Complainant is New Rosme SIA of Riga, Latvia, represented by Valea AB, Sweden.
Respondent is Privacydotlink Customer 684816 of Seven Mile Beach, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Domain Admin, Abstract Holdings International Ltd of Worthing, Christ Church, Barbados, represented by Muscovitch Law P.C., Canada.
The disputed domain name <rosme.com> is registered with Uniregistrar Corp (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2016. On December 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 29, 2016, 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 Complainant on January 4, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 9, 2017.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2017. On January 27, 2017, Respondent requested a four day extension of the Response due date, which was granted by the Center. The revised date for Response was February 4, 2017. The Response was filed with the Center on February 3, 2017. Respondent requested the appointment of a three-member panel.
The Center appointed Frederick M. Abbott, Katalin Szamosi and Clive L. Elliott as panelists in this matter on March 8, 2017. The Panel finds that it was properly constituted. Each member of 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.
Complainant is the owner of registrations for the word and design trademark ROSME UNDERWEAR on the trademark registers of Latvia, Estonia, Lithuania, Finland, the Czech Republic, Slovakia, Belarus, Germany, Poland, Ukraine and Russian Federation. Complainant is the owner of registrations for other ROSME-formative marks, including ROSME SWIMWEAR, ROSME NIGHTWEAR and ROSME LINGERIE. In each case, the term ROSME appears in large capital letters against a colored background, in a few cases accompanied by a photograph of a rose. Complainant’s registrations for ROSME UNDERWEAR include international registration under the Madrid System (as to which the word and design mark is shown below), registration number 692663, registration dated April 21, 1998, in international class 25, covering undergarments of various types. The international registration covers Belarus, Germany, Poland, Russian Federation and Ukraine.1
Complainant develops, markets and sells lingerie and other clothing products through brick-and-mortar shops in a total of 16 countries. Complainant maintains an online presence at “www.rosme.lv”, where its catalog and other information is provided in several languages, including English. It appears that Complainant markets its products through both owned and franchised shops, in some cases devoted to selling Complainant’s products, and in others selling Complainant’s products as part of a wider selection of clothing.
According to Complainant, its ROSME trademark has been in consistent use since as early as 1952.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification the creation date of the disputed domain name was December 26, 2004. Respondent indicates that it registered the disputed domain name on or about July 31, 2014, and it has provided a letter of confirmation dated January 31, 2016 to that effect from the Registrar.
Respondent is in the business of registering and reselling domain names. According to Respondent, it invests in “non-infringing acronyms as well as generic, descriptive, geographic and potentially brandable domain names”. Respondent indicates that it purchased the disputed domain name with intent either of developing the disputed domain name into a website, or to resell the disputed domain name “for a website about Rosme, Latvia”. The disputed domain name has been offered for sale through a link on a parking page. As of November 2016, that parking page included links to advertising for jobs, food, real estate, travel, insurance and music. There is no indication on the record of this proceeding that Respondent has otherwise established or attempted to establish an active website making use of the disputed domain name.
Respondent has furnished a Declaration of its Director and Manager to the effect that no one associated with Respondent had ever heard of Complainant or its trademarks at any time prior to Respondent’s registration of the disputed domain name.
According to Wikipedia, as referenced by Respondent, “Rosme is a village in Iecava Municipality in the historical region of Zemgale, and the Zemgale Planning Region in Latvia.” Complainant did not in its Complaint make reference to an association with this village.
After Complainant contacted Respondent regarding purchase of the disputed domain name through the parking page through which it was offered for sale, Respondent on January 12, 2016 offered to sell the disputed domain name to Complainant for USD 31,200.
Complainant has furnished a list of a substantial number of domain names registered by Respondent, and has suggested that several of the listed domain names are misspellings and alternatives for those used by going concerns, “such as oogle.com (google.com), audiobook(s).com/org, chapelhill.org (wine), clinicaltrials.gov/clinicaltrial.org, einsurance.com/org, excelsior.org (hotel), Lawson.org (well-known Japanese mini stores and rock band) and Norwegian.org”.
