The Complainant is Newsphone Hellas Commercial Société Anonyme of Tele - Audio Information Services and Integrated Computer and Communication Services “Newsphone Hellas SA” of Athens, Greece, represented internally.
The Respondent is PrivacyProtect.org of Nobby Beach, Queensland, Australia; Maria Papadopoulou of Marousi, Attiki, Greece, represented by Vassilis Hatzopoulos, Greece.
The disputed domain name <oroskopos.tv> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2013. On November 29, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 4, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 6, 2013.
The Center verified that the Complaint together with the amended 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 December 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2013. The Response was filed with the Center on December 29, 2013.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on January 8, 2014. 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 Complainant transmitted on January 13, 2014 a supplemental filing, indicating that it was responding to information provided by the Respondent in its Response that was not reasonably available to Complainant at the time it filed its Complaint. By Administrative Panel Procedural Order No. 1 dated January 15, 2014, the Panel advised the parties that it had decided to accept and consider the supplemental filing, and the Panel provided the Respondent a period of five calendar days in which to respond to the supplemental filing. The Respondent transmitted its supplemental response by email dated January 19, 2014.
The Complainant in these proceedings is Newsphone Hellas Commercial Société Anonyme of Tele - Audio Information Services and Integrated Computer and Communication Services “Newsphone Hellas SA”, a company organized under the laws of Greece. The Complainant operates in Greece in the field of telecommunications. Further, according also to its own allegations, it operates a website in Greece with astrology content via the domain name <www.oroskopos.gr>.
The Complainant is the owner of the domain name <oroskopos.gr>, which was registered on April 3, 2003. The Complainant does not own a trademark registration for “oroskopos”.
The disputed domain name <oroskopos.tv> was registered on April 19, 2013. The Respondent registered and uses the disputed domain name for a website with astrology content.
The Complainant alleges that it has reputation in Greece in connection with telecommunication services and that it operates also a website with astrology content via the domain name <oroskopos.gr>. It goes on to say that it has no trademark or service mark registration for the word “oroskopos” and that an application for the registration of a design mark incorporating “oroskopos.gr” is pending. It goes on to point out that Greek law also recognizes rights on unregistered marks, if they acquire distinctiveness through use and mentions extracts of the Greek law. It further cites UDRP cases to support its claims. It says in effect that paragraph 4(a)(i) of the Policy is not confined to registered marks but also to unregistered marks, provided that through use and reputation they become distinctive.
The Complainant contends that it has substantially and continuously used the mark OROSKOPOS in connection with a domain name through the website “www.oroskopos.gr”. It says also that it displays the unregistered mark in various contexts such as its newsletter, in the advertisements of the site, and in its astrology programs. It further contends that it has common law rights in the word “oroskopos”.
It finally contends that because of its ownership of the mark, it has the right to an exclusive use of the mark OROSKOPOS and that, even though the mark is not registered in its favor, it has the right to restrain others from using the same mark or other marks, so that they may not cause confusion with its mark.
Further, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the word “oroskopos” or the disputed domain name.
The Complainant also contends that the disputed domain name was registered and is being used in bad faith. It was registered after the Complainant’s registration of its domain name. According to the Complainant, the Respondent has intentionally attempted to attract for commercial gain Internet users to its website.
The Respondent argues that the term “oroskopos” is generic and cannot be protected. It goes on to support its contention by invoking the meaning of the word, Greek cases, the EU law, court cases and UDRP cases. It refers also to academic writings.
The Respondent further alleges that it has rights in respect of the disputed domain name.
Concerning the third element of paragraph 4 of the Policy, the Respondent contends that it did not register the disputed domain name in order to resell it, that it did not intend to prevent the Complainant from making use of the word “oroskopos”. Also, it notes that it introduced a general disclaimer, which appears on its website. This disclaimer states that Respondent’s website is not connected with the websites of the Complainant “www.oroskopos.gr”, “www.oroskopos.org” and “www.oroscopos.gr”. It contends further that it made a proposal to the Complainant to transfer its content to <myoroskopos.tv>, which was rejected. It is to be noted that the Complainant gives its own reasons why it rejected the Respondent’s proposal. For the above reasons, the Respondent alleges that the disputed domain name was not registered and is not being used in bad faith.
