998, addressed to Mr. Silvo Povše and his colleague with pictures and sketches of the membrane keyboard for electronic roulette.

- The Respondent informed the Complainant regarding about the registration of the domain name by e-mail and arrange for email addresses for each of the partners.

(c) The domain name was registered and is being used in bad faith:

- The Complainant has been using the disputed domain name <alfastreet.com> illegally for many years after two employees of the Respondent started to work for the Complainant.

- The Respondent had no intention of causing any damage to the Complainant and was ready for peaceful solution.

- The Respondent is not able to use the disputed domain name, the website “www.alfastreet.com” automatically refers to the website of the Complainant “www.alfastreet.si”.

7. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:

(i) the disputed 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 the domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Identical or Confusingly Similar

The Complainant has a number of registered trademarks incorporating the word “Alfastreet” both as a word and a graphical design registered at national and international level including:

- trademark “Alfastreet, gaming instrument, ‘www.alfastreet.com’” (graphical design) No. 200271742 registered on April 9, 2004 (application on December 11, 2002) for classes 9, 16, 28 (Slovenia),

- trademark “Alfastreet” No. 200370463 and No. 200370464 registered on December 10, 2003 (application on April 4, 2003) for classes 20, 28, 41 (Slovenia),

- trademark “Alfastreet” (graphical design) No. 200370465 registered on December 10, 2003 (application April 4, 2003) for classes 20, 28, 41 (Slovenia),

- trademark “Alfastreet” (graphical design) No. 200370465 registered on February 18, 2004 (application May 5, 2004) for classes 28, 41, 43 (international),

- other national registration (USA, Chile, Columbia, Venezuela) (Annex 3 to the Complaint).

The Complainant has registered domain name <alfastreet.si> registered on January 15, 2004 (Annex 3 to the Complaint).

The Respondent has registered the domain names <alfastreet.com>d on February 22, 1999, and <alfastreet.net> on March 4, 2002.

The Panel finds that the disputed domain names are identical to the trademarks registered by the Complainant.

In terms of disputed domain names and the trademarks registered by the Complainants the Panel infers the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.

However, for the purposes of further deliberation the Panel notes that the disputed domain names were registered by the Respondent on February 22, 1999, and on March 4, 2002, prior to the first trademark registration by the Complainant (December 11, 2002 being the date of the first application).

The Respondent has a number of trademark registrations namely:

- trademark “Alfastreet.com” No. 200271763 registered on September 19, 2003 (application December 17, 2002) for classes 9, 38, 42 (Slovenia),

- trademark “Alfastreet” No 200271764 registered on September 19, 2003 (application December 17, 2002) for classes 9, 38, 42 (Slovenia),

- trademark “Alfastreet.net” No 200271764 registered on September 19, 2003 (application December 17, 2002) for classes 9, 38, 42 (Slovenia) (Annex 5 to the Complaint).

Moreover, the Panel would like to note, that pursuant to paragraph 5 of the Policy, the Panel considers that it has no ground to offer any comments or to draw any conclusions with regard to the status of the trademark case between the Complainant and the Respondent at Ljubljana District Court and the effect it may have on both parties’ rights on their respective trademarks.

The Panel further notes that the Complainant and the Respondent have trademarks incorporating the word “Alfastreet” for different classes under Nice classification.

Rights or Legitimate Interests

The Complainant contends the Respondent has no rights or legitimate interests in the disputed domain name.

According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:

(i) respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.

The Respondent may show rights and legitimate interests, non-exhaustively, by producing proof under paragraph 4(c)(i-iii) of the Policy.

Firstly, there is no evidence that before any notice of a dispute with the Complainant (or after it), the Respondent was using the disputed domain name for a legitimate offer of goods and services. The website corresponding to the disputed domain name <alfastreet.com> merely refers and immediately displays the Complainant’s website at “www.alfastreet.si”. The Respondent failed to present any evidence of him using the disputed domain names for a bona fide offering of goods and services.

Secondly, as for the Respondent’s proof under paragraph 4(c)(ii) of the Policy there is no evidence that the Respondent has been commonly known by the disputed domain name. There is no information that the Respondent may be known under the disputed domain names as its business name or its company name. The Respondent showed him conducting business under the company named Electra d.o.o.

Thirdly, there is no evidence that the Respondent is making a legitimate non-commercial or fair use of the dispute domain names.

Thus, the Panel finds no evidence following paragraph 4(c)(i-iii) of the Policy that the Respondent was using (is using) the disputed domain name for a legitimate offering of goods and services; or the Respondent was known (is known) under the disputed domain names: or the Respondent was making (is making) a legitimate non-commercial or fair use of the disputed domain names.

Having established these facts the Panel draws attention to the wording of paragraph 4(c) referring to the circumstances demonstrating the Respondent’s rights or legitimate interests stipulated in paragraph 4(c)(i-iii) as being “without limitation”. Consequently, a panel in a particular case may find other circumstances to be sufficient for proving a respondent’s rights and legitimate interests in a domain name. One such circumstance, without any doubt, shall be the fact of a respondent being an owner of a trademark incorporating a disputed domain name.

The spirit of the Policy is to protect and facilitate the rights and interests of a trademark owner in being able to reflect his trademark in a corresponding domain name. In cases when both a complainant and a respondent have valid registered trademarks incorporating disputed domain name, in particular, when such trademarks are for different trademark classes, an administrative panel should find a respondent as having rights and legitimate interests in the disputed domain names. This rule is confirmed by the wording of paragraph 4(c)(ii) of the Policy which states that a respondent may prove his rights and legitimate interest by demonstrating that he has been commonly known by the domain name, even if he has “acquired no trademark or service mark rights”.

Thus, the Panel concludes that the fact of the Respondent in this case having registered trademarks presents sufficient evidence of the Respondent rights and legitimate interest in the disputed domain names.

As for the Complainant’s submission that the Respondent was not entitled to register the disputed domain name and the trademarks deriving from it, the Panel comments as follows: it is outside this Panel’s competence in the UDRP administrative proceeding to consider whether the Respondent was entitled to register a trademark containing the word “Alfastreet”. The established fact is that at the time of this administrative proceeding the Respondent has three valid registered trademarks incorporating the word “Alfastreet”. Under the Policy this circumstance alone is sufficient to demonstrate the Respondent’s rights and legitimate interests in the disputed domain names.

The Panel notes the Complainant’s argument that he has been using a trademark incorporating the word “alfastreet” since 1997 and the documents presented as evidence of that (Annex 4 to the Complaint). The Panel further notes that Respondent contests the authenticity of these documents. The Panel believes that it not in a position to comment on the Complainant’s arguments. The UDRP proceeding is a fast and efficient administrative procedure tailored to deal with relatively straight forward cases of bad faith domain name registration. Under the UDRP there are limited means for a panel to examine all facets and details of a longstanding relationship between two parties as is the case here. As opposed to in national courts, there is no oral hearing. Therefore a national court may be better equipped to deal with some of the assertions in this case, in particular the assertions relating to the authenticity of filed documents.

Thus, the Panel finds the Complainant failed to carry out his burden of proof to show that the Respondent has no legitimate rights or interests in the disputed domain name.

As a consequence, the Complaint has failed and it is not necessary for this Panel to discuss the third element of the Policy.

8. Decision

For all the foregoing reasons, the Complaint is denied.

Irina V. Savelieva
Sole Panelist

Dated: July 14, 2005