WIPO Domain Name Decision: DRO2007-0009

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fuji Heavy Industries Ltd. (Fuji Jukogyo Kabushiki Kaisha) v. Radacini Autotrading SRL

Case No. DRO2007-0009

1. The Parties

The Complainant is Fuji Heavy Industries Ltd. (Fuji Jukogyo Kabushiki Kaisha), Nishi-Shinjuku, Shinjuku-ku, Tokyo, Japan, represented by Nestor Nestor Diculescu Kingston Petersen, Romania.

The Respondent is Radacini Autotrading SRL, Ilfov, Romania, represented by Ana Catalina Mihaela, Romania.

2. The Domain Name and Registrar

The disputed domain name <subaru.ro> is registered with RNC.ro.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2007. On October 12, 2007, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the domain name at issue. On October 30, 2007, RNC.ro transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 October 31, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2007. The Response was filed with the Center on November 20, 2007.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on December 4, 2007. 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.

According to Rules, paragraph 11(b), the Panel decides that the language of the proceedings Panel shall be English for the following reasoning:

- the Panel is aware that at the time of registration there were no provisions on the Registrar’s website for a domain name applicant, to choose between English or Romanian as the controlling language of the registration agreement, as this Panel found in other previous cases: Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L., WIPO Case No. DRO2006-0001; DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA, WIPO Case No. DRO2006-0003, the registration agreement was simultaneously English and Romanian, so the domain applicant accepted the use of both languages;

- both the Complainant and the Respondent are proficient in English language, as it results from the correspondence between them, the language of the Response and the language of the evidences brought by Complainant, especially of the New Car Distribution agreement submitted as evidence by the Complainant which is English.

4. Factual Background

The Complainant is Fuji Heavy Industries Ltd, a Japanese company who is the owner of the SUBARU trademark used in connection with its cars division.

The Complainant registered the combined trademark SUBARU in Romania under no. 38217 for the products in Nice Class 12. This trademark was submitted for registration starting with 18.12.1998.

The Complainant is also the owner of several combined community marks for different Nice classes as 1, 7, 12 ,35, 37 , 36, 39, 14, 25m and 28, which contain the word SUBARU.

The Respondent is Radacini Autotrading Srl, a Romanian Company.

The Respondent has registered the disputed domain name in 2002.

The Respondent was, together with Radacini SRL another Romanian Company belonging to the same group, an authorized dealer of SUBARU passenger cars, starting with 2001. The authorization of dealership had been given by the Distributor in Romania of the SUBARU passenger cars, Subaru Motors (Hellas) SA. On February 8, 2006 the same Distributor notified the Respondent together with Radacini SRL, that they are no longer an authorized dealer for the SUBARU passenger cars and that as of the termination date, they will be forbidden to use the SUBARU trademark in connection with their business and to present themselves as a SUBARU dealer.

According to the Notification dated February 8, 2006 (further called Termination Notification), the Respondent and Radacini SRL were given three months until the end of April 2006, in order to remove the existing signs containing the SUBARU trademark posted by them in any public place available to the public (such as showrooms, banners, advertisement materials, etc.).

On August 14, 2007, the Complainant sued the Respondent and Radacini SRL at the Bucharest Tribunal, Civil Section for Intellectual Property. The court file number is 27862/3/2007. The object of the court application is requesting the Court to oblige the two defendants to remove all the signs containing the SUBARU trademarks, symbols, slogans posted by them in any places accessible to the public (such as showrooms, banners, posters, and publicity materials etc.), to oblige the defendants to stop the use of the SUBARU trademark, by putting an end to the import and sale in Romania of any Subaru Cars and spare parts without the approval of the Plaintiff; and to oblige the defendants to end the use of the SUBARU trademark on the website “www.subaru.ro”, a domain name which is used unauthorized by the defendants.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- the disputed domain name is identical with the trademarks registered by the Complainant in Romania;

- the Respondent has no right or legitimate interest in connection to the disputed domain name, as he is no longer the dealer of the SUBARU products and it was notified on February 8, 2006 to terminate starting with April 2006 the use of the SUBARU trademarks, symbols and slogans;

