Industrias Romi SA v. Renown SC

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

Industrias Romi S.A. v. Renown SC

Case No. D2001-1217

1. The Parties

The Complainant is Industrias Romi S.A., of Av. Perola Byington 56 – S. Barbara

d’Oeste Sao Paulo, Brazil, represented by Geoffrey L. Oberhaus, Esq., of Graydon Head &

Richey LLP of Cincinnati, Ohio, United States of America.

The Respondent is Renown SC, of 112/4 B Barnes Place, Colombo – 7, Sri Lanka,

represented by Zak Muscovitch, Esq., of Neinstein & Associates of Toronto,

Ontario, Canada.

2. The Domain Name and Registrar

The disputed domain name is <romi.com>.

The Registrar is Dotster, Inc., of Vancouver, Washington, United States of

America.

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute

Resolution Policy ("the Policy") adopted by the Internet Corporation

for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules

for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October

24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO

Arbitration and Mediation Center ("the Center").

The Complaint was received by email on October 5, 2001, and in hard copy on

October 9, 2001. The Complaint was acknowledged on October 9, 2001, and

that day registration details were sought from the Registrar. On October 15,

2001, the Registrar confirmed that the disputed domain name is registered in

the name of the Respondent at 225 Jampettah Street, Colombo – 13, Sri Lanka;

that the Administrative and Billing Contact is Mr. Vincent Peeris of the same

address; that the language of the Registration Agreement is English and that

the Policy applies to the disputed domain name.

On October 16, 2001, the Center satisfied itself that the Complaint complied

with all formal requirements (including payment of the prescribed fee) and that

day formally dispatched copies of the Complaint by post/courier (with enclosures)

to the Respondent at both addresses mentioned above and by email (without attachments).

The Center included with that material a letter dated October 16, 2001, containing

notification of the commencement of this administrative proceeding, with copies

(of the Complaint without attachments) to the Complainant, the Registrar and

ICANN.

The last day specified by the Center for a Response was November 5, 2001. That

day, the Response was filed by email and on November 15 in hard copy. Receipt

was acknowledged on November 7, 2001.

The Complainant elected to have the case decided by a single-member Administrative

Panel ("the Panel") and on November 19, 2001, the Center notified

the parties of the appointment of Alan L. Limbury as panelist, Mr. Limbury having

submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

That day the Center transmitted the case file to the Panel and notified the

parties of the projected decision date of December 3, 2001.

The Panel is satisfied that the Complaint was filed in accordance with the

requirements of the Rules and Supplemental Rules; payment was properly made;

the Panel agrees with the Center’s assessment concerning the Complaint’s compliance

with the formal requirements; the Center discharged its responsibility under

paragraph 2(a) of the Rules to employ reasonably available means calculated

to achieve actual notice to the Respondent of the Complaint; the Response was

filed within the time specified in the Rules and the Panel was properly constituted.

The language of the proceedings was English.

4. Factual Background

Since 1940, Complainant has been making and selling, to over 60 countries,

thermoplastic injection molding machines, machine tools, and foundry and high

precision boring systems. It is incorporated in Brazil, where it has its principal

place of business. It has a U. S. subsidiary named Romi Machine Tools, Ltd.,

located in Kentucky.

In the United States and Brazil, Complainant owns the rights to the registered

trademark ROMI for power lathes, milling machines, plastic injectors and parts

and structural components thereof. The trademark ROMI was first used by Complainant

in 1941; a U.S. trademark application was filed on July 17, 1978, and the

mark was registered with Registration No. 1142242 on December 9, 1980.

Respondent is a soccer club in Sri Lanka. Mr. Vincent Peeris is its President.

The disputed domain name was registered by Respondent on July 4, 2001. On September

26, 2001, Mr. Peeris, on behalf of Respondent, sent an e-mail to Complainant

at "sales@romiusa.com" in the following terms:

"Dear Sir,

We are Renown SC a prominent soccer club from Sri Lanka in Asia. We have won

our local league and F.A.Cup competitions several times. We have expanded into

Internet ventures and plan to establish Cyber Cafes in Sri Lanka to increase

Internet awareness in this region. To raise funds for the project we have decided

to sell some of our domains.

One such domain is romi.com which was to be used for a joint venture with an

Asian client who are also named Romi. We have been getting several inquiries

and offers for the domain and we have decided to sell the domain. We have contacted

you since you own romiusa.com and acquiring romi.com would be more beneficial

to you.

We are not domain speculators and the main reason we are selling our domains

is to raise funds for our project. We understand the present domain market and

would consider any reasonable offers. We have been getting offers for romi.com

and especially from other businesses named as Romi and from domain brokers.

