In the matter of an arbitration under the WIPO Expedited Arbitration Rules for Domain Name Dispute Resolution under .PL
Germany
Claimant
Czech Republic
Respondent
Dr. Christian Gassauer-Fleissner
Law Firm Ruskov
Bulgaria
Mihaela Maravela Law Firm
Romania
This is the Award issued by me as Sole Arbitrator in a dispute between Cristian Stollberg (the “Claimant”) and MITON CZ, s.r.o. (the “Respondent”) regarding a dispute over the domain name <bonami.pl> (the “disputed domain name”).
1.1.1. The Claimant is Cristian Stollberg of Germany.
1.1.2. The Respondent is MITON CZ, s.r.o. of the Czech Republic.
1.2.1. This case has been submitted under Articles 6-9 of the WIPO Expedited Arbitration Rules for Domain Name Dispute Resolution under .PL (the “Expedited Rules”; available at https://www.wipo.int/amc/en/domains/rules/cctld/expedited/pl/index.html). Both parties have signed the Arbitration Agreement in accordance with Article 6 Expedited Rules.
1.2.2. The version of the Expedited Rules applicable to the present arbitral proceedings is, pursuant to Article 2(b) Expedited Rules, that in effect as of the date of commencement of this arbitration.
1.2.3. In accordance with Article 34(a) Expedited Rules, the Parties agreed that the Place of Arbitration be Vienna, Austria.
1.3.1. On May 8, 2020, the Claimant transmitted by email to the WIPO Arbitration and Mediation (“Center”) and to the Respondent the Request for Arbitration together with the Statement of Claim (together, the “Statement of Claim”) in accordance with Article 10 Expedited Rules.
1.3.2. Pursuant to Article 8 Expedited Rules, the date of commencement of the arbitration is May 8, 2020.
1.3.3. The Respondent transmitted by email to the Center the Answer to the Request and Statement of Defense on May 28, 2020.
1.3.4. On June 18, 2020, after receipt of the Statement of Acceptance, Impartiality and Independence, the Center appointed the undersigned, Dr. Christian Gassauer-Fleissner, as Sole Arbitrator pursuant to Article 15 Expedited Rules.
1.3.5. On June 22, 2020 the Claimant submitted a supplemental observation both concerning procedural and substantive aspects of the dispute. On July 1, 2020 the Respondent submitted a supplemental observation in response to the Claimant’s supplemental observation.
1.3.6. On July 17, 2020 a preparatory conference was conducted pursuant to Article 39 in which the Parties agreed to Vienna as the place of arbitration and to the Uniform Domain Name Dispute Resolution Policy (the “UDRP” or the “Policy”) as the law applicable to the substance of the dispute. Furthermore, the Respondent’s objections against the jurisdiction of the Tribunal were discussed. The parties waived their right to request a hearing and stated that they are not amenable to pursuing a settlement agreement.
1.3.7. On August 18, 2020, with reference to Article 44 Expedited Rules, the Tribunal declared the proceedings closed.
1.3.8. On August 18, 2020, after the Tribunal declared the proceedings closed, the Respondent asked the Tribunal to re-open the proceedings according to Article 44(b) Expedited Rules and allow a cost submission from the Respondent. The Tribunal did not follow this request.
1.4.1. The Respondent argues that, despite both parties having signed the Arbitration Agreement, said agreement is not valid, as the signature of the Respondent was obtained through duress. As a consequence, the Respondent argues, the Tribunal should dismiss the claim due to lack of jurisdiction.
1.4.2. The Respondent claims that it was under duress when signing the Arbitration Agreement because Article 6(c) Expedited Rules stipulates that “if the Respondent does not sign the Arbitration Agreement, the Domain Name will be locked and after a period of 3 months from the expiry of the 30 day period provided in Article 6(b), it will be cancelled as stated in paragraph 23 of the Registration Agreement between the Respondent and NASK”. The Respondent further argued that the Expedited Rules differ in procedural and substantive respects from the UDRP, which is applicable in most domain name disputes, in that the Expedited Rules provide for an arbitration proceeding in which a final decision is rendered, whereas the UDRP does not. Therefore, the Respondent argued, the Expedited Rules are obliging the Respondent to consent to arbitration under pain of the disputed domain name being cancelled. Furthermore, the Respondent stated that the fact that the Respondent consented to this regime when registering the disputed domain name does not exclude duress since such consent is the only way to register a “.pl” domain name.
