The Complainant is Honda Motor Co., Ltd. of Japan, represented by Sanderson & Co., United Kingdom.
The Respondent is SELECT MOTORS S.R.L., Romania, represented by Voinea and Associates, Romania.
The disputed domain name <acura.com.ro> is registered with National Institute of R&D on Informatics.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2008. On August 19, 2008, the Center transmitted by email to National Institute of R&D on Informatics a request for registrar verification in connection with the domain name at issue. On August 20, 2008, National Institute of R&D on Informatics transmitted by email to the Center its verification response. 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 September 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2008. The Response was filed with the Center on September 25, 2008.
On October 8, 2008, the Respondent informed the Center that due to their agreement to transfer the domain <acura.com.ro> to the Complainant, appointing the Panel was no longer necessary.
On October 9, 2008, the Center sent an e-mail to the Complainant referring to the request of the Respondent.
In the absence of a response from the Complainant, the Center appointed Beatrice Onica Jarka as the sole panelist in this matter on October 10, 2008. 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.
Following the appointment, based on the above-mentioned correspondence, the Panel issued Administrative Panel 1 on October 16, 2008, by which the Complainant was requested to confirm to the Center in a 3 day term whether it wished to suspend the proceedings in order to explore a possible settlement between the parties; or whether it wished the Panel to proceed to issue a decision.
On October 17, 2008, the Complainant confirmed that it wished the panel to proceed to issue a decision and that it did not wish to suspend the matter.
Following the response of the Registrar indicating that the registration language is Romanian, on August 26, 2008, the Complainant and the Respondent were notified by the Center as to the language of the proceeding.
By the said notification, the Complainant was instructed to either:
- provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English,
- submit the Complaint translated into Romanian, or
- submit a substantiated request for English to be the language of the administrative proceedings.
By the same notification, the Respondent was instructed to indicate any objection against an eventual choice of English as the language of proceedings by the Complainant.
On August 29, 2008, the Complainant confirmed its request that the language of the proceedings should be English.
The Response was provided by the Respondent on September 25, 2008 in English. The Response does not contain any comment in connection to the language of the proceeding.
Considering the aspects above, the Panel finds that the language of the present proceedings should be English, although the Registrar of the disputed domain name has informed the Center that the language of the relevant registration agreement was Romanian.
The Panel concludes that, according to Rules, paragraph 11(b), the language of the proceedings shall be English for the following reasons:
- the Complainant requested to conduct the proceedings in the English language based on the previously shown awareness by the Respondent of the English language and on the fact that the Complainant is a Japanese company which does not understand Romanian;
- the Respondent did not object to this request and provided a Response in English, accepting implicitly English as the language of the proceedings.
The Complainant is globally well known company founded in 1948 which, amongst other things, makes cars and sells them under the name ACURA.
The Complainant possesses many registered trade marks and pending trade mark applications in respect of the word mark ACURA and slightly stylised versions of this word. These include the following marks:
|
Country |
Application Number |
Application Date |
Registration Number |
Registration Date |
Status |
Mark |
Class |
|
EU |
6990386 |
16/06/2008 |
Pending |
ACURA (Logo) |
4, 12, 16, 18, 25, 28, 35, 37 | ||
|
USA |
73-839426 |
15/11/1989 |
1644580 |
14/05/1991 |
Registered |
ACURA |
35 |
|
USA |
73-497797 |
04/09/1984 |
1407602 |
02/09/1986 |
Registered |
ACURA |
12 |
|
Romania |
24917 |
22/07/1991 |
17921 |
22/07/1991 |
Registered |
ACURA |
12 |
The Respondent is a Romanian company which is offering for sale, from the contested website, the products of the Complainant.
The contested domain name <acura.com.ro> had been registered on March 24, 2008.
The website accessed by the contested domain name appears in many respects (including colour schemes, content, graphics, layout and animations) to be very similar to the official US website for ACURA “www.acura.com”.
The Complainant asserts that:
- the domain name is identical or confusingly similar to ACURA trademark in which the Complainant has rights.
- the website accessed by the contested domain name appears in many respects (including colour schemes, content, graphics, layout and animations) to be very similar to the official US website for ACURA “www.acura.com”.
- the Respondent is in no way authorised by or affiliated with the Complainant and is misrepresenting the Complainant by using the disputed domain name for sale of the Complainant's products, which is to the detriment of the Complainant, through unsuspecting consumers who might purchase products assuming they came from an authorised dealer with benefits such as the original manufacturer's warranty and aftercare, and to the detriment of the Complainant whose reputation may be tarnished by the acts of the Respondent (as consumers will link anything done by the Respondent to the Complainant).
- the Respondent is not making legitimate non-commercial or fair use of the domain name. The use that is being made is with the intent for commercial gain by misleadingly diverting consumers to their business and thereby tarnishing the trademark at issue.
- by the use of the mark ACURA in the contested domain name, the Respondent intentionally attempted (and continues to attempt) to attract for commercial gain, Internet users to the Respondent's web site, by creating a likelihood of confusion with the Complainant's mark as to the source, affiliation or endorsement of the Respondent's web site, their activities and the products they sell, by claiming to be an authorised dealer of the Complainant's products.
