TATRA, a.s. v. Tatra Ltd.,
Tatra folks
Claim Number: FA0911001296249
PARTIES
Complainant is TATRA, s.a. (“Complainant”), represented by Thomas W. Adams, of Renner, Otto, Boisselle & Sklar, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tatra.com>, registered with Domreg Ltd (the “Disputed
Domain Name”).
PANEL
The undersigned each certifies that he and she has acted independently
and impartially and to the best of his or her knowledge has no known conflict
in serving as Panelist in this proceeding.
Diane T. Cabell, Kendall C. Reed (Chair), and
Jeffrey M. Samuels as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 25, 2009; the
National Arbitration Forum received a hard copy of the Complaint on November 30, 2009.
On December 1, 2009, Domreg Ltd. confirmed by e-mail to the National
Arbitration Forum that the <tatra.com> domain name is registered
with Domreg Ltd. and that the Respondent
is the current registrant of the name. Domreg Ltd. has verified that Respondent is
bound by the Domreg Ltd. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On December 9, 2009, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 29, 2009 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@tatra.com by e-mail.
A Response was received on December 29,
2009, but was determined by the National Arbitration Forum to be deficient
pursuant to UDRP Rule #5 because a hard copy was not received prior to the
response deadline.
On January 4, 2010, Respondent submitted an Additional Submission that
was deemed to be in compliance with National Arbitration Forum Supplemental
Rule #7.
On January 12, 2010, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Diane T. Cabell, Kendall C. Reed (Chair), and
Jeffrey M. Samuels as Panelists.
RELIEF SOUGHT
Complainant requests that the Disputed Domain Name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a Czech entity which has used the TATRA trade mark since
at least 1919 in connection with the manufacture and sale of trucks, in
connection with parts and complements thereof, and in connection with services
related thereto. TATRA is a leading brand name in the truck industry, and
Complainant’s manufacturing facility in
Complainant’s Internet website is at <tatra.cz> (“Complainant’s Website”). The language of Complainant’s Website is
Czech, and the website also includes versions in English, Russian and Spanish.
Even a brief review of Complainant’s Website shows the extent of the use of the
trademark and trade name TATRA throughout the world.
Complainant is the owner of the following national trademark
registrations:
TATRA,
U. S. Trademark registration number 1940509, in International Class 7;
TATRA
and
TATRA
and
TATRA,
Community trademark registration number 003780137 in International Classes 12,
37 and 39
In addition to the foregoing U.S. and Community trademark
registrations, Complainant is also the owner of a number of other TATRA and
TATRA-family trademark registrations around the world, including registrations
in the International Trademark Registry (covering 66 countries), Canada,
Germany, United Kingdom, Denmark, Norway and Finland (individually and
collectively referred to herein as “Complainant's
Trademarks.")
Policy Paragraph 4(a)(i):
The Disputed Domain Name incorporates Complainant's Trademark, and is
confusingly similar thereto.
Policy Paragraph 4(a)(ii):
Respondent was not known by the name TATRA, at least not until after the
initial filing and service of the original complaint in this UDRP dispute. Respondent changed its name to “Tatra Ltd.”
and “Tatra folks
Respondent is not affiliated with Complainant, and has not been
authorized in any manner by Complainant to use Complainant's Trademarks.
It appears that Respondent was and may still be merely a cover,
shielding the true owners of the Disputed Domain Name.
Respondent registered the Disputed Domain Name on March 14, 2000.
Respondent has made no preparation for or actual use of the Disputed
Domain Name for a bona fide offering
of goods and services; rather, Respondent does not use the Disputed Domain Name
at all. The Disputed Domain Name fails
to resolve to an active website, and Respondent has failed to develop a website
in the more than nine years since the Disputed Domain Name was registered. From
this it can be concluded that Respondent is using the Disputed Domain Name
merely as an inactive site for the sole purpose of warehousing and seeking to
extract unreasonable and unjustified payments from other persons, i.e., the
Complaint herein.
Policy Paragraph 4(a)(iii):
Respondent’s bad faith registration and use of the Disputed Domain Name
is demonstrated by Respondent's failure over nine years to develop or actually
use the Disputed Domain Name to resolve to an active website.
Respondent’s registration and use of the Disputed Domain Name in bad
faith is further demonstrated by Respondent’s failure to discharge its
contractual obligation to determine that the Disputed Domain Name does not
infringe the rights of any third party (pursuant to Respondent's contract with
its registrar) given Respondent's constructive notice of Complainant's trade
mark rights, which constructive notice arose from Complainant's numerous
trademark registrations around the world.