Complainant indicates that it sent a warning letter to Respondent on February 22, 2016 regarding Respondent’s use of the disputed domain name, but has not furnished evidence of that communication. Respondent denies having received such a letter.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
Complainant contends that it owns rights in the ROSME trademark, as evidenced, inter alia, by registrations for ROSME UNDERWEAR and ROSMEN. Complainant argues that through long and consistent use of its ROSME UNDERWEAR trademark, ROSME must be seen to be, at the least, associated with underwear within its markets.
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s trademark and tradename ROSME UNDERWEAR because the disputed domain name contains Complainant’s trademark and tradename ROSME.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Complainant has not licensed or otherwise permitted Respondent to use its trademark; (2) Respondent has not been commonly known by the disputed domain name; (3) Respondent has no registered trademark or trade name corresponding to the disputed domain name, and; (4) because of Complainant’s solid reputation, the ROSME trademark cannot be legitimately adopted by a third-party other than for implying an association with Complainant or for purposes of sale.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent must have been aware of Complainant’s trademark when it registered the disputed domain name; (2) Respondent is offering the disputed domain name for sale at a price well in excess of its out-of-pocket expenses associated with the disputed domain name; (3) Respondent is using the disputed domain name to attract Internet users to its website for commercial gain, and; (4) Respondent is owner of a large number of registrations that lead to “for sale” domains, including misspellings and alternative top-level domains, indicating that Respondent does not hold a vested interest in the disputed domain name.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent alleges that Complainant has referred to its parent company’s operations which have no bearing on this proceeding.
Respondent contends that Complainant by its own admission is primarily doing business in the Baltic states. Respondent argues that Complainant’s presence outside the Baltic states is more limited than Complainant contends.
Respondent alleges that Complainant has not provided evidence that it has substantial brand awareness within the Baltic states. Respondent argues that Complainant’s trademark is not internationally recognized or famous such that Respondent would ever have heard of Complainant.
Respondent indicates that there are numerous business, even in Latvia, which share the name “Rosme”.
Respondent argues that there are no ROSME word trademark registrations owned by Complainant, and that the ROSMEN trademark is significantly different from the ROSME trademark.
Respondent argues that in all likelihood Complainant named itself in part after a Latvian village named “Rosme”, and that this fact accounts for Complainant not having been able to register ROSME as a word trademark. Respondent refers to the trademark law of Latvia which indicates that marks which designate geographical origin are not subject to registration, and may not in any case be used to prohibit another person from using the mark to refer to geographical origin. Respondent contends that it is only by including graphical elements that Complainant was able to register its trademarks, and that Complainant cannot claim any exclusive rights to use of the term “Rosme”. Complainant further contends that European Union trademark law does not provide rights in descriptive terms incorporated in figurative trademarks.
Respondent alleges that there are third parties that have registered “Rosme” and design in Spain and Mexico.
Respondent indicates that there are a number of businesses in Latvia that include or use the term “Rosme” in their business registrations and that apparently coexist peacefully with Complainant. Respondent also refers to other third-party businesses that use the term “Rosme” found through an Internet search.
Respondent contends that when it registered the disputed domain name it had no knowledge or awareness whatsoever of Complainant or its trademarks. According to Respondent, it “registered the Domain Name because it considered it a descriptive geographic term that was available to anyone to register in good faith, and not for any improper purpose”.
Respondent indicates that it received an inquiry for purchase of the disputed domain name by a party that wished to use it to develop a website about the village Rosme in Latvia.
Respondent states that it is significant that Complainant in reviewing the large number of domain names registered by Respondent was able to identify only a few that were in fact obviously descriptive terms, and that registration of “oogle.com” had successfully been defended in a UDRP proceeding.
Respondent denies having received a warning letter from Complainant.
Respondent argues that the disputed domain name is not identical or confusingly similar to Complainant’s trademark because Complainant has not provided any evidence that the geographic term would be primarily associated with Complainant. Respondent states that Complainant has at most a design mark which incorporates the words ROSME UNDERWEAR, and that the term UNDERWEAR distinguishes the trademark from the geographic name.