- the Complainant has sued the Respondent in the Romanian Courts in respect of the Termination Notification dated February 8, 2006

- the Respondent does not make public in any way on the website to which the disputed domain name resolves the relationship with the Complainant but induces to the potential buyers the idea of direct affiliation between it and the Complainant as the SUBARU trademark owner and producer of SUBARU cars;

- the disputed domain name was registered and it has been used in bad faith, as the Respondent knew at the registration moment about the Complainant’s SUBARU trademark, and it still registered such mark as the disputed domain name with the obvious purpose of producing confusion within the SUBARU products consumers and to prevent the Complainant from exercising in a legitimate way its rights in connection to the SUBARU trademark.

B. Respondent

The Respondent admits that the disputed domain name is identical with SUBARU trademarks and further alleges that:

- before any notice was served with regard to this dispute, the Respondent has used the domain name in connection with a bona fide offering for sale of original products bearing SUBARU trademark;

- before the Termination Notification dated February 8, 2006, the Respondent’s rights to trade such products was given by SUBARU trademark holder consent;

- until the Complainant’s claim in the Romanian Courts regarding the use of protected signs of SUBARU trademark and the trading of SUBAU products bearing such signs shall finally be solved, the activity of the Respondent was within the limits of the law and does not fall under the authority of this Panel.

- the Respondent does make public the relationship with the Complainant, as it never claimed that it is the producer of the vehicles posted on internet site or the holder of the SUBARU trademark;

- use of the domain name is made without intention to divert consumers or to mislead them in any way, as the Respondent is carrying out activities with SUBARU vehicles;

- the Respondent is the first company in Romania that had advertised the SUBARU trademark and it can be said that the Respondent is known by the disputed domain name, even though it is not the holder of the trademark;

- the Respondent registered the domain name with the purpose of exclusively trading SUBARU products on the basis of the commercial relationship with SUBARU MOTORS HELLAS SA that was authorized by the producer to organize distribution in Romania.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name is identical with a trademark in which the Complainant has rights, as the disputed domain name incorporates entirely this mark. This is undisputed by the parties.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the domain names. The first of these circumstances (paragraph 4(c)(i)) is that “before any notice to you [i.e., the Respondent] of the dispute, your 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.”

Both the Complainant and the Respondent state that the Respondent was at the time of the disputed domain name registration an authorized dealer of the SUBARU products. Both the Complainant and the Respondent refer to the Termination Notification dated February 8, 2006. While the Complainant considers that this letter put an end to the dealership relationship, the Respondent finds it questionable and considers that it is for the Romanian Court seized by the Complainant to give a solution to the dispute between the two as to the resale of SUBARU products by the Respondent and the use of SUBARU trademarks

In the present dispute under the Policy, it is for the Panel to consider if the use of the disputed domain name by the Respondent as an authorized of SUBARU products was a bona fide offering of goods before any notice was served in regard to this dispute.

The Panel considers that there are two stages of time which are relevant for analyzing whether there has been a bona fide offering of goods by the Respondent: the first stage covers the period of time starting with registration and ending with the Termination Notification dated February 8, 2006, and the second stage covers the period of time starting with April 2006, when the Termination Notification appears to have come into effect and ending with this procedure.

For the first stage, the Panel finds that the Oki Data Americas, Inc. v. ASD, Inc. test (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 – <okidataparts.com>), is applicable in this case, in the sense that:

- the Respondent was an authorized Reseller of the SUBARU products;

- the Respondent had actually been offering the goods or services at issue;

- the Respondent used the site to sell only the trademarked goods;

- the Respondent did not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

As to the criteria set in the Oki Data Americas, Inc. v. ASD, Inc. test, which states that the site must accurately disclose the registrant’s relationship with the trademark owner, the Panel notes the reasoning offered by the Respondent that it does make public the relationship with the Complainant, as it never claimed that it is the producer of the vehicles posted on internet site or the holder of the SUBARU trademark. However the Panel notes that the spirit of the Oki Data test is more in the nature of an accurate disclosure on the website itself.