B. Respondent
As an initial matter, the Policy does not apply to Complainant's
complaint because this situation, when viewed most favorably to Complainant and
least favorably to Respondent, involves competing claims to use of the word
“Tatra.” Complainant asserts its
trademark rights, and respondent asserts its rights to use its company name
(trade name) which serves as a legitimate identifier of the Respondent as a
legal entity, duly registered in accordance with the Russian law. The policy is
designed to address the issue of abusive registrations made with bad faith and
with the intent to profit commercially from another's trademarks (e.g., cyber
squatting and cyber piracy), and does not apply to competing rights.
Policy Paragraph 4(a)(i):
Complainant does not establish this element of the Policy because the
Disputed Domain Name is not identical or similar to a trademark in which the
Complainant has rights.
Respondent does not argue that the Disputed Domain Name is identical
with Complainant's Trademarks. But Respondent
does argue with Complainant’s alleged rights to Complainant's Trademarks under
the Policy. This is because the word
“Tatra” is the name of a geographic region consisting of the Western part of
the
Under the Policy, protection for a word that is a trademark and that
also correctly designates a geographic region is limited to products and
services within the trademark classes or classification for which the trademark
is registered. In fact, the report of
the Second WIPO Internet Domain Name Process declined to specifically extend
protection to geographic terms under the Policy.
Respondent does not use the Disputed Domain Name with respect to the
trademark classes and services for which Complainant’s Trademarks are
registered, and therefore Complainant has no trademark rights and legitimate
interests in Complainant’s Trademarks for purposes of Policy Paragraph 4(a)(i).
Policy Paragraph 4(a)(ii)
Respondent does have rights and legitimate interests in the Disputed
Domain Name because it's intent is to capitalize on the generic meaning of the
word “Tatra” as it is used for denoting the western part of the Karpaty
Mountains, as noted above.
Additionally, Respondent does have rights and legitimate interest in
the Disputed Domain Name because Respondent’s exclusive right to use its
company name (trade name) is protected under Russian law, which states in
pertinent part "a trade name shall be protected in all the countries of
the Union without the obligation of filing a registration, whether or not it
forms part of a trademark."
Therefore, respondent is entitled to use its company name “Tatra” on the
Internet to represent its business profile and to inform clients and consumers
about the company's mission and other details by its corporate website, at the
address <corp.tatra.com>.
Furthermore, the word “Tatra” as a corporate name has a widespread use
in a descriptive or generic sense in connection with the noted geographic
region and is extensively used by third parties. As such and absent any
evidence provided by Complainant that Complainant's Trademarks are either
famous or possess strong secondary meaning, others can use an identical or
confusingly similar domain name without violating the Policy.
Respondent is not involved in the business of speculating in domain
names, but rather Respondent’s intention is to pursue a legitimate interest in
capitalizing on the higher attractiveness among the consumers of the generic
word “Tatra.” This is the reason
Respondent chose to use this word as its corporate name and to include the word
in the Disputed Domain Name.
Further, Respondent's activities are primarily focused on serving the
Tatra geographic region.
Additionally, before any notice to the Respondent of this dispute,
Respondent's use of the Disputed Domain Name has been in connection with a bona
fide offering of goods or services in that respondent has been using the
disputed domain name in connection with its e-mail addresses, such as contact@tatra.com. These e-mail addresses have been used in
connection with respondent's business communications with its business
partners.
Further, the disputed domain name resolves to Respondent's
Web-pages. The purpose of this website
is to describe respondent's business and to attract clients and partners.
Respondent has used the disputed domain names with respect to two sub-domains
<contact.tatra.com>, and< folks.tatra.com> both of which
demonstrate actual use and legitimate rights.
Policy Paragraph 4(a)(iii)
The Disputed Domain Name was not registered as not being used in bad
faith.
There are no usual signs of bad faith in this case because the website
at <tatra.com> because the Disputed Domain Name: never resolved to a parking site; has never
been offered for sale to Complainant (or anyone else); has never made any reference
to Complainant’s website or goods; has never been merely "bait" for
users who were otherwise looking for Complainant’s site; and has never included
meta-tags referring to the site of the Complainant or his competitors.
Complainant's argues that bad faith can be derived from Respondent's
failure to develop or actually use the Disputed Domain Name. This is not correct. To the contrary, non-use
of a disputed domain name is prima facie
evidence of a respondent's good faith, unless a panel draws inferences about
whether the disputed domain name was used in bad faith given the circumstances
surrounding the registration.