- the Respondent is demonstrating a clear pattern of behaviour in which it intends to gain commercially from the misuse of the Complainant's reputation, this intention clearly preceding the registration of the contested domain name and continuing afterwards.
In the Response, the Respondent:
- requests the Administrative Panel to note its consent concerning the transfer of the domain <acura.com.ro> to the Complainant.
- relies on the fact that the registrar fulfilled and assumed all the obligations resulting from the verification stage (national or international reservation of the domain, period of reservation etc).
- states that the Complainant has a registration for trademark ACURA for Class 12 and not Class 35 which includes publicity, an area in which the Respondent used the domain name <acura.com.ro>. Therefore, obviously there is no reason to assume or to imply our bad faith in using our legally obtained domain <acura.com.ro>.
- cannot take upon itself the responsibility of an inadequate verification of the domain <acura.com.ro> or its assignment.
In the proceedings the Respondent indicated that it consents to the transfer of the disputed domain name to the Complainant and that an agreement in this sense had been reached with the Complainant.
At the request of the Center to confirm such agreement, the Complainant requested expressly that the Panel proceed in issuing the decision in the case.
According to paragraph 17 (a) of the Rules, if, before the Panel's decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding.
Considering the fact that the Complainant has not expressly confirmed the existence of such settlement, but requested the issuance of a decision, the Panel shall rule on all three elements of the Policy in this case.
The Complainant possesses many registered trade marks and pending trade mark applications in respect of the word mark ACURA and slightly stylised versions of this word. These include the following marks:
|
Country |
Application Number |
Application Date |
Registration Number |
Registration Date |
Status |
Mark |
Class |
|
EU |
6990386 |
16/06/2008 |
Pending |
ACURA (Logo) |
4, 12, 16, 18, 25, 28 35, 37 | ||
|
USA |
73-839426 |
15/11/1989 |
1644580 |
14/05/1991 |
Registered |
ACURA |
35 |
|
USA |
73-497797 |
04/09/1984 |
1407602 |
02/09/1986 |
Registered |
ACURA |
12 |
|
Romania |
24917 |
22/07/1991 |
17921 |
22/07/1991 |
Registered |
ACURA |
12 |
The Respondent's domain name <acura.com.ro> is identical to the Complainant's trademark, as it incorporates this mark in its entirety.
It is well established that the specific top level of the domain name such as “com” or “.ro” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to a trademark (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. & Wilson, Sr., WIPO Case No. D2000-1525, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001; and OSRAM GmbH, v. web4COMM SRL Romania, WIPO Case No. DRO2005-0004).
In addition, in the Response, the Respondent does not deny the Complainant's rights.
For these reasons, the Panel finds the Complainant has established the first element of the Policy.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name as it resells Complainant's products on the website to which the disputed domain name resolves, without being ever authorized by the Complainant to do so.
The Respondent does not deny the Complainant's assertion, insisting on the fact that they create publicity for the Complainant's products on the website resolving under the disputed domain name.
The Respondent seemingly uses the disputed domain name to resell Complainant's products and is apparently making profit from using the disputed domain name. The Complainant denies any relationship with the Respondent. It is established in the practice of prior WIPO panel majority view that a reseller can be making a bona fide offering of goods and services and thus has a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant's relationship with the trademark owner. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
There is also the view among prior WIPO panel that even if the Respondent was a retail seller of the Complainant's products, the collateral trademark use necessary to allow resale of the Complainant's products is not enough to give the Respondent proprietary rights in the Complainant's trademarks and do not confer the right to use these trademarks as domain names in the absence of a specific authorization. See The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113; Allen-Edmonds Shoe Corporation v. Takin' Care of Business, WIPO Case No. D2002-0799.
Having considered the circumstances of this case and the prior practice of WIPO panels, the Panel finds that the Respondent has not succeeded in rebutting Complainant's prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name, and thus the second element of the Policy has been established by the Complainant.
The Complainant asserts that the disputed domain was registered and used in bad faith by the Respondent who registered and is using it with the intent to commercially benefit from the Complainant's trademark ACURA.
In its Response, the Respondent insists on its lack of bad faith in the registration and use of the disputed domain as it relied on the verification made by the Registrar in the registration phase and on the fact that it uses the disputed domain name in publicity services.
The Panel cannot in the circumstances accept the defenses made by the Respondent and considers that the Respondent knowingly and purposely chose the registration of the disputed domain name in order to profit from the reputation of the Complainant's trademark in reselling the Complainant's product for its own profit.
Such intent existed at the time of registration and continues to exist after the registration and is evidence for bad faith registration and use under paragraph 4(b)(iv) from the Policy.
In this sense, the Panel finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, and affiliation. The Panel thus considers that the third element of the Policy has been established by the Complainant.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <acura.com.ro> be transferred to the Complainant.
Beatrice Onica Jarka
Sole Panelist
Dated: October 22, 2008