1.4.3. Article 31 Expedited Rules states that the Tribunal shall have the power to hear and determine objections to its own jurisdiction, including any objections with respect to the validity of the Arbitration Agreement.
1.4.4. According to Article 46(c) Expedited Rules, an Arbitration Agreement shall be regarded as effective if it conforms to the requirements concerning form, existence, validity, and scope of either the law or rules of law applicable in accordance with Article 46(a) Expedited Rules, or the law applicable in accordance with Article 46(b) Expedited Rules.
1.4.5. According to Article 46(a) Expedited Rules, the Tribunal shall decide the substance of the dispute in accordance with the law or rules of law that it determines to be appropriate, taking into account any observations that the parties may have made.
1.4.6. According to Article 46(b) Expedited Rules, the law applicable to the arbitration shall be the arbitration law of the place of arbitration, unless the parties have expressly agreed on the application of another arbitration law and such agreement is permitted by the law of the place of arbitration.
1.4.7. The law applicable to the substance of the dispute is the UDRP established by the Internet Corporation for Assigned Names and Numbers (“ICANN”) (see in detail below 3.1.).
1.4.8. The Parties did not expressly agree on the application of an arbitration law different from the arbitration law of the place of arbitration. The place of arbitration is Vienna, Austria (see in detail above 1.2.3). According to Article 46(b) Expedited Rules, the law applicable to the arbitration proceedings is therefore Austrian law.
1.4.9. The UDRP does not contain provisions concerning the validity of arbitration agreements or agreements and contracts in general. The validity of the Arbitration Agreement will therefore solely be examined under Austrian law.
1.4.10. Under Austrian law, arbitration agreements may be annulled based on the general rules concerning error (Section 871 Austrian General Civil Code, Allgemeines bürgerliches Gesetzbuch, hereafter “ABGB”), wilful deceit, and threat (Section 870 ABGB). A contract may be annulled due to threat if a party concluded the contract as a result of an unjust and founded fear of a negative consequence threatened by another party (Pletzer in Kletečka/Schauer, ABGB-ON, edition 1.03, § 870 para 14 to 17). However, a threat with a negative consequence, which the person making the threat has a legal right to inflict, is not an unjust threat if the person marking the threat pursues a legitimate interest. Thus, a threat is only unlawful if it serves as a means of achieving a success to which the threatened party had no claim or, in cases where neither the means nor the ends are unlawful in themselves, if it is inappropriate to use precisely these means to achieving precisely this end (Austrian Supreme Court of 27.11.1997, 8 ObA 204/97a).
1.4.11. According to prevailing legal doctrine, a contract may further be null and void if it results from the abuse of a dominant market position from one of the parties (see Gugerbauer, KartG und WettbG, 3. edition § 5 para Rz 3; Vartian/Schuhmacher in Petsche/Urlesberger/Vartian, KartG, 2. edition, § 3 para 113).
1.4.12. These general provisions must be interpreted in accordance with the case law of the European Court of Human Rights (hereafter “ECtHR”) concerning the applicability of Article 6 European Convention on Human Rights (hereafter “ECHR”) to arbitration proceedings. The ECtHR ruled numerous times that Article 6 ECHR does not preclude the establishment of arbitral tribunals to settle certain pecuniary disputes between individuals. However, the waiver of rights secured by Article 6 ECHR through signing an arbitration agreement is only compatible with the ECHR provided it is voluntary and therefore established in a free, lawful, and unequivocal manner (ECtHR 40575/10 and 67474/10 Mutu and Pechstein v. Switzerland, para 94 to 96).