Complainant's argument concerning the doctrine of constructive notice
is not correct. Under the Policy, most panels require actual notice, and the
issue is whether, based on the evidence, it is more likely than not that the
respondent had actual knowledge of a complainant's rights. Proof of trademark
rights does not, by itself, prove bad faith.
Even in those cases in which constructive notice was an issue, the
notice is limited to the country of registration.
Reverse Domain Name Hijacking:
Respondent asks the Panel to make a finding of reverse domain name
hijacking for the following reasons: Complainant has not undertaken any effort
to settle this dispute amicably and did not try to find out the legitimate
interests and rights of Respondent with respect to the Disputed Domain Name;
Complainant liberally tries to tarnish the business reputation of Respondent
with its many allegations in the complaint; the name “Tatra” is a common and generic
geographic term and Complainant is not distinctively associated with this word;
Respondent is legitimately using this word in the Disputed Domain Name and has
never considered offering the disputed domain name for sale or using it in any
other way that could harm anybody.
C. Submission of Tatra Folks
Respondent was created on 22 May 2002. It is a "public
association" under Russian law. A public association does not require
state registration and does not acquire the rights of a legal entity. At the same time, a public association is
free to determine its internal structure, aims, forms and methods of activity.
Tatra Folks PO has licensed the right to use the Disputed Domain Name
from Respondent (Tatra Ltd.). As such,
Tatra Folks PO is an independent registrant of the Disputed Domain Name (to the
fullest extent possible within the ambit of sub-domain entitlement as compared
to the ownership of the Disputed Domain Name as a whole).
Tatra Folks PO joins in the response submitted by Respondent.
Additionally, the use of the sub-domain <folks.tatra.com> by
Tatra Folks PO proves Respondent's rights and legitimate interests in the
Disputed Domain Name. Tatra Folks PO
uses said sub-domain for developing cultural and humanitarian contacts between
Respondent and the Slovak partners of Tatra Folks PO and to facilitate
communication between and among peoples within the Tatra Folks PO organization,
who are mostly located in the Saint-Petersburg area.
Respondent did not register and is not using the Disputed Domain Name
in bad faith. Tatra Folks PO was not
aware of Complainant's trademarks when it accepted the right to use the
Disputed Domain Name, as noted, in fact, Respondent was not aware of the
intellectual property rights of any third parties, including but not limited to
the Complainant, with regard to the word “Tatra” as of the date of the founding
of Respondent and until having been served with the complaint.
Complainant is attempting to reverse hijack the Disputed Domain
Name. Complainant's intent in this
regard is supported by the fact that Complainant has not made any efforts to
settle this dispute amicably and did not make any effort to discover the
legitimate interests and rights of the Respondent with regard to the Disputed
Domain Name. The Complainant has not filed any evidence, as is required,
demonstrating that it has exerted its best efforts to settle the dispute prior
to filing the complaint. Further, the Complainant tries to tarnish the business
reputation of the Respondent with fabricated and unsubstantiated act with
accusations of Respondent's cyber squatting. Finally, the name “Tatra” is a
common and generic geographic term, and Complainant is not distinctively
associated with this word. Respondent is legitimately using the Disputed Domain
Name and has never considered any offers for the sale thereof and is not using
it in any way that could harm anyone.
D. Complainant’s Additional Submission
Respondent contends that Complainant has no trademark rights for
purposes of Paragraph 4(a)(i) of the Policy. This is wrong. Complainant has demonstrated
that it owns numerous national trademark registrations, and this is sufficient
to establish rights in a trademark pursuant to this paragraph. Only a judge can
change and/or cancel the original decision to grant the registration of a
trademark, including Complainant's Trademarks, and this Panel is without
authority to do so.
Respondent agrees that Complainant's Trademarks is identical to the
Disputed Domain Name.
Respondent contends that the word “Tatra” is a generic term with
geographic meaning. This is not correct. In fact, in the Czech and Slovak
languages, in Russian, and, the complainant believes, in all Slavic languages,
the name of the mountains is “Tatry”, not “Tatra. The word “Tatra” is a translation of the
original name “Tatry.” As such, the word
“TATRA” is a fanciful and arbitrary word.
In addition, the correct name of the mountains in the
The registration of Complainant's Trademarks stands as proof that the
word “Tatra” is registerable.
Respondent contends that under the Policy the scope of protection
afforded to a trademark is limited to the goods and services for which the
trademark is registered. This is not
correct. In fact, this is irrelevant
because domain names are not registered for specific lists of goods or
services.
