UTA .ro : Cradle or acronym domain? #UDRP decision favored Respondent

The beauty of acronym domains, such as the LLL type, is that there is a very large number of matching word combinations.

In the case of UTA.ro, the domain was challenged at the WIPO by UTA ​​Romania Services SRL, on behalf of the Germany mother company, Union-Tank Eckstein GmbH.

The Romanian respondent claimed two things: that Uta stands for “cradle” in Romanian, and he planned to create a blog by that name. Then, he changed his mind, and the UTA acronym became “Union of Anonymous Translators”.

The domain transfer was denied.

Of course, it’s safe to deduce that both explanations are full of steamy manure. Regardless, the WIPO panelist saw that there was no harm in siding with the Respondent, and ordered the domain to remain with them. Full details on this decision for UTA.ro follow:

WIPO Arbitration and Mediation Center
DECISION OF THE ADMINISTRATIVE COMPLETE
UTA Romania Services SRL v. Rosu Cosmin
Case number DRO2019-0018

1. The parties

The applicant is UTA ​​Romania Services SRL, Romania represented by SCA Pacuraru, Iliescu, Mazareanu and Asociaţii, Romania.

The defendant is Rosu Cosmin, Romania, self-represented.

2. Domain name and Registrar

The domain name in dispute is <uta.ro> registered with ROTLD (“Registrar”).

3. Procedure

The complaint was submitted to the WIPO Arbitration and Mediation Center (Center) on December 10, 2019. On December 10, 2019, the Center sent by e-mail to the Registrar a request requesting a verification regarding the name. of the disputed domain. On December 11, 2019, the clerk emailed the Center his verification response indicating the person who registered the domain name and his contact details that differ from the defendant indicated in the Complaint and his contact details. The Center sent a communication by email to the Claimant on January 13, 2020 indicating the person who registered the domain name and its contact details as disclosed by the Registrar, inviting the Claimant to submit an amendment to the Complaint . The applicant submitted an amendment to the complaint on 16 January 2020.

The Center has verified that the Complaint together with the amended Complaint comply with the form requirements of the Uniform Domain Name Dispute Policy (“Policy” or “UDRP”), the Regulations for the Uniform Settlement of Domain Name Disputes (” Regulation ”), and of the WIPO Supplementary Rules for the Uniform Dispute Resolution Policy on Domain Names (“ Supplementary Rules ”).

In accordance with the Regulations, paragraphs 2 and 4, the Center formally communicated to the Defendant the Complaint and the proceedings began on January 23, 2020. According to the Regulation, paragraph 5, the deadline for filing the Response was February 12, 2020. The Defendant submitted to the Center 3 informal communications by e-mail on January 13, 15 and 17, 2020. The response was sent to the Center on February 12, 2020.

The Center appointed Marilena Comănescu as the only Member of the Administrative Compliance in this case on March 9, 2020. The Administrative Compliance finds that it was legally constituted. The Administrative Board has submitted the Declaration of acceptance and the Declaration of Impartiality and Independence, as requested by the Center to ensure compliance with the Regulation, paragraph 7.

On March 17, 2020 the Administrative Compliance issued an Administrative Procedural Order requesting the Claimant to prove his rights in relation to the UTA mark, according to the UDRP. The applicant submitted his reply on 20 March 2020.

The language of the proceedings is Romanian.

4. The factual situation

The applicant was registered in May 2016 by the parent company, the German group Union-Tank Eckstein GmbH & Co. KG. The applicant deals with the supply of fuel cards and services for freight and passenger carriers.

The Plaintiff’s parent company has registered trademarks for the name of UTA, such as the following:

– the international verbal mark having registration number 805412 for the ATU, registered on February 3, 2003, for goods and services in Nice classes 9, 35, 36, 38 and 39; and

– the European Union trade mark having registration number 000214015 for the stylized word UTA, filed on 1 April 1996 and granted on 18 August 1998 for goods and services in Nice classes 4, 12, 35, 36, 37, 38, 39 and 42.

The applicant promotes his services on the website <uta-romania.ro> from 2016.

The Plaintiff’s parent company and its affiliates have domain names such as <uta.lv>, <uta.ua>, <uta.fr> or <uta.es>.

The domain name in dispute was registered on June 18, 2019 by the Defendant, a natural person, and, at the time of the Complaint, he was working / under construction.