1.4.13. Concerning the question whether the sanction of cancellation of the disputed domain name stipulated under Article 6(c) Expedited Rules constitute an unjustified threat under Section 870 ABGB, it must first be noted that this sanction is not only stipulated under Article 6(c) Expedited Rules, but is also provided under Article 20 and 21 of the .pl Domain Name Regulations as of December 18, 2006 of the Naukowa i Akademicka Sieć Komputerowa (hereafter “NASK Regulations”) (available at: https://www.dns.pl/en/pl_domain_name_regulations). The Naukowa i Akademicka Sieć Komputerowa (hereafter “NASK”) maintains the registry of country code domains, enabling registration of “.pl” domain names as well as a series of functional and regional domains. Holders of “.pl” domain names enter into an agreement (the “Registration Agreement”) with NASK concerning the registration and the maintenance of a domain, which is governed by the NASK Regulations.
1.4.14. When registering the disputed domain name and entering into the Registration Agreement, the Respondent therefore agreed that, in the event of a dispute, its refusal to sign the Arbitration Agreement would lead to the cancellation of the disputed domain name. The Respondent itself – which the Respondent admits – therefore contractually granted a right to cancel the disputed domain name for exactly this situation. The Tribunal also does not see an illegitimate interest pursued by NASK. Rather it seems clear that the sanction of cancellation of a domain name serves to ensure fast and effective legal proceedings in case of a dispute between a domain name holder and a holder of a prior right. In contrast, the Respondent did not provide any arguments or evidence showing why the fact that it is required to engage in the present arbitration proceedings or lose the disputed domain name unduly violates its interests and rights.
1.4.15. The sanction of cancellation of the disputed domain name in case of refusal by the domain name holder to sign the Arbitration Agreement therefore does not constitute an unjustified threat since the Respondent contractually granted a corresponding right, and such sanction serves a legitimate and appropriate interest.
1.4.16. However, the Respondent claims that its consent to the Registration Agreement cannot justify the sanction of cancellation, since such consent is the only way to obtain a “.pl” domain name.
1.4.17. The Tribunal interprets this assertion to mean that the Respondent essentially claims that his consent to the sanction of cancellation was invalid since it was the result of an abuse of a dominant market position by NASK, which effectively holds a monopoly concerning the registration of “.pl” domain names.
1.4.18. However, it does not per se constitute an abuse of a dominant position if an undertaking holding a dominant position requires the conclusion of an arbitration clause. An abuse may only exist if the dominant entity secures an unfair advantage for itself through the arbitration clause. This may, for example, be the case if the procedural law applicable to the arbitration proceedings does not sufficiently safeguard the rights of the other party (German Federal Court of Justice from 7.6.2016, KZR 6/15).
1.4.19. The Respondent did not provide any evidence for such an abuse on the part of NASK. Moreover, NASK is not a party to the present proceedings or the Arbitration Agreement and the Tribunal does not see any reason why NASK should have any interest in securing an unfair advantage for any side of the present dispute. The Tribunal therefore sees no reason why the consent of the Respondent to the Registration Agreement and subsequently the Arbitration Agreement should be invalid due to an abuse of a dominant position on the part of NASK or any other party.
1.4.20. This result is also in line with the case law of the ECtHR, which held numerous times that consent to an arbitration agreement is voluntary if the consenting party had been free to establish commercial relations with the partners of their choosing without affecting their freedom and capacity to engage, with other partners, in projects within their respective fields of activity (ECtHR 41069/12 Tabbane v. Switzerland (dec.); ECtHR 1742/05 Eiffage S.A. and Others v. Switzerland (dec.); ECtHR 35943/02 Transportes Fluviais do Sado S.A. v. Portugal (dec.)). A lack of voluntary consent was only found in a case where the choice of the consenting party was between accepting the arbitration clause and thus earning a living by practising her profession, or not accepting it and being obliged to refrain completely from earning a living from her chosen profession (ECtHR 40575/10 and 67474/10 Mutu and Pechstein v. Switzerland).
1.4.21. The Respondent did not provide any evidence showing that obtaining a “.pl” domain name was the only way to carry out its business activity – the operation of an online store – in Poland or any other territory. It furthermore seems very likely to the Tribunal that the Respondent could have operated its business under a different Top-Level Domain, for example “.com”. The Tribunal therefore sees no reason why the consent of the Respondent given in the Registration Agreement was not voluntary.