Respondent contends that Complainant has not proved that Complainant's
Trademarks have acquired well-known, famous or secondary meaning. This is not
required under the Policy. Nevertheless, Complainant notes that Czechoslovakian
authorities decided in 1992 that the trademark TATRA is famous or well-known
under its trademark laws. Furthermore, Complainant's Trademarks have been
registered and its trade name has been known around the world for many years.
Additionally, a Google query on the word “tatra” results in nine links in
connection with the Complainant among the first 10, and only one in connection
with the mountain region known as Vysoke’ Tatray.
Complainant trademark TATRA is well-known in
Respondent contends that its company name or trade name is identical
with the Disputed Domain Name and claims the protection of the Civil Code of
the
In contrast, Complainant began using the word “Tatra” as part of its
trade name as early as 1927 and provides supporting documentation for that
fact. As such, if anyone has the right to claim the protection of the trade
name “Tatra” in accordance with Czech, Russian and/or international law, it is
Complainant and not Respondent.
Respondent contends that it has been using e-mail addresses which
incorporate the Disputed Domain Name for business communications with its
partners, and Respondent specifically mentions the Slovak firms Karoff s.r.o.
and Pilsberg s.r.o. When complainant links
to these websites, it found the contact addresses for these firms, but nothing
about Respondent and its alleged relationship with these firms.
Respondent contends that it uses the disputed domain name to resolve to
web-pages used to describe respondent business and attract clients and partners. In support of this proposition, Respondent
attaches to its response as exhibits two screen shots from two websites. These
screenshots both exhibit the following statement: "We buy for
implementation in RF consumer goods (food, dishes, etc.) produced in
Further, it is clear from the face of these screenshots that they were
created after the complaint was served on respondent, “2009-12-25,” and as such
does not qualify as evidence of a use in connection with a bona fide offering of goods or services under Policy paragraph
4a(ii).
Tatra Folks PO contends in its submission that its use of the
sub-domain <folks.tatra.com> should be considered as demonstrating rights
and legitimate interests in respect of the disputed domain name. However,
Respondent fails to supply any evidence whatsoever to prove actual use of this
sub-domain at any time prior to service of the complaint in this matter.
Tatra Folks PO contends in its submission that the disputed domain name
should not be considered as having been registered or used in bad faith because
of its alleged lack of knowledge of Complainant's Trademarks. This is wrong. Complainants
national trademark registrations constitute constructive notice, and ignorance
is no excuse and proves nothing under the Policy.
Tatra Folks PO contends in its submission that Complainant it is
engaged in reverse hijacking of the Disputed Domain Name. Respondent further alleges that Complainant
made no effort to contact Respondent prior to the filing of the complaint.
Respondent ignores the fact that, until the complaint was filed, Respondent was
hiding its ownership of the Disputed Domain Name and all details behind the
veil of "who is privacy services,” provided by
Domain Protect LLC. Nevertheless, before
the complaint was filed, Complainant did attempt to contact Respondent through
the offices of said privacy service in an effort to acquire the disputed domain
name. Contact was refused and the offer was refused. Thus, Complainant cannot
possibly be considered as being engaged in reverse hijacking, having made a
legitimate effort to determine the ownership of the Disputed Domain Name and to
express an interest in acquiring it.
E. Respondent’s Additional
Submission
Respondent’s additional submission consists of a copy of its response
and additional exhibits.
FINDINGS
Complainant is the owner of the following trademark:
TATRA,
U. S. Trademark registration number 1940509, in International Class 7;
TATRA
and
TATRA
and
TATRA,
Community trademark registration number 003780137 in International Classes 12,
37 and 39
In addition to the foregoing U.S. and
Community trademark registrations, Complainant is also the owner of a number of
other TATRA and TATRA-family trademark registrations around the world,
including registrations in the International Trademark Registry (covering 66
countries), Canada, Germany, United Kingdom, Denmark, Norway and Finland
Respondent is the registrant of the Disputed
Domain Name, <tatra.com>, and the Disputed Domain Name was originally
created on March 14, 2000.
Respondent’s name is Tatpa Ltd.
Respondent passively held the Disputed Domain
Name for approximately nine years.
The Disputed Domain Name is identical to
Complainant’s Trademark.
Respondent does not have rights or legitimate
interests in the Disputed Domain Name.
Respondent’s registration and use of the
Disputed Domain Name was not in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
First Preliminary
Issue: Language of the Proceedings
UDRP Rule 11 requires the proceedings to be conducted in the language
of the Registration Agreement between Respondent and the Registrar. In the present action, the language specified
in the Registration Agreement is Russian.
