Lingaro.com, the brand name of a Polish startup “innovator in data analysis,” was registered in 2005. Fifteen years later, the company filed a UDRP at the WIPO.
Surprisingly, the domain’s renewal fees throughout the years have been paid for by the Respondent in this UDRP, and not the Lingaro company. Lingaro.com is forwarding to LingaroGroup.com, and the Complainant registered the European mark LINGARO in 2015.
In his response, the Respondent stated that he’s making no money from all this and that he’s been paying for the renewals of Lingaro.com without making any profit for this service.
Crazy as it seems, the sole panelist at the WIPO ordered the domain to remain with the Respondent, citing the 10 years between the registration of the domain and the trademark.
Full details on this decision for Lingaro.com follow, translated from Polish:
WIPO Arbitration and Mediation Center
Decision of the Adjudication Group
Lingaro Sp.zOO v Sławomir Kaczor
File reference number: D2020-04611. Pages
The reason is Lingaro Sp. z OO based in Poland, represented by Baker McKenzie Krzyżowski i Wspólnicy Sp.k. with headquarters in Poland.
The defendant is Sławomir Kaczor residing in Poland.
2. Domain name and registrar
The subject of the dispute is the domain name <lingaro.com> registered by NetArt Registrar Sp. z o. o. based in Krakow.
3. Description of actions performed in the proceedings
The lawsuit was filed at the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2020. On February 27, 2020, the Center emailed NetArt Registrar Sp. z o.o with headquarters in Krakow (“Registrar”) request to verify the domain name in question.
On March 6, 2020, the Center received a reply from the Registrar by email regarding verification, in which contact details and information on the subscriber slightly differed from the data of the Defendant and the contact details contained in the lawsuit.
The Center sent to the plaintiff by e-mail on March 6, 2020 the disclosed data of the Defendant and called on the plaintiff to submit a supplement to the suit. The plaintiff filed a supplemented lawsuit on March 13, 2020 (“Completed lawsuit”), indicating only Sławomir Kaczor as the Defendant. On the same day, the Center confirmed that the supplemented Claim meets the formal requirements set out in the Uniform Policy for the Resolution of Domain Names (“Policy”), in the Regulations for the Uniform Policy for the Resolution of Disputes (the “Regulations”) and in the Additional Regulations WIPO to the Uniform Policy for the Resolution of Disputes o Domain Names (“Additional Regulations”).
Pursuant to paragraph 2 and 4 of the Regulations, the Center officially notified the Defendant of the lawsuit and the proceedings began on March 16, 2020. According to paragraph 5 of the Regulations, the deadline for submitting the Response to the Suit was April 5, 2020. However, on March 25, 2020 r., the Center received a message from Whois Data Protection Sp. z o.o with headquarters in Krakow, indicated in the lawsuit as a defendant who questioned the correctness of service. In connection with this, on March 30, 2020, the Defendant was informed that the deadline for submitting the Response to the Claim was extended to April 19, 2020. Whois Data Protection Sp. z o.o with headquarters in Krakow – with caution – filed a reply to the lawsuit on April 19, 2020, indicating that he is not the person registering the disputed domain.
The Center appointed Piotr Nowaczyk as the sole arbitrator in the matter in question on April 27, 2020. The arbitrator accepted his appointment as appropriate and submitted the Declaration of Acceptance and Declaration of Impartiality and Independence required by the Center to ensure that the condition of paragraph 7 of the Regulations is met.
On May 5, 2020, the Defendant Sławomir Kaczor submitted a response to the lawsuit (“Response to the lawsuit”). On the same day, the Claimant requested that the Response to the suit be omitted without good reason, 16 days after the expiry of the time limit.
On May 6, 2020, the Defendant requested that the reply to the Suit be taken into account by the sole arbitrator, pursuant to point 5f and 14 of the Regulations, due to the ongoing epidemiological disaster in Poland and the resulting restrictions.
