Davanti Tyres Limited v. Calin Domuta / TeamObsidian LLC
Claim Number: FA1904001837699
Complainant is Davanti Tyres Limited (“Complainant”), represented by Antoinette M. Tease, Montana, USA. Respondent is Calin Domuta / TeamObsidian LLC (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <davandi.com> (the “Domain Name”), registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Clive Elliott QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 7, 2019; the Forum received payment on April 7, 2019.
On April 8, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the Domain Name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on April 9, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April 24, 2019.
On April 27, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Clive Elliott QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
Complainant states that it is the registered owner of the United States federal trade marks (“Complainant’s Marks”):
(a) DAVANTI, no. 4766538 issued in 2015 in Class 012 for tyres (solid, semi-pneumatic and pneumatic tyres), rims and vehicle wheel covers and in Class 037 for repair services, and maintenance and fitting services relating to vehicle tyres and wheels; and
(b) DAVANTI WINTOURA no. 5106214 issued in 2016 in Class 012 for tyres (solid, semi-pneumatic and pneumatic tyres), rims and covers for vehicle wheels of all kinds;
Complainant contends that the Domain Name, which was registered on September 20, 2002, is confusingly similar to Complainant’s Marks because the words " davandi" and " davanti" are virtually phonetically identical.
Complainant asserts that Respondent has filed two United States federal trade mark applications for the mark DAVANDI (serial nos. 87788220 and 88284024):
(a) The first application was filed on February 7, 2018 in Class 011 for bicycle helmets in Class 009 and bicycle lights. The United States Patent and Trade Mark Office (“USPTO”) declined the application on December 10, 2018, stating that the DAVANDI mark was confusingly similar to Complainant’s Marks.
(b) The second application, which is identical to the mark covered by the first application, was filed on January 31, 2019 in Class 011 for brackets specially adapted for use as mobile phone holders, holders for mobile phones, and bicycle helmets in Class 009, and bicycle lights.
Complainant contends that Respondent filed the second application knowing that it did not have Complainant’s consent to register or use the DAVANDI mark.
Complainant notes that although the Domain Name is owned by TeamObsidian LLC, the following message is displayed at the top of the <davandi.com> home page: "Team Obsidian BECOMES DAVANDI". Complainant believes that Respondent, Calin Domuta, is the owner of or otherwise affiliated with TeamObsidian LLC.
Complainant contends that according to its research of the Wayback Machine, the Domain Name was used by a website design and development firm from 2002 to 2007, after which the Domain Name was largely dormant for a number of years. It states that Respondent’s website does not appear until January 12, 2019.
Complainant states that on January 23, 2019, its counsel received an email from Respondent asking whether Complainant would be willing to enter into a trade mark co-existence agreement. This request was denied by Complainant’s counsel’s letter dated January 30, 2019, and a request was made that Respondent refrain from adopting the DAVANDI mark. A further email was sent to Respondent on February 11, 2019 and March 13, 2019. No response has been received to any of the letters.
Complainant submits that Respondent has used the "Davandi" name without Complainant’s authorization and with full knowledge that the USPTO has already determined that there is a likelihood of confusion between the DAVANDI and DAVANTI marks, and that Respondent launched his website after receiving written notification from the USPTO that the DAVANDI mark was confusingly similar to the DAVANTI mark.
Complainant states that by the time Complainant’s Marks were registered, Complainant had a worldwide presence via the Web. The earliest screenshot captured by the Wayback Machine for this website (www.davanti-t vres.com) is dated September 25, 2015, some 2˝ years before Respondent filed its first application for the DAVANDI mark and more than 3 years before Respondent launched its website.
Furthermore, Complainant asserts that a simple trade mark search for phonetic equivalents of "DAVANDI" would have quickly returned Complainant’s DAVANTI trade mark filings.
Respondent states that although Complainant argues that Complainant’s Marks and the Domain Name are confusingly similar, it is not using the mark that appears in its registration as a source identifier for its goods.
Respondent further states that it bought the Domain Name for the purpose of selling its goods based on the German trade mark it owns for the mark DAVANDI.
Respondent contends that it should be considered as having rights or legitimate interest in respect of the Domain Name because it owns the German Trade mark DAVANDI.