Respondent contends that it has rights or legitimate interests in the disputed domain name because it corresponds to a geographic term. Respondent further indicates that speculating in and trading in generic or descriptive domain names can constitute a legitimate interest under the Policy, and that Respondent has established that it is in the business of selling generic and descriptive domain names. Respondent indicates that its use of the disputed domain name for general advertising was a lawful non-infringing use. Respondent rejects Complainant’s argument that there are no potential legitimate uses of ROSME other than by Complainant.
Respondent argues that because Complainant does not have exclusive rights in a trademark, Respondent cannot be found to have acted in bad faith. Respondent contends that in order to prevail Complainant must establish that it registered the disputed domain name specifically to sell to Complainant, and that Complainant has not established that.
Respondent indicates that it was Complainant that approached Respondent to purchase the disputed domain name on January 12, 2016.
Respondent requests the Panel to dismiss the Complaint.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. Following the grant of a brief extension by the Center, Respondent filed its Response. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent. Respondent received that notice and was afforded an adequate opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant has provided evidence of rights in the word and design trademark ROSME UNDERWEAR and other ROSME-formative word and design trademarks, as evidenced by registration in a number of countries in Europe and use in commerce in Europe, including through international registration under the Madrid System (see Factual Background, supra).
Respondent has challenged Complainant’s rights in the word trademark ROSME standing alone based on the alleged geographic significance of that term.
The Panel considers it sufficient for purposes of rendering this determination that Complainant has provided substantial evidence of rights in the word and design trademark ROSME UNDERWEAR, and that Respondent has not alleged grounds on which the Panel should reject Complainant’s assertion of rights in that trademark.
The Panel determines that Complainant has rights in the word and design trademark ROSME UNDERWEAR.
The word and design trademark registered and used by Complainant manifestly emphasizes the term ROSME as the predominant part of the trademark (see, e.g., graphic reproduction in Factual Background, supra). The disputed domain name incorporates directly that predominant part, and adds the generic Top-Level Domain “gTLD” “.com”. Respondent alleges that Complainant may not rely on the term ROSME as a source of exclusive rights because that term refers to a village in Latvia. Underlying this argument is the idea that Internet users would be likely to associate the disputed domain name with a village in Latvia rather than Complainant’s trademark. The Panel does not accept this idea or proposition. The disputed domain name is used by Complainant to market its products throughout a large part of Europe. The Panel finds it exceedingly doubtful that Internet users in Germany, Russian Federation or Ukraine would be aware of the name of a village in Latvia and associate the disputed domain name with that village. The Panel considers it likely that Internet users in Europe would instead find the disputed domain name confusingly similar to Complainant’s trademark which is used in association with a line of undergarment products marketed on the Internet and in shops. The Panel determines that the disputed domain name is confusingly similar to Complainant’s ROSME UNDERWEAR trademark, and in particular its predominant part.
The Panel determines that Complainant has rights in a trademark and that the disputed domain name is confusingly similar to that trademark.
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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”. (Policy, paragraph 4(c)).”
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent argues that it has rights or legitimate interests in the disputed domain name because: (a) it constitutes a geographic term that is freely available for use by the public, and; (b) Respondent is entitled to acquire and sell domain names that constitute terms that are generic or commonly descriptive in the sense of a geographic term.
As Respondent noted, the question whether a geographic term is sufficiently recognized by the public such that a party may not assert exclusive rights over it depends on the factual context. Thus, for example, Respondent has referred to a case in which the panel determined that “Paris” was sufficiently well-known as a geographic location that a third-party could not assert exclusive rights in that term disassociated from the combination term with which it was connected in a word and design mark (Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279). Respondent neglected to refer to the cases distinguished by the panel in that decision which supported the recognition of rights in the predominant word part of word and design marks in other contexts (i.e., Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031 and RUGGEDCOM, Inc. v. James Krachenfels, WIPO Case No. D2009-0130). Respondent quoted part of the decision in Ville de Paris that indicates a significant factor in analysis of the potential for separating a word from a word and design mark includes whether the word is well-known in the geographic sense, specifically:
“The confusing similarity question can be difficult where a complainant relies on a figurative mark comprising a logo and a descriptive or geographical expression.