On May 8, 2020, the Plaintiff submitted a letter in which he contests the possibility for the arbitrator to take into account only the Response to the Claim and – as a precaution – presents a reply to the Response to the Claim.
On May 8, 2020, the sole arbitrator indicated that he had decided to consider the Response to the Claim submitted after the deadline resulting from the Regulations and the letter submitted by the Claimant on May 8, 2020. It should be noted that each party should have a reasonable opportunity to present their cases, and the arbitrator’s possession of one complete case file and positions of the parties will have a positive impact on the decision (see Vincle Internacional de Tecnologia y Sistemas, SA v. Warren Weitzman, Caramba LLC , WIPO case No. D2018-1182 ).
4. Facts
The plaintiff deals with the design and implementation of IT systems for data integration and analysis, supporting the organization and work of enterprises. The plaintiff was entered in the Register of Entrepreneurs of the National Court Register on September 22, 2005 after the company “Lingaro Sp. z OO. ”
The defendant is the plaintiff’s founder and partner. In addition, he is a partner in the following companies: Cloud on Mars Sp.zOO, which conducts activities related to software, and Sport Algorithmics and Gaming sp. Z oo, which conducts activities related to software and computer games. At Sport Algorithmics and Gaming Sp. z o.o The defendant also serves as a member of the management board of Sport Algorithmics and Gaming Sp. with OO
The party to the dispute is not Whois Data Protection Sp. z o.o with its registered office in Krakow, because in the Supplemented Claim the plaintiff did not indicate this entity as a defendant, and there are no other reasons justifying inclusion in this proceeding.
The plaintiff is entitled to register many trademarks containing the word “LINGARO” protected in the European Union, including Poland, Canada and the United States. In particular, the plaintiff is entitled to:
– EU word mark LINGARO No. 014918171, registered with priority from 17 December 2015 for goods in class 9 and services in classes 35, 36, 38, 42 and 45;
– Polish word and graphic sign LINGARO No. R.241747, registered with priority from July 7, 2010 for services in classes 35 and 42;
– Canadian word mark LINGARO No. TMA984187, registered with priority from November 6, 2015 for services in classes 35 and 42;
– American word mark LINGARO No. 4831204, registered with priority from March 3, 2015 for services in classes 35 and 42.
The claimant also uses the following domain names: <lingaro.eu>, <lingaro.sg>, <lingaro.ch>, <lingaro.ph>.
The disputed domain name was registered on August 10, 2005.
After entering the name of the disputed domain, you are directed to the website run by the Claimant under the domain name <lingarogroup.com>, which offers, among others products and services related to the development of computer software, business consulting and analysis services, financial services, telecommunications services.
The dispute between the parties regarding the disputed domain name has been ongoing since at least 2017. The defendant was summoned by the Claimant to refrain from using the disputed domain name by a summons dated 27 January 2020.
5. The parties’ submissions
A. Reason
First, the Claimant claims that the domain name is identical to the text and wording of the LINGARO trademarks, as well as its company.
Secondly, the Plaintiff indicates that the disputed domain name has been registered by the Defendant unlawfully and without legitimate interest. The plaintiff’s claims show that the Defendant does not run his own business through the website under the disputed domain name, and it only serves to redirect him to the plaintiff’s website operated under <lingarogroup.com>. According to the plaintiff, the defendant does not therefore offer any goods or services, but only uses the identity of the domain name with the defendant’s distinctive signs, including trademarks, as well as his company. The plaintiff claims that the defendant is not in any way associated by consumers with the name of the disputed domain. According to the plaintiff, the use of the disputed domain by the defendant has no commercial justification,or non-commercial and is dishonest.
Thirdly, the Claimant claims that the disputed domain name was registered in bad faith, due to the fact that the Defendant never used the domain in any other way than using it to redirect to the plaintiff’s website. The plaintiff also indicates that the Defendant does not have any rights to the name of the disputed domain due to registration of the trademark or company. The plaintiff relies on the risk that the defendant may use the domain to disrupt the plaintiff’s business.