Respondent states that it does not intend, and has never intended, to interfere with DAVANTI products, nor has it tried to mislead customers or internet users that it has anything to do with DAVANTI.
For the reasons set out below the Panel concludes that Complainant has not proved its case and that relief should be denied.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Identical or Confusingly Similar:
Complainant claims rights in the DAVANTI mark through its registration of the mark with the USPTO (e.g. Reg. No. 4,766,538, registered July 7, 2015). See Compl. Ex. 2. It is well established that registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). Due to Complainant’s attached USPTO registration on the principal register, the Panel is satisfied that it has sufficiently demonstrated its rights. Accordingly, the Panel finds that Complainant has established rights in the DAVANTI mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that the Domain Name is confusingly similar to Complainant’s Marks as the DAVANTI and “davandi” terms are virtually phonetically identical. While Complainant does not make this specific contention, the Panel notes that the Domain Name substitutes the letter “t” in the DAVANTI mark with the letter “d” and adds the “.com” generic top-level domain (“gTLD).
The changes are relatively insubstantial and are insufficient to distinguish the Domain Name from Complainant’s DAVANTI mark. The Panel therefore finds that the Domain Name is confusingly similar to the DAVANTI mark under Policy ¶ 4(a)(i).
Rights and Legitimate Interests:
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, as Respondent is using the Domain Name without Complainant’s authorization and knowing full well that it has no valid claim to use the Domain Name.
This contention is circular and largely conclusory in nature. The Panel is not satisfied that Complainant has, as required, established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)).
Respondent argues that it does in fact have rights and legitimate interests in the Domain Name as Respondent owns a German Trademark for the DAVANDI mark. While not conclusive, the ownership of a trademark registration can point towards or show that a respondent has rights and legitimate interests in a domain name. See Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (“Based on the Respondent’s trademark registrations and probable use of the trademarks to conduct polling services, the Panel finds the Respondent does have legitimate rights and interests in the disputed domain name. Therefore, the Panel finds the Complainant has failed to carry its burden of proof under paragraph 4(a)(ii) of the Policy.”).
Respondent provides its registration certificate for the DAVANDI mark, registered in Germany. While the registration certificate is in the German language, it does provide evidence that Respondent has a German trademark registration and it is open to the Panel to infer that ownership of the DAVANDI mark provides some evidence of its rights and legitimate interests in the Domain Name.
For these reasons, the Panel infers that Respondent has at least some legitimate interest in the Domain Name. This is supported by the fact that Respondent has held the Domain Name for a number of years, regardless of whether it actively used the Domain Name throughout that period.
Accordingly, Complainant has failed to establish this ground under the Policy¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant does not make any applicable arguments under Policy ¶ 4(a)(iii). The Panel considers that, on balance, Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”). Complainant in this case appears to make similar conclusory statements in relation to rights and legitimate interests, which statements also have a bearing on the ground of bad faith.
Relevantly, Respondent’s registration of the Domain Name significantly predates Complainant’s first claimed rights in the DAVANTI mark. That being the case, it is difficult to envisage how Complainant can prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”). Further, in Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) the panel found that “Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.” Those observations are relevant in the present case.
The Panel is of the view that Respondent has not registered or used the Domain Name in bad faith as it has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). As the panel in Uhrenholt A/S v. FILLIP NIELSEN, FA 1646444 (Forum Dec. 21, 2015) observed, mere assertions of bad faith, without evidence, are insufficient for a complainant to establish bad faith under Policy ¶ 4(a)(iii).
Relevantly, in the present case, Respondent registered the Domain Name many years before there is any evidence of Complainant trading in or registering Complainant’s Marks. Further, as is evident from comparing the parties’ respective goods, Complainant and Respondent operate in different markets.
There is merit in Respondent’s contention that it bought the Domain Name for the purpose of selling its own goods and not to interfere with Complainant nor to mislead Complainant’s customers. There is therefore insufficient evidence to show that Respondent has acted improperly. For these reasons, Complainant fails to establish bad faith under Policy ¶ 4(a)(iii)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that Domain Name REMAIN WITH Respondent.
Clive Elliott QC, Panelist
Dated: May 8, 2019
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