However, both parties have filed their submissions in English and both
parties requested panel members located within the
Second Preliminary Issue: Deficient Response
Respondent did not file a hard-copy of its response prior to the
response deadline, and as such its response was not in compliance with UDRP
Rule 5. However, Respondent did file a
timely response electronically, and it has demonstrated an intention to proceed
in this action. Given the technical
nature of this default, the Panel believes that this should not prevent
Respondent from proceeding and therefore accepts both Respondent’s response and
additional submission, giving each due consideration. See J.W.
Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct.
17, 2003) (finding that where respondent submitted a timely response
electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature
of the breach and the need to resolve the real dispute between the parties that
this submission should be allowed and given due weight”).
Third Preliminary Issue: Respondent’s Request for Leave to File a
Second Additional Submission
The panel has been provided with Respondent’s request to file a second
additional submission. Respondent made this request because, it believes, it
was denied a meaningful opportunity to submit an additional submission. Respondent did file an additional submission,
but this consisted merely of a copy of its response and exhibits. Respondent did this because, it believes, its
response was erroneously determined to be deficient, as noted above, and it was
required to file its additional submission as it did to correct this
problem. Respondent requests an opportunity
to file a second, substantive, additional submission in response to the
Complainant’s additional submission.
The panel denies this request because it is moot given the Panel’s
decision to deny Complainant’s request that the Disputed Domain Name be
transferred.
Fourth Preliminary Issue: Status of Tatra Folks
Tatra Folks PO is listed in the Whois registration information as the
“Holder” of the Disputed Domain Name, or to be more precise, as the “Last Name”
of the Holder, the “First Name” being listed as Tatra Ltd. However, Respondent’s response and the
submission of Tatra Folks PO demonstrate that these two entities are separate,
although the Panel is not entirely clear about the exact nature of the
relationship.
The Panel does not endorse the concept that a third party generally has
standing in a proceeding under the Policy.
The entire ICANN UDRP system is, as is generally true of all binding
arbitration, predicated on the contractual arbitration agreements among the
parties, here the parties to the UDRP system include ICANN, the registrars, and
the domain name registrants (Holders).
Standing in a legal or administrative action involving contractual
rights requires privity of contract, unless an exception to this requirement is
demonstrated
Tatra Folks PO has not demonstrated such an exception.
Having said this, and with respect to the unique facts of this action,
the Panel has accepted the submission of Tatra Folks PO, treating it as an
additional submission by Respondent, and the Panel has given this submission
due consideration.
Fifth Preliminary Issue:
Whether this Action is Appropriate
Respondent argues that as an initial matter the Policy does not apply
to Complainant’s complaint because this situation, when viewed most favorably
to Complainant and least favorably to Respondent, involves competing claims to
the use of the word “Tatra.” The Policy
does not apply to a situation involving competing rights.
Respondent is correct that in some situations involving disputed rights
to a domain name the matter is best left to a court. These situations tend to involve the need to
determine disputed issues of fact directly as between the parties, often
involving alleged contracts between the parties and of contractual breach. See
Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007)(“A
dispute, such as the present one, between parties who each have at least a prima facie case for rights in the
disputed domain names is outside the scope of the Policy…the present case
appears to hinge mostly on a business or civil dispute between the parties,
with possible causes of action for breach of contract or fiduciary duty. Thus,
the majority holds that the subject matter is outside the scope of the UDRP and
dismisses the Complaint.”); see also Frazier
Winerly LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27 2006)(the issue was the rightful possession of the disputed
domain name as between two parties to a contract; the panel held that the
dispute was properly one for a court.)
In the present action, the dispute does not involve factual issues
directly between the parties, and there are no allegations of a contract or
prior relevant dealings between the parties.
Whereas the Panel’s task requires the determination of certain facts in
the face of competing positions, these are the types of disagreements that are
normal for an action under the Policy.
As such, the Panel declines to dismiss this action.
Policy paragraph 4a(i)
presents a threshold consideration in at least two parts. First, a complainant
must have rights in a trademark. Second,
the Disputed Domain Name must be identical or confusingly similar to such
trademark.
Registration of a trademark in a national
trademark office is ordinarily considered sufficient to establish the necessary
rights under the Policy. See Expedia , Inc., V. Tan, FA 991075 (Nat. Arb.
Forum June 29, 2007)("as the [complaint’s] mark
is registered with the USPTO, [the] complainant has met the requirements of
policy 4(a)(i)."); see also AOL LLC
v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006)(finding
that where the complainant has submitted evidence of its registration with the
USPTO, "such evidence establishes complainant rights in the mark pursuant
to policy 4(a)(i).")