1.4.22. The Arbitration Agreement is therefore valid and effective, and the Tribunal has jurisdiction in the present dispute.
2.1.1. The Claimant is the owner of the International trademark BONAMI registered under No. 1351030 (“Claimant’s trademark”), registered on January 31, 2017. This trademark designated the territory of Poland. Against the registration, no oppositions were filed and there are no actions pending in Poland against its validity.
2.1.2. After the registration of Claimant’s trademark, the Claimant explored the possibility of using the BONAMI mark and in doing so discovered that the Respondent applied for the European Union Trade Marks (“EUTM”) registration nos. 018024693 and 018009799 for BONAMI (together referred to as “respondent’s EUTMs”) at the European Union Intellectual Property Office (“EUIPO”). Following this discovery, the Claimant filed oppositions against both of respondent’s EUTMs. The opposition proceedings before the EUIPO are currently pending.
2.1.3. The Claimant was then contacted by a representative of BONAMI CZ, which is an affiliate of the Respondent, with the aim to obtain Claimant’s trademark. However, the following correspondence did not lead to a settlement.
2.1.4. The Claimant then decided to initiate the present proceedings to obtain the disputed domain name, which unlawfully prevents him of being able to make full use of his trademark in the territory of Poland.
2.1.5. First, the disputed domain name solely consists of the BONAMI mark and is therefore confusingly similar to Claimant’s trademark.
2.1.6. Secondly, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Claimant never agreed to the use of the disputed domain name by the Respondent and the Respondent registered its marks after he learned of the Claimant’s rights. The Claimant therefore filed oppositions against the Respondent’s EUTMs. Further evidence for Respondent’s lack of rights or legitimate interests is that the Respondent contacted the Claimant after he filed the oppositions, most likely to purchase the Claimant’s trademark.
2.1.7. Thirdly, the disputed domain name was registered and is being used in bad faith. The fact that the Claimant cannot register the BONAMI mark as a domain name in Poland despite having registered this mark as a trademark is in itself evidence of bad faith. Furthermore, the fact that the Respondent registered its EUTMs and the disputed domain name even though it is publicly available information that the Claimant holds trademark rights to the BONAMI mark and that the Respondent contacted him after he filed the oppositions against the Respondent’s EUTMs are evidence of bad faith.
2.1.8. Moreover, contrary to the assertion of the Respondent, there is no evidence that the Claimant registered his trademark in bad faith or by fraud. The revocation action of the Respondent in Romania against the basic registration of Claimant’s trademark (see below 2.2.5) should not be taken into account by the Tribunal. The Respondent has provided no evidence showing that the disputed domain name was used for commercial activities starting in 2014.
2.1.9. The Claimant by way of relief pursuant to Article 36(a) Expedited Rules requests that the disputed domain name be transferred to the Claimant, and the costs of the arbitration proceedings amounting to EUR 1,500 be awarded to the Claimant.
2.2.1. The Respondent is part of a larger group of companies acting in various fields of business. Part of this group of companies is BONAMI CZ, which operates an e-shop under the BONAMI mark since 2012 and has since become a well-known retailer of furniture, home appliance, interior and exterior decoration, and other household products, currently having an extensive European presence. This e-shop started in the Czech Republic in 2012. In 2013, BONAMI CZ registered the BONAMI mark as a trademark in the Czech Republic.
2.2.2. Already in November 2012, BONAMI CZ and the Respondent had registered the domain names <bonami.cz>, <bonami.sk>, and the disputed domain name <bonami.pl>.
2.2.3. The Respondent and BONAMI CZ expanded their business from the Czech Republic to Poland in 2014, to Slovakia in 2015, and to Romania in 2016. After the Respondent’s entrance into the Romanian market was publicly announced its main competitor (hereinafter the “Respondent’s Competitor”) on the Romanian market registered the BONAMI mark as a trademark: first a Romanian national registration filed in October 2016, followed by a second Romanian national registration in February 2017, and an extension of the October 2016 national trademark to an international trademark on January 2017. The last mentioned international trademark is the Claimant’s trademark.
