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ARO v. Philip Price [2005] GENDND 1487 (1 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ARO v. Philip Price

Case No. D2005-0498

1. The Parties

The Complainant is ARO, Château-du-Loir, France, represented by Cabinet Plasseraud, France.

The Respondent is Philip Price, Austin, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <aro.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2005. On May 9, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 11, 2005, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the administrative, billing, and technical 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 May 19, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2005.

The Center appointed Anna Carabelli as the sole panelist in this matter on June 21, 2005, indicating that, absent exceptional circumstances, the decision would be due by July 5, 2005. The decision due date was then extended to August 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 the Rules, paragraph 7.

4. Factual Background

The Complainant has provided evidence (Attachment 3 to the Complaint) of several registrations for the trademark ARO in many countries, including United States of America, France, United Kingdom of Great Britain and Nothern Ireland, Norway, Finland, Poland, Turkey, New Zealand, China, Venezuela, Israel, Japan, Peru, Singapore, South Africa, Canada, Mexico, Hong Kong SAR of China.

The Complainant has also submitted evidence (Attachment 4 to the Complaint) of the use of the ARO trademark since 1955, in connection with the manufacture and sale of Complainant’s welding products.

The Complainant has registered the following domain names: <aro.fr> and <aronet.com> (Attachment 5 to the Complaint).

There is no evidence of any commercial use of the Domain Name by the Respondent and no active website exists under the Domain Name (Attachment 6 to the Complaint).

On November 22, 2004, the Complainant wrote to the Respondent for the purpose of acquiring the Domain Name but received no answer.

5. Parties’ Contentions

A. Complainant

Complainant contends that:

- the name ‘ARO’ is being used by Complainant since 1955, throughout the world and has acquired worldwide reputation;

- the Domain Name is identical to the Complainant’s trademark ARO;

- the Respondent has no rights or legitimate interests in the Domain Name since (i) no commercial use has ever been made of the Domain Name and no active website exists under the Domain Name; (ii) the Respondent cannot claim any trademark right in the name ‘ARO’; and (iii) the Respondent is not commonly known by the Domain Name;

- the Domain Name has been registered in bad faith since (i) at the time of registration the “Respondent must reasonably have had knowledge of the Complainant’s trademark ARO” given the Complainant’s “significant use of the mark “ARO” throughout the world” and (ii) the Respondent had never replied to the Complainant’s letter dated November 22, 2004, and “clearly has no intention whatsoever of giving up the proprietorship of the domain name in question, despite the request made legitimately by the Complainant supported by their earlier trademarks rights”;

- the Domain Name is being used in bad faith since (i) the concept of “use in bad faith” includes passive holding; (ii) the Respondent has registered the Domain Name in order to prevent the Complainant from reflecting its trademark ARO in a corresponding Domain Name; (iii) the Respondent could not possibly make any plausible actual or contemplated active use of the Domain Name other than illegitimate for the purpose of attracting, for commercial gain Internet users by creating a likelihood of confusion with the Complainant’s trademark.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the policy, the Complainant must prove each of the following:

(i) the domain name in issue is identical or confusingly similar to the Complainant’s trademark or service mark; and

(ii) the 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.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purposes of paragraph 4(a)(iii), shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by Respondent, shall be evidence of the Respondent’s right to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The Complainant has put forward sufficient evidence that it has acquired trademark rights in the name ‘ARO’ by virtue of several registrations worldwide.

The Domain Name is identical to the Complainant’s trademark. In fact, there is no difference between the two but for the suffix “.com” which has no legal significance when comparing the Domain Name with the Complainant’s trademark (The Vanguard Group Inc. v. Lorna Kang, WIPO Case No. D2002-1064; Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859).

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out in particular but without limitation three circumstances which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:

i) before any notice of the dispute to the Respondent, the Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or

iii) the 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 trademark or service mark at issue.

The Complainant has established prima facie evidence that none of the three circumstances establishing legitimate interests or rights mentioned above applies. As stressed by many UDRP decisions, in such a case the burden of proof shifts on the Respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683- Ditting Maschinen AG v. I.C.T. Company, WIPO Case No. D2003-0170; Universal City Studios Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784).

By not submitting a response, the Respondent has failed to invoke any circumstance under paragraph 4.c of the Policy, which can demonstrate any rights or legitimate interests in the Domain Name (Spadel S.A v. Peter Kisters, WIPO Case No. D2000-0526; Deutsche Bank AG v. Diego-Arturo Bruckner, WIPO Case No. D2000-0277; Talkcity Inc. v. Robertson, WIPO Case No. D2000-0009).

C. Registered and Used in Bad Faith

The final issue is that of bad faith registration and use by the Respondent. In the Panel’s view the Complainant has failed to allege and to establish facts sufficient to enable the Panel to find that the Respondent has registered and is using the Domain Name in bad faith.

The Complaint on this point is poor and exceedingly weak. The Complainant makes the following allegations: (1) that the absence of any reply to the Complainant’s letter of November 22, 2004, and the significant use of the trademark ARO made by the Complainant in the welding industry throughout the world clearly indicate the Respondent’s bad faith in registration; (2) that the absence of use of the Domain Name indicates passive holding as found in Telstra and other subsequent panels’ decisions and suggests that the Respondent has registered the Domain Name in order to prevent the Complainant from reflecting its trademark ARO in a corresponding domain name, and (3) that in the future the Respondent could not possibly make any plausible actual or contemplated active use of the Domain Name other than illegitimate for the purpose of attracting, for commercial gain Internet users by creating a likelihood of confusion with the Complainant’s trademark.

The documents submitted with the Complaint (catalogues and general commercial information on the Complainant’s business - Attachment 4) do not indicate that the trademark ARO is particularly well known (at least outside Complainant’s specific business field) and there is nothing to indicate that the Respondent knew or should have known the Complainant’s trademark. In addition, the Domain Name is a three-letter word which appears as a common abbreviation as confirmed by a quick search on Google search-engine that has shown that “aro” is used by many different users (amongst others: Army Research Office, Association for Research on Otolaryngology) as an abbreviation.

The Complainant also relies on the concept of passive holding as established in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. However, this principle does not apply to every instance of passive holding and the panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. The specific circumstances in the Telstra case included false name information in the WHOIS record, false address information, an extremely famous mark within the geographical region of both complainant and respondent and a mark that was entirely invented (Alberto Culver Company v. Pritpal Singh Channa WIPO Case No. D2002–0757). None of the above circumstances occur and are even alleged by the Complainant in this case.

Therefore the Panel concludes that the Complainant has not satisfied paragraph 4(a)(iii) 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 Complaint is denied.

Anna Carabelli
Sole Panelist

Dated: August 1, 2005