In the present action, Complainant is the
owner of numerous trademark registrations for the mark TATRA. This is sufficient to establish the necessary
rights under the first element of the Policy.
For purposes of determining whether a domain name is identical to a trademark, the analysis is one of simple comparison between the two, excluding the generic top-level domain (“gTLD”). See Pomellato S.P.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that the respondent’s <treeforms.com> domain name is identical to the complainant’s TREEFORMS mark).
In the present action, the Disputed Domain
Name is <tatra.com> and Complainant's Trademark is TATRA. After removing
the gTLD “.com,” the two are identical, which Respondent admits.
Respondent argues that Complainant cannot
have rights in a trademark for purposes of Policy paragraph 4a(i)
because the word “Tatra” is generic; this word is the name of a geographic
region. However, the question of whether a word is generic is not generally
relevant for purposes of this first element of the Policy, except in so far as
a complainant attempts to demonstrate rights in a trademark absent a trademark
registration (sometimes called “common law” trademark rights).
The same is true about Respondent’s argument
that Complainant has not demonstrated that Complainant's Trademark has acquired
well-known, famous or secondary meaning.
The issues of secondary meaning or notoriety with respect to a trademark
are more relevant to an analysis with respect to common law trademark rights.
As such, Complainant has established the
first element of the Policy.
For purposes of Policy paragraph 4a(ii), a complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
In the present action, Complainant maintains
its burden. Complainant asserts that it
has not given Respondent permission to use Complainant’s Trademark and that
Respondent had not used the Disputed Domain Name for nine years and until the
complaint was filed, which some panels have held sufficient to establish the
absence of rights and legitimate interests.
The first assertion is within Complainant’s knowledge, and the second,
at least the non-use for many years, is consistent with the record. As such, Complainant has maintained its
burden.
Respondent’s Whois information
indicates that Respondent’s name is Tatra Ltd and Tatra Folks PO, as noted
above. However, the Whois information is
not necessarily conclusive. See
Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5,
2004) (finding that although “the WHOIS information for the
<yasexhoo.com> domain name states that the registrant is YASEXHOO . . .
this alone is insufficient to show that Respondent is commonly known by the
domain name.”); see also AOL LLC v. AIM Profiles, FA
964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent
listed itself as “AIM Profiles” in the WHOIS contact information, there was no
other evidence in the record to suggest that the respondent was actually
commonly known by that domain name).
Respondent has not provided direct evidence of how it is known in the community. But it does provide as an exhibit a copy of its certificate of incorporation dated 2001, which is an excellent indication of its name, and this certificate shows that Respondent’s name is “Tatpa.” Even assuming that the word “Tatra” is a valid translation for the word “Tatpa,” these are not equivalent for purposes of the second element of the Policy any more than, for example, a name such as “House Ltd.” would be equivalent to “casa” as used in a domain name, <casa.com>. Said another way, Respondent, “Tatpa” cannot be said to be commonly known as <tatra.com>. Respondent also provides a document dated September 4, 2009 that Respondent argues demonstrates that Tatra Folks PO was given permission to use the Disputed Domain Name, but this document also shows that Respondent’s name is “Tatpa Ltd.”
Respondent’s use of the Disputed Domain Name as an e-mail address could constitute rights and legitimate interests. See Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, D2000-0161 (WIPO May 12, 2000)(“… the Internet can be used for many other purposes, e-mail and file transfer operations being two examples. We do not accept that the Complainant’s contention that registration of a domain name which is only to be used for such purposes is in some way improper and constitutes bad faith.”); see also Thrive Networks, Inc. v. Thrive Ventures, Inc., Case No. D2003-0534 (WIPO Aug. 26, 2003)(“…it appears Complainant has made the common error of assuming that because there is no active website associated with the Domain Name, Respondent is not making a legitimate use of the Domain Name. Although it may not be easy to discern whether a domain name is being used for e-mail, FTP services, or simply as a host, such uses are legitimate.”). However, Respondent has not provided supporting evidence of this point over and above merely giving the e-mail addresses in its response. This is an insufficient factual showing for purposes of this second element of the Policy.
Respondent allows Tatra Folks PO to use the Disputed Domain Name, and Respondent argues that this demonstrates rights and legitimate interest. However, this by itself does not establish rights or legitimate interest; if this were true, then a right or legitimate interest could be easily created in every situation by simply licensing another, without regard for the use made of the domain name by the other. More is required.