According to the plaintiff’s claims, the defendant makes the transfer of the domain name to the plaintiff subject to payment and threatens the plaintiff with limiting access to the disputed domain name.
In addition, the Plaintiff also indicates that he incurred the costs of maintaining the disputed domain name for most of the period of its registration (2006-2015), paying the applicable fees, and the Defendant only started paying for the disputed domain when in 2016 he started conducting competitive activities and decided to use the domain name “Lingaro.com” to try to force the plaintiff to make concessions on his behalf.
The plaintiff indicates that the Defendant seriously disrupted the plaintiff’s use of the disputed domain name, including by refusing to provide codes for the disputed domain name needed to change the enterprise’s electronic communication system from G-suite to Microsoft Exchange that would meet customer requirements.
B. Defendant
First, the Defendant claims that the Claim was brought by the plaintiff in bad faith in order to escalate intra-corporate conflicts. The defendant also indicates that the plaintiff is misleading WIPO, creating the impression that the defendant is a third party to the plaintiff who is conducting competitive activity against him.
Secondly, the Defendant claims that the disputed domain name was registered in good faith even before the plaintiff was established. He claims that he registered the disputed domain name legally, immediately before establishing the plaintiff, precisely for the purpose that the company could use it free of charge.
Thirdly, the Defendant claims that the plaintiff has been using the disputed domain name without interruption for 15 years and that the Defendant is not seeking any remuneration for that. The defendant indicates that he pays all fees related to registration, while the plaintiff does not refund the fees in this respect.
Fourthly, according to the Defendant’s claims, the Claimant freely and uninterruptedly redirects to the site under the domain name in question to other domains.
6. Discussion and arrangements
A. Identity or similarity to the extent that there is a risk of misleading the recipient
The disputed domain name is identical to the LINGARO trademark and the plaintiff’s company because it incorporates the trademark (company) in its entirety. However, the suffix ‘.com’ does not affect the assessment of the identity or similarity of the mark and domain name under this condition (see LEGO Juris A / S v. Whois Data Protection Sp. Z oo / Mirek Nowakowski ROSTALCO Sp. Z o.o , WIPO case No. D2012 -0607 ). .
For these reasons, the Adjudication Group accepts that the premise specified in point 4 (a) (i) of the Policy has been demonstrated by the Claimant.
B. Rights to the name or legitimate legal interest
The defendant is not known under the name “Lingaro”, nor does it offer any goods or services under that name.
The parties agreed that the website to which the disputed domain name redirects visitors belongs to the Claimant. The defendant does not receive any remuneration for this. This means that the Defendant agrees to the use of the disputed domain by the claimant company, although there may indeed be a concern that in the face of a conflict between the parties, the plaintiff’s use of the disputed domain name will be difficult.
However, given that the Claimant did not show that the disputed domain name was registered in bad faith (see point C below), the Adjudication Group failed to decide on the premise set out in point 4 (a) (ii) Policies.
C. Registration and use in bad faith
In accordance with the Policy, the Claimant should cumulatively demonstrate that the disputed domain name has been (i) registered and (ii) is used in bad faith.
The disputed domain name was registered on 10 August 2005, i.e. before the establishment of the plaintiff company and its acquisition of the company “Lingaro”, as well as 10 years before the registration of the trademark LINGARO. In accordance with WIPO case law, this circumstance excludes the possibility of concluding in proceedings based on the Policy that the domain name in question was registered in bad faith (see WIPO Overview 3.0 , section 3.8.1 ., Item i).
In view of the above, the plaintiff did not satisfy the requirements arising from point 4 (a) (iii) Policy and there is no need to consider whether the disputed domain name is used in bad faith.
7. Decision
Considering the above, the action is dismissed.
Piotr Nowaczyk
The Only Referee
Date: May 20, 2020