On one approach, the logo element of Complainant’s mark is ignored in the comparison with the disputed domain name, on the basis that it is normally the words in a figurative mark which convey the mark’s principal meaning, or impression.
But where the words in the mark are purely descriptive, or the name of a well-known place, the words alone will not convey any meaning other than the descriptive or geographical one (unless of course the descriptive words have acquired, through use, a secondary meaning denoting Complainant’s particular goods or services —something which has not been alleged in this case).” WIPO Case No. D2009-1279.
In the instant proceeding, Respondent has not provided evidence that the name of the village of Rosme in Latvia is well-known. The Panel considers that ROSME is the predominant part of Complainant’s word and design trademark, and it is not a well-known term that is open for trading by third-parties because it is a geographic term.
The Panel does not accept that Respondent, based in the Caribbean, decided to register the disputed domain name because it was aware of a village in Latvia and was generally in pursuit of the names of Eastern European villages as commercially marketable domain names. The Panel finds it far more likely that Respondent chose to take advantage of the registered trademark of Complainant.
Respondent’s use of the disputed domain name in connection with a parking page with links to general advertisement and an offer for sale does not establish rights or legitimate interests in the disputed domain name.
The fact that some third-parties might also demonstrate rights or legitimate interests in the disputed domain name does not establish rights or legitimate interests on the part of Respondent.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” Those include: “(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; (ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or ... (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
Respondent registered the disputed domain name in 2014, long following Complainant’s registration of its trademark. Respondent offered the disputed domain name for sale to the public, and ultimately to Complainant.
An Internet search at the time of registration of the disputed domain name would have revealed to Respondent that Complainant was marketing products using the term ROSME. A search of the WIPO Madrid System Romarin database would have alerted Respondent to Complainant’s trademark registrations.
The Panel considers the term ROSME to be sufficiently distinctive from the standpoint of a party in the Caribbean seeking to determine domain names that might be acquired without potentially interfering with the trademark rights of third parties. The Panel does not consider it credible that Respondent selected the disputed domain name because it was somehow aware of the name of what the Panel infers is a relatively small village in Latvia. If Respondent were indeed in the business of registering distinctive names of Eastern European villages, the list of domain names registered by Respondent would presumably include a substantial number of them. It does not.
Respondent made the disputed domain name available for sale through a publicly accessible parking page. When contacted by Complainant, it offered to sell the disputed domain name for USD 31,200. Respondent has not indicated how much it paid for the disputed domain name. In the absence of contrary evidence, the Panel assumes that USD 31,200 is substantially in excess of its out-of-pocket expenses directly related to the domain name. The Panel has indicated that it does not accept that Respondent selected the disputed domain name because it identified a geographic term. Under the circumstances, the Panel is prepared to draw the inference that Respondent registered the disputed domain name for the purposes of selling it to a trademark owner such as Complainant. The fact that more than one party might have trademark rights in the term ROSME covering different goods and in different territories does not negate Respondent’s abusive conduct.2
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning 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, <rosme.com>, be transferred to Complainant.
Frederick M. Abbott
Presiding Panelist
Katalin Szamosi
Panelist
Clive L. Elliott
Panelist
Date: March 22, 2017
1 Complainant has also registered the word and design mark ROSMEN RIGA UNDERWEAR under the Madrid System. The Panel does not consider it necessary to consider this additional registration in order to reach its determination.
2 The Panel notes that Respondent stated that registration of the term “oogle.com”, which Respondent now owns, had been successfully defended in a UDRP proceeding. Respondent failed to note that the complaint in that case was rejected because the panel determined that Google had not established rights in its trademark at the time (1999) that the “oogle.com” domain name was registered, and not because the panel determined that “oogle.com” was not confusingly similar to Google. Google Inc. v. Blue Arctic LLC, Claim Number: FA1206001447355 (2012).