The question is whether Tatra Folks PO uses the Disputed Domain Name in a way that establishes rights or legitimate interests for and on behalf of Respondent. Tatra Folks PO asserts that it uses the Disputed Domain Name for developing cultural and humanitarian contacts between Respondent and the Slovak partners of Tatra Folks PO and to facilitate communication between and among peoples within the Tatra Folks PO organization. However, the evidence of these uses is weak, at best, and this is an insufficient factual showing for purposes of this second element of the Policy.
In the present action, Respondent has not demonstrated with sufficient evidence its use of the Disputed Domain Name either in connection with a bona fide offering of goods or services or as a non-commercial or fair use. As such, the consideration of the generic nature of Complainants Trademark (to the extent it may be generic) is not reached.
As such, Respondent has failed to establish its burden under the second element of the policy, whereas Complainant has maintained its burden.
As such, Complainant has established this second element of the Policy.
A panel may consider the totality of the circumstances when conducting a Policy paragraph 4a(iii) analysis. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”).
At the same time, a panel may find
that a respondent has not registered or used a disputed domain name in bad
faith if it finds that the respondent has not violated any of the factors
listed in Policy paragraph 4(b) or engaged in any other conduct that would
constitute bad faith registration and use pursuant to Policy paragraph 4a(iii). See
Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916
(WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to
sell the domain name for profit, has not engaged in a pattern of conduct
depriving others of the ability to obtain domain names corresponding to their
trademarks, is not a competitor of the complainant seeking to disrupt the
complainant's business, and is not using the domain name to divert Internet
users for commercial gain, lack of bona fide use on its own is
insufficient to establish bad faith); see also Starwood Hotels & Resorts
Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9,
2005) (finding that the complainant failed to establish that respondent
registered and used the disputed domain name in bad faith because mere
assertions of bad faith are insufficient for a complainant to establish UDRP ¶
4(a)(iii)).
In the present action, the Panel is not persuaded that Respondent has
registered the Disputed Domain Name in order to prevent the owner of the
trademark or service mark, Complainant herein, from reflecting Complainant’s
Trademark in a correspondent domain name under Policy paragraph 4(b)(ii). Complainant does have a domain name,
<tatra.cz>, which reflects Complainant’s Trademark. Further, there is no
evidence that Respondent has engaged in a pattern of such conduct.
The Panel is not persuaded that Respondent has registered the Disputed
Domain Name primarily for the purpose of disrupting the business of a
competitor under Policy paragraph 4(b)(ii). There is
no evidence presented that Respondent and Complainant are
competitors.
The Panel is not persuaded that Respondent has intentionally attempted
to attract, for commercial gain, Internet users to its website by creating a
likelihood of confusion with Complainant's Trademark as to the source,
sponsorship, affiliation, or endorsement of Respondent’s website or location or
the product or service on Respondent’s website or location. To the extent that Respondent has used the
Disputed Domain Name, of which there is some evidence, the use was in
furtherance of Respondent’s own interests, and, to the extent Respondent
passively held the Disputed Domain Name, Respondent was not attempting to
attract anyone.
Policy paragraph 4(b)(i) provides that the
following, if found by a panel, shall be evidence of the registration and use
of a domain name in bad faith:
“Circumstances
indicating that you [the respondent] have registered… the domain name primarily
for the purpose of selling, renting, or otherwise transferring the domain name
registration to the complainant…for valuable consideration in excess of your
documented out-of-pocket costs directly related to the domain name…”
Complainant argues that such circumstances exist in this action because
Respondent registered and has merely passively held the Disputed Domain Name
for nine years, and that at the time of registration Respondent actually knew
and was on constructive notice of Complainant’s Trademarks. Such actual knowledge arose from
Complainant’s extensive use of Complainant’s Trademarks within Russia,
including numerous brochures, participation in numerous trade shows in Russian,
including Moscow, its extensive sales of its products in Russia (90,000 trucks
over some 60 years) exhibiting Complainant’s Trademarks, and maintenance of a
business office in Moscow. Such
constructive notice arose from Complainant’s numerous trademark registrations.
A majority of this Panel is not persuaded. The nine years of passive holding argues
against a long held intention to sell the Disputed Domain Name to
Complainant. Complainant shows no
evidence that Respondent ever contacted Complainant to attempt such a sale or
to attempt a sale to anyone else.
Complainant does show evidence that it contacted Respondent through
Respondent’s privacy service to inquire about the purchase of the Disputed
Domain Name, and Respondent responded with a statement that it believed the
Disputed Domain Name had a value of at least a certain amount, but in any
event, it was not interested in selling.
This response is rational and does not demonstrate the kind of bad faith
conduct prohibited by the Policy.
Additionally, there is some evidence that Respondent has been using the
Disputed Domain Name for its own purposes, e.g. not for the purpose of seeking
an impermissible payment from Complainant.
