The Complainant is Budget Rent A Car System, Inc. of New Jersey, United States of America, internally represented.
The Respondent is Nicolae Ganea of Malmoe, Sweden.
The disputed domain name <budget.ro> is registered with ROTLD.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2012. On September 19, 2012, the Center transmitted by email to ROTLD a request for registrar verification in connection with the disputed domain name. On September 20, 2012, ROTLD transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On October 3, 2012 the Center notified the Parties that the Complaint was filed in English but that according to the information received from ROTLD the language of the Registration Agreement is Romanian. Accordingly, the Complainant submitted a request for English to be the language of the proceedings on October 3, 2012, to which the Respondent did not reply. The Center thus informed the Parties that it would send all case-related communications in both English and Romanian, that it would accept a Response filed in either language, and that the language of the proceeding would be decided by the Panel once appointed.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 October 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2012.
The Center appointed Anna Carabelli as the sole panelist in this matter on November 23, 2012. 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.
As regards the issue of the language applicable to this dispute, paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Center notified the parties that, according to the information received from the registrar, the language of the registration agreement for the disputed domain name is Romanian and the Complainant has submitted a request that the proceedings be conducted in English based on the following:
- The registrar’s website “www.rotld.ro” is published both in Romanian and English;
- The “Rules for registration” posted on the registrar’s website “www.rotld.ro” provide that “10. The language for communication with the registrants and registrars is Romanian or English”;
- The Center’s website page pertaining to “Domain name Dispute Resolution Service for .RO” posts a link to the registrar’s English version of the registration agreement;
- Prior WIPO UDRP proceedings involving the Respondent have been conducted in English, e.g. Castrol Limited v. Nicolae Ganea, WIPO Case No. DRO2011-0001 for which the procedural history at “Language of the proceedings” is identical to the issues presented in this proceedings;
- The Respondent does not appear to be a resident of Romania, but rather Sweden, and is presumed to have familiarity with the English language.
Although properly notified, at the contact details provided by ROTLD, in both languages of the commencement of the proceedings, the Respondent chose not to object the Complainant’s request that English be the language of the proceedings and not to participate in the proceedings.
In accordance with previous UDRP decisions (see e.g., 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; Alphyra Romania S.A. v. Redpoint Software Impex S.R.L., WIPO Case No. DRO2008-0001; Advanced Micro Devices, Inc. v. Softconcept SRL, Suciu Alexandru, WIPO Case No. DRO2008-0002; SC Tip Top Food Industry SRL v. S.C. WEB4COMM SRL/ web4COMM S.R.L. Romania, WIPO Case No. DRO2008-0013; Symantec Corporation v. SC SOFTCONCEPT S.R.L., WIPO Case No. DRO2008-0014, Castrol Limited v. Nicolae Ganea, WIPO Case No. DRO2011-0001), the Panel determines according to the Rules under paragraph 11(a) that the language of these proceedings be English for the following reasons:
- The Center sent all the communications in both languages, Romanian and English and notified the Respondent of the Complainant’s request that English be the language of the proceedings;
- At the registration date of the disputed domain name - January 1, 1996 (according to the WhoIs data and the concerned 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 other Panels found in other previous cases (see Symantec Corporation v. SC SOFTCONCEPT S.R.L., WIPO Case No. DRO2008-0014 and the decisions cited therein);
- Despite the fact of being properly notified, the Respondent did not provide any Response and did not file any objection to English as the language of these proceedings;
- The Respondent was party to other cases under the Policy (e.g. Skandia Insurance Company Ltd v. Nicoleae Ganea, WIPO Case No. DRO2008-0009; Billa Aktiengesellschaft v. Ganea Nicolae, WIPO Case No. DRO2002-0001; Castrol Limited v. Nicolae Ganea, WIPO Case No. DRO2011-0001), where the language of the proceedings was English.
The Complainant is a Delaware corporation with its principal place of business in New Jersey, United States (US). The Complainant offers vehicle rental services under the trademark BUDGET via owned and operated “company stores” and through a wide network of franchisees and licensees in the US and in numerous countries worldwide, including Sweden and Romania.
The BUDGET trademark is protected as a registered trademark in the United States (annex 3 to the Complaint) and in many other countries including Sweden and Romania, by virtue of over 300 worldwide registrations or pending applications filed in the name of the Complainant. Annexed to the Complaint is a list of BUDGET trademark registrations worldwide (annex 4 to the Complaint).
The Complainant also owns various domain names, including <budget.com>, <budgettruck.com> and <budgettruks.com> pointing to the Complainant’s official websites (annex 6 to the Complaint).
According to the registrar’s verification response the Respondent registered the disputed domain name <budget.ro> on January 1, 1996. The disputed domain name does not currently resolve to an active website.