Nevertheless, in conclusion, the Panel finds on balance that the Respondent was making a bona fide offering of SUBARU products in the first stage.

Having found bona fide offering of goods by the Respondent until the date of Termination Notification, the Panel has to consider the effects of the Termination Notification on such bona fide offering of goods.

The Termination Notification apparently put an end to the Respondent’s authorized dealership for SUBARU cars and forbids any further sale of SUBARU cars and use of SUBARU trademarks by Respondent. From the termination date under the Termination Notification terms, the consent to sell under the SUBARU trademark was withdrawn expressly. Furthermore, the Complainant sued the Respondent when it noticed that it continues to make its offering of goods under SUBARU trademarks.

As stated in Elders Limited v. Private Company, WIPO Case No. D2007-1099 - <elders.net>, and the cases cited therein, the relevant time for the assessment of whether a Respondent has rights and legitimate interests is a domain name is the date of the complaint.

At the time of the complaint, the consent given to the Respondent to sell under the SUBARU trademark was withdrawn and therefore the Respondent cannot claim any rights or legitimate interests in the disputed domain name. In conclusion for this element, the Panel finds in the favor of the Complainant.

C. Registered and Used in Bad Faith

Under this element, the Policy requires both registration and use in bad faith of the disputed domain name. Unlike the legitimate rights or interests of the Respondent in the disputed domain name, which have to be assessed at the time of the complaint, the bad faith element has to be assessed also at the time of registration of the disputed domain name.

This case presents an important characteristic common to cases in which a agency relationship exists between the parties. See Elders Limited v. Private Company, WIPO Case No. D2007-1099 - <elders.net> and the cases cited therein.

In this sense, the Panel shall consider the motives of the Respondent at the time of domain name registration. As stated in the Elders Limited case, the Policy was designed to deal with cybersquatters i.e. people who register domain names knowing them to be the trademarks of others and with the intention of causing damage or disruption to the trademark owners and/or unfairly exploiting the trademarks to their own advantage.

In this case, the Respondent was an authorized dealer for the Subaru cars at the time of registration. As the Panel found, at the time, in first stage of the relationship between the parties, the Respondent was able to show a bona fide offering of goods which demonstrates a certain legitimate right in the disputed domain name.

Such a bona fide offering of goods is compelling evidence of Respondent’s good faith intentions at least at the time of the registration of the disputed domain name. Accordingly, in this Panel’s view, such bona fide offering of goods stage corresponds also to a good faith use of the disputed domain name.

Even though, the Complainant denies giving an express consent to the Respondent to register the disputed domain name, the Termination Notification refers to an interdiction to use the SUBARU trademarks in connection to the Respondent’s business in the future, which implies that such use of the SUBARU trademark was allowed when the Respondent acted as an authorised dealer for SUBARU products.

As stated in Elders Limited case, it is more likely that, in registering the disputed domain name, the Respondent may well have been intending to do no more than to complement the dealership relation for the SUBARU products.

It is also true that starting with the termination of the dealership relationship under the Termination Notification which included the interdiction to use the SUBARU trademarks, any bona fide offering of goods ended.

Nevertheless, the Panel cannot overlook the registration in good faith followed by use in good faith and only later followed by use in bad faith.

As other Panels before it, the Panel is inclined to follow the reasoning in Yoomedia Dating Limited v. Cynthia Newcomer / Dateline BBS, WIPO Case No. D2004-1085, cited in the Elders Limited case in which the Panel said:

“Previous decisions have considered the matter of good faith registration followed by bad faith use. The prevailing view is that the Policy was not designed to prevent such situations.”.

Further, the Panel notes that there is a pending case in the Court between the parties which could be extended to cover the issue of the disputed domain name from the perspective for which the Policy was not designed to forsee.

The Panel finds that the Complainant has in these proceedings under the Policy failed to establish this element of its case.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Beatrice Onica Jarka
Sole Panelist

Dated: December 17, 2007