Respondent asserts that it is using the Disputed Domain Name in e-mail
addresses, such as contact.tatra.com.
Whereas this assertion is not persuasive with respect to the analysis
under second element of the policy given that the burden was shifted to
Respondent, as noted above, it is at least some evidence in its favor with
respect to the issue of bad faith, where the Complainant carries the
burden.
Whether Respondent had actual notice of Complainant’s Trademark is at
least possible given Complainant’s use of it in
Constructive notice has been considered a factor by some panels and not
by others. The Panel is of the view that
to consider constructive notice under the facts of this action would be to
require Respondent to have conducted a trademark search before registering the
Disputed Domain Name, and nothing in the Policy can be read as requiring such a
burden. See Allocation Network GmbH v. Steve Gregory, D2000-0016 (WIPO
March 24, 2000)(“…nothing in the Policy can be construed as requiring a person
registering a domain name to carry out a prior trademark search in every county
of the world for conflicting trademark rights…”)
As noted, a panel can go beyond the illustrative conditions contained
in Policy paragraph 4(b) and look at the totality of the circumstances. A majority of the Panel is of the opinion
that in doing so it would not reach a different conclusion.
As such, Complainant has failed to establish the third element of the
Policy.
Reverse Domain Name
Hijacking
Reverse domain name hijacking occurs when a complainant brings an
action under the Policy in bad faith. To
show such bad faith, a respondent must show that the complainant acted
unreasonably with respect to any of element of the Policy in proceeding with
the action. See Goldline International,
Inc. v. Goldline, D2000-1151 (WIPO January 4, 2000)(“To prevail on such a
claim [of reverse domain name hijacking], Respondent must show that Complaint
knew of Respondent’s unassailable right or legitimate interest in the disputed domain
name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith.”); see also CyberTrader v, Gregory Bushell,
D2001-1019 (WIPO October 30, 2001)(It appears to me that Complainant had a
reasonable, although ultimately unproved or erroneous, basis for filing the
action…Therefore, Respondent’s request for a finding of reverse domain name
hijacking is denied.)
In the present action, Complainant prevailed on the first and second
elements of the Policy, so it cannot be said that Complainant acted
unreasonable with respect to these elements.
Respondent prevailed on the issue of bad faith, but the case in its
favor was not so strong and clear-cut as to support a
conclusion that Complainant acted unreasonably with respect to this
element.
As such, Respondent’s request for a finding that Complainant attempted
reverse domain name hijacking is denied.
Dissent of Panelist Jeffrey
M. Samuels
I respectfully dissent.
In my opinion, the evidence supports a determination that the disputed
domain name was registered and is being used in bad faith. The evidence
indicates that Complainant has used the TATRA mark since at least 1919, that it
owns numerous registrations for the mark, and that the mark has been deemed by
the Czechoslovakian authorities to be famous or well-known. While I agree with
the majority that the concept of constructive notice has no place in UDRP
proceedings, in my view the evidence indicates that it is more likely than not
that Respondent had actual knowledge of Complainant's mark at the time it
registered the disputed domain name. As set forth in Complainant's
"Additional Submission," Complainant has conducted business in
Respondent's home country,
In addition, the evidence supports a determination that the disputed
domain name has not been used, at least in connection with an active website, for
nearly ten years. Such passive use has been relied upon by numerous ICANN
panels to support a determination of bad faith registration and use, even in
the absence of evidence supporting the existence of any one of the specific
"bad faith" factors enumerated in paragraph 4(b) of the Policy.
Respondent asserts that it has used the disputed domain name as part of
an email address before any notice to Respondent of this dispute. The majority
determines that such assertion does not support a determination that Respondent
has rights or legitimate interests in the domain name but that "it is at
least some evidence" with respect to the issue of bad faith.
However, the fact that the domain name was used in connection with an
email address before any notice to Respondent of this dispute does not, at
least in my opinion, necessarily support the majority's conclusion on the bad
faith element. As noted above, in my view, the evidence supports a determination
that it is more likely than not that Respondent had actual notice of
Complainant prior to registration of the domain name. If the email address was
not used prior to such actual knowledge, then I fail to see how use of the
domain name as part of an email address supports the majority's position on
this element of the Policy. See Thrive Networks, Inc. v. Thrive
Ventures, Inc., Case No. D2003-0534 (WIPO Aug. 26, 2003)."
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Kendall C. Reed (Chair), Panelist
Dated: February 5, 2010
Jeffrey M. Samuels, Panelist
Dated: February 5, 2010
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