2.2.4. In February 2019, the Respondent filed an invalidity action against the Romanian BONAMI trademarks for having been registered in bad faith. Moreover, in March and November, 2019 injunction claims against the Respondent filed by the Respondent’s Competitor based on the Romanian BONAMI trademarks were rejected in a final decision by the Romanian courts, due to the prior rights held by the Respondent.
2.2.5. Only in April 2019, Claimant purchased the international trademark based on the Romanian BONAMI trademarks (the Claimant’s trademark); most likely because the Respondent’s Competitor, realized that the invalidity action filed against the basic registration of this trademark by the Respondent will likely be successful.
2.2.6. Furthermore, in January and February 2019, respectively, the Respondent registered its EUTMs based on extensive and prior use in European countries and prior trademark rights in the Czech Republic. After the Claimant filed oppositions against these marks, the Respondent’s affiliate BONAMI CZ contacted the Claimant to attempt an amicable settlement of the conflict during the cooling-off period. However, the Claimant opted out of the cooling off period in the opposition proceedings before the EUIPO in January 2020.
2.2.7. On the basis of these facts, it is clear that the Claimant’s claim to the disputed domain name is groundless and should be rejected.
2.2.8. First, the Claimant’s trademark is invalid due to a bad faith registration. Therefore, the disputed domain name is not identical or confusingly similar to a trademark or service mark in which the Claimant has rights.
2.2.9. Secondly, the Respondent uses the disputed domain name in connection with a bona fide offering of goods and services. Furthermore, the Respondent is commonly known by the name BONAMI and holds trademarks and other rights protecting this mark. Thus, the Respondent has rights and legitimate interests in the disputed domain name.
2.2.10. Thirdly, the Respondent could not have registered the disputed domain name in bad faith since it registered the domain name in November 2012, and thus four years before the Claimant’s trademark was registered.
2.2.11. Moreover, the Claimant neither uses the BONAMI mark nor is taking steps to prepare the use of this mark.
2.2.12. The Respondent by way of relief pursuant to Article 37 Expedited Rules requests that the Tribunal dismisses the claim of the Claimant for lack of jurisdiction or alternatively, in the event that the Tribunal finds that it has jurisdiction to hear the present dispute, dismisses the claim of the Claimant as unfounded and in any event to order the Claimant to bear all the costs of the arbitration, including the Respondent’s costs on a full indemnity basis, including attorney’s fees and expenses and all fees and other expenses incurred in participating in the present arbitration proceedings.
3.1.1. The Claimant and the Respondent signed the Arbitration Agreement on February 26 and March 3, 2020, respectively. The arbitration agreement included the following paragraphs:
“We, the undersigned parties, hereby agree that the dispute regarding the domain name <bonami.pl> shall be referred to and finally determined by arbitration in accordance with the WIPO Expedited Arbitration Rules for Domain Name Dispute Resolution under .PL (the Expedited Rules).”
“Pursuant to Article 46 Expedited Rules, the dispute shall be decided in accordance with the law or rules of law chosen by the parties. Failing a choice by the parties, the Tribunal shall apply the law or rules of law that it determines to be appropriate.”
3.1.2. Article 46(a) Expedited Rules states:
“The Tribunal shall decide the substance of the dispute in accordance with the law or rules of law that it determines to be appropriate, taking into account any observations which the parties may have made. In all cases, the Tribunal shall decide having due regard to the terms of any relevant contract and taking into account applicable trade usages.”
3.1.3. Both the Claimant and the Respondent submit that the applicable law should be the UDRP. Both Parties developed their submissions under the UDRP requirements.
3.1.4. The UDRP was established by ICANN in 1999. ICANN runs a worldwide accreditation system for domain name registrars for generic Top‑Level Domains, and draws up contracts with each registry. The UDRP has achieved wide acceptance since 1999. Paragraph 4(a)-(c) of the UDRP establishes the substantive rules for the resolution of disputes between domain name owners and third parties, being an accepted international standard for cross-border domain name disputes. Paragraph 4(a)-(c) of the UDRP therefore is an authoritative, well-established, and widely known set of transnational rules, designed for disputes, such as the present, relating to domain name registration alleged to infringe established trademarks or service marks. It provides a set of rules with which this dispute has the closest connection.