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy.
According to paragraph 4(a) of the Policy, for this complaint to succeed in relation to the domain name, the Complainant must prove each of the following, namely that:
(i) The domain name is identical or confusingly similar to a trade mark of service mark in which the Complainant has rights;
(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.
Apart from the difference between “tv” and “gr” suffixes, the disputed domain name <oroskopos.tv> is identical to the Complainant’s domain name <oroskopos.gr>.
The Complainant does not have a registered trade mark/service mark for “oroskopos”. The Complainant contends that it has rights on “oroskopos” and that the latter is an unregistered trade mark or common law trade mark through use.
What are the circumstances in which the Complainant may claim common law or unregistered trademark rights for the purposes of the Policy? Paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides guidance:
“Consensus view: The Complainant must show that the name has become a distinctive identifier associated with the Complainant or its goods or services. Relevant evidence of such secondary meaning includes length and amount of sales under the trade mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the Complainant’s rights in a common law trade mark. For a number of reasons, including the nature of the Internet, the availability of trade mark like protection under passing-off laws, considerations of piracy, unregistered rights can arise for the purposes of the UDRP even when the Complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trade marks that are comprised of descriptive or dictionary words and therefore not inherently distinctive, there may be a greater onus on the Complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a Complainant’s claim to common law or unregistered trademarks rights, the less onus there tends to be on that Complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted”.
The word “oroskopos” is a Greek word and according to G. Bambiniotis, Dictionary of Modern Greek Language, 2nd edition 2005, it means, in liberal translation, “1) astrologist who predicts the future of someone 2) factor of horoscope of each person separately which relates with the exact time and place of the birth of a person”.
The question is whether the word “oroskopos” can be protected and be exclusively owned by a person/company. Both the Complainant and the Respondent applied for the registration of the mark in Greece. The decision of the Greek Court may give us some guidance. In Decision no. EX7074/213, regarding application no. 222655 “oroskopos” of Maria Papadopoulou, the Examiner of the Greek Mark Authority rejected the mark in class 45 for astrological and intellectual services, astrological predictions, services of advice in relation to astrology because of its descriptive character, according to the judgment of the Court. The same for “oroskopos.TV” of the same applicant for nο. 222656 for services in class 45 with the same justification. Concerning the device mark “ΩΡΟΣΚΟΠΟΣ” application no. 222981, filed by the President of the Complainant, it was filed for the classes 16 and 35, but it was not filed for class 45 for astrological services and other similar services. It is clear to the Panel that from the Greek case law up to now the mark “oroskopos” in class 45 for astrological services was not accepted.
The Complainant alleges that, because of use, advertisement of the mark, presence on the Internet etc., <oroskopos.gr> has acquired secondary meaning and it has to be considered as unregistered trade mark and common law trademark.
The Complainant refers, among others, to Panathinaikos Athlitikos Omilos-Football Société Anonym, Green Team S.A. v. Panathinaikos.com, WIPO Case No. D2007-1871.
The Panel does not believe that the cases are similar: the name “Panathinaikos” is famous in Greece and outside Greece for the activities of the football club and other activities. Further, the second complainant in the above case owned a registered trade mark for a figurative mark in Greece containing the image of a shamrock followed by the text “1908 PANATHINAIKOS FC”.
The Panel does not believe that the evidence filed on behalf of the Complainant supports the view that extensive use and reputation has made the word “oroskopos” a common law trade mark. The Complainant does not otherwise rely on any registered mark.
For the above reasons, the Panel cannot hold that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
In light of the Panel’s finding under section B above, it is not necessary for the Panel to make a determination under this element of the Policy.
In light of the finding in Section B above, the Panel declines to make a determination under this element of the Policy.
For the foregoing reasons, the Complaint is denied.
Christos A. Theodoulou
Sole Panelist
Date: January 28, 2014