The Complainant contends that the disputed domain name is identical to or confusingly similar with its registered trademarks BUDGET since it incorporates the Complainant’s well-known mark in its entirety. The Complainant argues that the addition of the country-code top-level domain (“ccTLD) “.ro” has no significance when assessing identity or confusing similarity of a trademark and a domain name.
In addition, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and is not using the disputed domain name in connection with a bona fide offering of goods neither is making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name does not resolve to an active website and, according to the Complainant’s information and belief, the Respondent has never used or made preparation to use the disputed domain name in connection with bona fide offerings of goods or services.
The Complainant states that the disputed domain name was registered and is being used in bad faith. The Respondent cannot have ignored the existence of the Complainant when the disputed domain name was registered, given the strong reputation of the Complainant’s BUDGET marks and its extensive use worldwide in connection with vehicle rental and related services (annexes 5 and 6 to the Complaint). The Complainant alleges that the effect of the Respondent’s registration of the disputed domain name was to prevent the Complainant from reflecting its BUDGET marks in the corresponding domain name and to disrupt the Complainant’s business. The Complainant also argues that the Respondent has engaged in a pattern of such conduct, registering domain names corresponding to well-know trademarks.
The Respondent did not reply to the Complainant’s contentions.
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 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 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 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 the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) above.
The Complainant has proved that it owns numerous trademark registrations for the mark BUDGET in several countries including the United States of America, Romania and Sweden.
The disputed domain name fully incorporates the Complainant’s prior trademark BUDGET. In light of the above and of the fact that the addition of a ccTLD, may be ignored when assessing identity or confusing similarity of a trademark and a domain name (see, e.g. VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Billa Aktiengesellschaft v. Ganea Nicolae, WIPO Case No. DRO2002-0001; Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L., WIPO Case No. DRO2006-0001; Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001; Castrol Limited v. Nicolae Ganea, WIPO Case No. DRO2011-0001), the Panel finds that the Complainant has established the requirements of paragraph 4(a)(i) of the Policy.
The consensus view of WIPO UDRP panelists concerning the burden of establishing lack of rights or legitimate interests in respect of a domain name is as follows: “While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 2.1.)
In the present case the Complainant has established a prima facie case that none of the three circumstances establishing rights or legitimate interests mentioned under paragraph 4(c) of the Policy apply and the Respondent has failed to assert any rights or legitimate interests in respect of the disputed domain name.
The Complainant alleges that the Respondent’s reason in registering and using the disputed domain name is to prevent the Complainant to reflect its BUDGET trademark in a corresponding domain name. By not submitting a Response, the Respondent has failed to invoke any circumstances, which could demonstrate any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has established the second element under paragraph 4(a)(ii) of the Policy.
The Complainant has provided evidence that its BUDGET mark is widely known in connection with vehicle rental and related services. Given the international reputation of the BUDGET mark, the Panel finds that the Respondent cannot have ignored the Complainant’s trademark at the time it registered the disputed domain name. Such fact shows that the disputed domain name was registered in bad faith (see Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602; Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071; Revlon Consumer Products Corporation v. Easy Weight Loss Info, Augustinus Ferry Yonatan, WIPO Case No. D2010-0936; Hermes International SCA v. Cui Zhenhua, WIPO Case No. D2010-1743).
The fact that the disputed domain name does not resolve to an active website and does not appear to be used online otherwise does not affect the grounds for the Complaint. According to Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which was followed by several consistent WIPO UDRP decisions, “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”
The Panel finds that the Respondent’s passive holding of the disputed domain name meets the requirement of paragraph 4(a)(iii) that the domain name “is being used in bad faith” by the Respondent based on the following circumstances:
(i) the Complainant’s trademark is well known and firmly associated with the Complainant;
(ii) The Respondent has failed to submit an answer to rebut the evidence submitted by the Complainant;
(iii) The Respondent has no rights or legitimate interests in the disputed domain name, as established under paragraph 7(B) above and, as a consequence, the Respondent could not possibly make any plausible actual or contemplated active use of the disputed domain name other than illegitimate;
(iv) The passive holding of the disputed domain name by the Respondent for more than 15 years since its registration together with the circumstances of the case represent, in the opinion of the Panel, bad faith registration and use;
(v) The Respondent was found engaged in cybersquatting in other WIPO cases. E.g. see Skandia Insurance Company Ltd v. Nicoleae Ganea, WIPO Case No. DRO2008-0009; Billa Aktiengesellschaft v. Ganea Nicolae, WIPO Case No. DRO2002-0001; Castrol Limited v. Nicolae Ganea, WIPO Case No. DRO2011-0001), which in this Panel’s view amount to the Respondent being engaged in a pattern of conduct sanctioned by paragraph 4(b)(ii) of the Policy.
Accordingly the Panel finds that the Complainant has established the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <budget.ro> be transferred to the Complainant.
Anna Carabelli
Sole Panelist
Date: December 5, 2012