3.1.5. Moreover, previous Tribunals ruled that the UDRP may be the law according to Article 46(a) Expedited Rules based on which the substance of the dispute should be decided (Jagex Limited v. Mr. Daniel Cox, WIPO Case No. WIPO2007PL1; Elite Licensing Company SA v. Jack Onopa, WIPO Case No. WIPO2010PL2).
3.1.6. For these reasons and pursuant to Article 46 Expedited Rules the Tribunal decides that the appropriate substantive rules applicable to this dispute are those set out in the UDRP.
3.1.7. Paragraph 4(a) of the UDRP requires a Claimant to prove all three of the following elements: (i) that the disputed domain name “is identical or confusingly similar to a trademark or service mark in which the Claimant has rights”; (ii) that the respondent has “no rights or legitimate interests in respect of the domain name”; and (iii) that the respondent’s domain name “has been registered and is being used in bad faith”.
3.1.8. Paragraph 4(b) of the UDRP elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Tribunal to be proven based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.
3.1.9. Thus, in applying the UDRP in this case, the Claimant must prove these three elements in accordance with paragraph 4(a)-(c).
3.2.1. The disputed domain name solely consists of Claimant’s trademark and the Top-Level Domain “.pl”. It is well established that the Top-Level Domain does not affect the determination whether a disputed domain name is identical or confusingly similar to a trademark (see paragraph 1.11. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The disputed domain name is therefore identical to the Claimant’s trademark.
3.2.2. The Claimant provided sufficient evidence showing that he holds the registrations of the international trademark registration 1351030 BONAMI. Where the claimant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case (see paragraph 1.2.1 of the WIPO Overview 3.0). However, the Respondent provided extensive evidence showing that the Claimant’s trademark was registered in bad faith and is subject to an invalidity action. Whether this is sufficient to refute the assumption that the Claimant holds rights to the BONAMI mark due to the international trademark registration, need not be decided by the Tribunal, due to the findings herein regarding paragraphs 4(a)(ii) and (iii) of the Policy.
3.3.1. Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial 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.
3.3.2. The Tribunal finds that Respondent has a legitimate interest in the disputed domain name. The Respondent provided extensive evidence showing that it started to use the disputed domain name for the operation of an online store several years before the Claimant’s trademark was registered, and furthermore that it holds several trademarks and domain names consisting of or incorporating the BONAMI mark. There is, by contrast, no evidence in the record that this commercial activity of the Respondent constitutes an illegitimate use of the disputed domain name, e.g. by unfairly profiting from the Claimant’s reputation. Furthermore, such possibility seems logically excluded by the fact that the disputed domain name was registered before the Claimant’s trademark and the Claimant’s admission that he neither currently uses nor in the past used his trademark for any commercial or noncommercial activity.
3.3.3. Accordingly, Claimant has failed to satisfy Policy paragraph 4(a)(ii) and the claim of the Claimant must therefore be denied.
3.4.1. While, in view of its finding on the issue of rights or legitimate interests, not necessary to its Award, the Tribunal also finds that the Claimant failed to prove bad faith registration and use for essentially the same reasons as were articulated above under the “Rights or Legitimate Interests” head.
3.4.2. It is well established that the third element of the Policy requires both registration and use in bad faith. Only in exceptional circumstances, panels will find bad faith on the part of the respondent, where a respondent registers a domain name before the claimant’s trademark rights accrue, e.g. when a domain name was registered in anticipation of trademark rights (see paragraph 3.8. of the WIPO Overview 3.0.).
3.4.3. The Claimant did not provide any evidence showing such exceptional circumstance. Furthermore, since the Respondent registered its first domain name containing the BONAMI mark four years before the Claimant’s trademark was registered it seems a priori impossible that the Respondent registered the disputed domain name in bad faith.
3.4.4. Accordingly, Claimant has failed to satisfy Policy paragraph 4(a)(ii) and the claim of the Claimant must therefore be denied.
4.1. The Respondent seeks the costs of the arbitration pursuant to Article 56 Expedited Rules. The Tribunal determines the costs of the arbitration at One Thousand Five Hundred Euros (EUR 1,500.00).