Prior to the time of filing the Complaint, on October 21, 2019, the Applicant invited the Defendant to a mediation procedure in front of the Registrar, the Defendant did not honor the invitation because he was not in Romania and notified this fact by an email on the date of October 15, 2019. On October 18, 2019, the Respondent, by e-mail, refused the offer of the Applicant to transfer his domain name in dispute for an unspecified remuneration.

5. The support of the Parties

A. The applicant

The applicant claims that his trade name, UTA Romania Services SRL, is identical to the disputed domain name <uta.ro> and as such he is entitled to own and use the disputed domain name. The applicant’s parent company also holds rights to the UTA trademark and this is identical to the domain name in dispute.

The applicant claims that the Defendant has no legitimate rights or interests with respect to the disputed domain name.

The domain name in question was registered or at least used in bad faith because the Applicant could not identify any information that would justify any legitimate interest of the Defendant. Further, the Claimant claims that the Defendant acted in bad faith because he did not participate in the mediation process, did not send a representative to this meeting, did not request another date for mediation and refused to transfer the domain name in dispute to the Claimant. .

B. The defendant

The defendant claims that he registered the domain name in dispute because this is a short word consisting of a combination of three letters and that he initially wanted to use the domain name in dispute for a personal blog, meaning “uța” (the word in Romanian). which describes the movement of a cradle), but then changed its mind and thought of providing a platform for online translations UTA, the “Union of Anonymous Translators”.

The defendant claims that he was not aware of the Claimant and his trademark, did not use the Claimant’s trademark in connection with the disputed domain name, and is not involved in the same field of activity with the Claimant.

The defendant states that he was not in the country at the time of the proposed mediation, that he is not familiar with domain name issues and cannot afford a representative for such matters. The applicant had to propose another date to him, if interested.

The Claimant’s trademark is not well known in Romania because the Claimant’s activity is addressed to a limited audience segment and is a relatively new business in Romania (registered in 2016).

There are also similar domain names, such as <uta.ch> or <uta.md>, owned by third parties and not by the Claimant.

6. Discussions and Findings

Under paragraph 4 (a) of the Policy, a claimant may obtain a favorable decision in an administrative proceeding under the Policy if he proves the cumulative meeting of the following three circumstances:

(i) the domain name in question is the same or similar and leads to confusion with a trademark or trademark in respect of which the applicant has rights;

(ii) the defendant has no legitimate rights or interests in the disputed domain name; and

(iii) the domain name in dispute has been registered and is used in bad faith.

The Panel will further analyze these circumstances.

A. Identical or similar so as to cause confusion

The applicant holds trademark rights for the name of UTA. A company affiliated with the trademark holder, such as a subsidiary entity of a parent company, is considered to have trademark rights under the UDRP in order to file a complaint. See section 1.4 of the WIPO Selection of Opinions of the WIPO Administrative Complaints on Selected UDRP Questions, Third Edition (“WIPO 3.0 Selection”).

The disputed domain name <uta.ro> exactly reproduces the Claimant’s UTA ​​mark.

It is well established in UDRP decisions that the designation “.ro” or other indicators for country code for higher level domains (“ccTLDs”) or generic code indicators for higher level domains (“gTLD”), being a technical requirement for Domain name registration is usually irrelevant when evaluating the similarity between a brand and a domain name. See section 1.11.1 of WIPO Selection 3.0 .

Thus, the Completion finds that the disputed domain name <uta.ro> is virtually identical to the Applicant’s UTA ​​mark, according to the Policy, paragraph 4 (a) (i).

B. Legitimate rights or interests

It is not necessary to analyze this element in view of the conclusions below regarding the third element.

C. Registered and used in bad faith

The applicant claims that his trade name UTA Romania Services SRL is identical to the disputed domain name <uta.ro> and is therefore entitled to own and use the disputed domain name. The applicant’s parent company also holds trademark rights for the ATU.

However, as the Defendant argued and resulted from Google’s search engine 1 , the term “uta” is actually a common three-letter combination.

A number of UDRP cases involving three-letter domain names reflect the fact that these names are widely used generally as acronyms or in other ways and it is highly plausible for a defendant to have registered such a domain name for good purposes. trust . See for example PCO AG v. Register4Less Privacy Advocate, 3501256 Canada, Inc. , WIPO Case no. D2017-1778 ; ETH Zürich (Eidgenössische Technische Hochschule Zürich) v. Andre Luiz Silva Rocha, Constructor Norberto Odebrecht S / A , WIPO Case no. D2016-0444 , and the cases cited therein.