4.2. The Respondent has been successful in this arbitration. Further, as described above the Claimant initiated the present proceedings, although it was obvious from the facts that he will not be successful. Accordingly, pursuant to Articles 56 Expedited Rules, it is ordered that the Claimant shall solely bear the costs of this arbitration in the amount of EUR 1,500.00.
4.3. The Respondent also seeks to recover its reasonable legal costs pursuant to Article 57. It has not quantified these costs. However, after the Tribunal declared the proceedings closed, the Respondent asked the Tribunal to re-open the proceedings according to Article 44(b) Expedited Rules and allow a cost submission from the Respondent. The Respondent stated that it did not submit a quantification of its cost during the preparatory conference since the subject matter of the costs was not on the agenda for this conference sent out by the Tribunal on July 3, 2020. Furthermore, after the hearing the Respondent refrained from making a cost submission because it waited for the Tribunal to ask for such cost submission. The Respondent claims that such a request by the Tribunal is “customary”.
4.4. According to Article 44(b) Expedited Rules the “Tribunal may, if it considers it necessary owing to exceptional circumstances, decide, on its own motion or upon application of a party, to re-open the proceedings it declared to be closed at any time before the award is made.”
4.5. The Tribunal did not find such exceptional circumstances in the present case.
4.6. First, the Tribunal explicitly asked the Parties at the end of the preparatory conference if they had any further statements or requests. The Respondent therefore had an opportunity to submit its quantification of costs during the conference.
4.7. Secondly, according to Article 49 Expedited Rules, the “arbitration should, wherever reasonably possible, be heard and the proceedings declared closed within not more than two months after either the delivery of the Statement of Defense or the establishment of the Tribunal, whichever event occurs later.”
4.8. The Statement of Defense was submitted on May 28, 2020. The Tribunal was established on June 18, 2020. The proceedings were declared closed on August 18, 2020 and thus on the last day of the deadline under Article 49 Expedited Rules.
4.9. The Respondent therefore had to expect the closure of the proceedings and had to assume that August 17, 2020 will be the last date on which it will be able to submit a quantification of costs.
4.10. Lastly, the Expedited Rules contain no obligation for the Tribunal to ask for cost submissions. Furthermore, after reviewing the limited number of awards in “.pl” cases subject to the Expedited Rules the Tribunal finds no basis for the Respondent’s assertion that such a request is “customary”. The Respondent therefore had no reason to rely on such a request by the Tribunal.
4.11. The Tribunal therefore does not have to re-open the proceedings.
4.12. Concerning the Respondent’s request to recover its reasonable legal costs, the Tribunal notes that the UDRP establishes an abbreviated proceeding to resolve domain name disputes without the costs of normal arbitration or litigation proceedings. It is true that Article 57 Expedited Rules enable the Tribunal to award a party’s reasonable expenses in the presentation of its case, but in the circumstances of the present case, where there has been no regular hearing, witness or travel expenses, and the facts of the case clearly show the claim to be unfounded, the Tribunal considers an order for costs or a party’s expenses not to be justified.
5.1. Based on the foregoing considerations and reasons, the Sole Arbitrator issues his Final Award in Vienna, Austria, on August 28, 2020 holding as follows:
5.1.1. The objection of the Respondent against the jurisdiction of the Tribunal is dismissed.
5.1.2. The request of the Respondent to re-open the proceedings is dismissed.
5.1.3. The claim of the Claimant to transfer the domain name <bonami.pl> to him is dismissed.
5.1.4. The Claimant solely bears the cost of this arbitration in the amount of EUR 1,500.00.
6.1.This Award is signed in four (4) originals and is to be communicated by the WIPO Center as follows:
6.1.1. one original to Claimant, addressed to Claimant;
6.1.2. one original to Respondent, addressed to Respondent;
6.1.3. one original to be retained by the WIPO Center; and
6.1.4. one original retained by the Sole Arbitrator.
Dr. Christian Gassauer-Fleissner
Sole Arbitrator
Place of Arbitration: Vienna, Austria
Dated: August 28, 2020