Of course, each case will be analyzed according to its specific circumstances. As such, we wonder if we have in this case any evidence to suggest that the Respondent has registered the domain name in dispute with the Claimant in mind?

The applicant claims trademark and trade name rights without however providing any evidence as to his reputation or the widespread use. Moreover, the Claimant appears to be active in a somewhat niche or specialized sector and therefore it is not plausible to conclude that the Respondent would have registered the disputed domain name by having the Claimant in mind and / or targeting the mark. to.

The bad faith according to the UDRP is generally understood to occur when the defendant unfairly exploits or otherwise abuses the applicant’s mark. The burden of proof lies with the Claimant.

In this case, the Applicant claims that the Defendant registered the domain name in dispute in bad faith because:

– The applicant could not identify any information that would justify a legitimate interest of the defendant in having the domain name in dispute;

– The defendant did not participate in the mediation meeting, did not request another mediation date and did not send any representative to the mediation; and

– The defendant refused to transfer the domain name in dispute to the Claimant for personal reasons and without presenting other details.

The refusal to transfer the domain name to the dispute or to attend a meeting (announced in advance) is not per se , evidence of bad faith behavior.

Paragraph 4 (b) of the Policy lists a non-exhaustive list of circumstances that may prove registration or use in bad faith as follows:

(i) circumstances indicating that (the defendant) has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the registration of the domain name to the applicant, who is the trademark owner, or to a competitor of the claimant , for an amount that significantly exceeds the costs justified with documents regarding the domain name; or

(ii) you have registered the domain name to block the trademark or trademark holder from reflecting its trademark in a proper domain name, to the extent that you have engaged in such behavioral patterning; or

(iii) you have registered the domain name mainly in order to disrupt the activity of a competitor; or

(iv) by using the domain name, you have intentionally tried to attract Internet users to your website or other online site for commercial gain, by creating a risk of confusion with the applicant’s brand regarding the source, sponsorship, affiliation, or approval of your website or location or a product or service on your website or your location.

None of these circumstances is invoked or demonstrated by the Applicant.

Particular circumstances that completions may consider when assessing whether the defendant has registered a domain name in bad faith include: (i) the nature of the domain name (eg, the mistake of drafting a widely known trademark, or a domain name that incorporates the applicant’s mark together with an additional term such as a descriptive or geographical name, or one that corresponds to the applicant’s sector of activity or extension area), (ii) the ccTLD or gTLD indicator of the chosen domain name (eg in particular if it coincides with the area in which the complainant activates or will be expanded), (iii) the content of any website to which the domain name is redirected, including any modification of its content and the time when such modification was made, (iv) the period and circumstances from the date of registration (in particular when they were following the launch of a product, or when the applicant omitted to renew the domain name in time), (v) any defendant’s behavioral pattern regarding the pursuit of trademarks in relation to a number of factors, such as a common sector of commerce, target audience, or geographical location, (vi) an obvious lack of any legitimate right or interest in conjunction with the lack of any plausible explanation of the defendant regarding the choice of domain name, or (viiii) any evidence that generally suggests that the defendant was in any way targeting the claimant. See section 3.2.1 of WIPO Selection 3.0 .

Again, the Complainant has not proved any relevant factor of the ones listed above.

At the time of the Complaint, the disputed domain name was not actively used.

Since the beginning of the UDRP, the panels have considered that the non-use of a domain name (which includes a white page or “coming soon” or any other similar pages) does not prevent a discovery of the bad faith under the passive possession doctrine. The panel must examine all the circumstances of the case to determine whether the defendant acted in bad faith. While the completions will analyze the totality of the circumstances in each individual case, the factors that have been considered relevant in applying the passive possession doctrine include: (i) the degree of distinctiveness or reputation of the applicant’s mark; (ii) the defendant’s failure to formulate an answer or to transmit any evidence of actual or future use in good faith; (iii) concealment of the defendant’s identity or use of false contact data (the latter also representing a breach of the domain name registration agreement), and (iv) lack of any likelihood that the domain name will be used in good faith. See section 3.3 . from WIPO Selection 3.0 .

In the present case, the Applicant failed to demonstrate the factors listed above.

In view of all these factors, the Completion concludes that the Applicant has not proved the defendant’s bad faith regarding the registration and use of the disputed domain name.

7. Decision

For all the reasons listed, the Complaint is rejected.

Marilena Comănescu
Single Member of the Set
Date: March 23, 2020

1 See section 4.8 of WIPO Selection 3.0 regarding the powers of the Completion to carry out limited independent research.

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