So if you are interested in acquiring the domain get back to us promptly."

On October 2, 2001, Mr. Peeris sent Complainant a follow-up e-mail along similar

lines. Complainant replied that day:

"We are interested in the domain name romi.com. Do you have an idea as

to price? We will have to confirm registration through our attorneys."

On October 3, 2001, Mr. Peeris replied:

"We are glad to hear from you.

You can confirm our registration and ownership by checking the whois of romi.com.

Regarding the domain romi.com we have been getting offers for the domain from

other companies who are also named Romi as well as from domain brokers. We have

got several offers in the range of $500 to $5000 for romi.com. Our asking price

is $10,000 and we would sell the domain to the first party who meets this target.

But we would consider all offers in this region.

So if you are still interested in acquiring the domain let us know your offer

and the only criteria we have is that you should be able complete the sale promptly

since the main reason we are selling our domain is to raise funds for our Cyber

Cafe project.

We can complete the sale of domain through Escrow.com so that both parties

are protected and also their service is ideal for such transactions. If you

need any other details let us know."

On October 5, 2001, Mr. Peeris sent Complainant a further e-mail, repeating

the first two paragraphs of his e-mail October 3, 2001, and adding the following:

"As we had indicated before today is the last day for offers and therefore

let us know if you are making a definite offer for the domain so that we can

wait till you make an offer."

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to and confusingly similar to Complainant's

ROMI registered trademark.

Respondent has no rights or legitimate interest in respect of the disputed

domain name. Respondent's name does not incorporate the domain name. Complainant

is unaware of any trademark registrations owned by Respondent for ROMI marks;

of any holding out by Respondent as ROMI, nor of any instances where Respondent

has sold any products or services in connection with the disputed domain name.

Respondent in its September 26, 2001, email to the U.S. subsidiary of Complainant

admits that Respondent has no legitimate interests in respect to the disputed

domain name, saying:

"[t]o raise funds for the project we have decided to sell some of our

domains. One such domain is romi.com which was to be used for a joint venture

with an Asian client who are also named romi."

Respondent has not shown "demonstrative preparation(s)" to make a

bona fide use of the disputed domain name. Mere assertion of an inchoate plan

is insufficient as demonstrable evidence: World Wrestling Federation, Inc.

v. Ringside Collectibles, WIPO Case No.

D2000-1306 (January 24, 2000), (WWF collectibles dealer's claims of plan

to create an auction site not enough to overcome a prima facie case of no legitimate

use). Moreover, Respondent, in its email of September 26, 2001, admits it now

intends to sell the disputed domain name for profits.

Respondent has registered the disputed domain name and is using it in bad faith.

By offering the disputed domain name for sale at a price of $10,000, Respondent

is using the disputed domain name in bad faith. The $10,000 asking price is

greatly in excess of out-of-pocket costs directly related to the disputed domain

name.

Respondent has registered the disputed domain name and is using it in bad faith

by the passive holding of a domain name that is confusingly similar to Complainant's

ROMI mark. Upon considering all the circumstances of a case, use of a domain

name in bad faith may be inferred from the passive holding of a domain name

that is confusingly similar to a third party's mark: Advanced Micro Devices,

Inc. v. [No Name], WIPO Case No. D2000-0515

(September 13, 2000); Telstra Corp. v. Nuclear Marshmallows, WIPO

Case No. D2000-0003 (February 18, 2000).

B. The Respondent

Complainant brought this proceeding without an understanding of the scope of

the Policy. The Complaint, on its face, is entirely deficient and merits censure

by the Panel.

The fact is that Respondent registered the disputed domain name in good

faith and has a legitimate interest in the domain name. Complainant’s entire

case rests on the fact that the subject domain is identical or confusingly similar

to its registered trademark for ROMI.

Complainant’s Burden of Proof

Complainant must prove each of the three requirements under Paragraph 4 of

the Policy: Easyjet Airline Company v. Steggles, (WIPO,

Case No. D2000-0024, March 17, 2000).

Identical / Confusingly Similar

It is conceded that the disputed domain name and Complainant’s trademark are

identical. This however, is just a preliminary requirement pursuant to Paragraph

4(a) of the UDRP. Without the two remaining requirements, which are far more

onerous, the Complainant has not met its burden.

Legitimate Use

Complainant accuses Respondent of having ‘no legitimate interest’ in the subject

domain name because Respondent ‘is not known by ROMI nor does Respondent have

a trademark registration for ROMI’.

The fact is that Respondent is not required to be known by its domain name

or to have a trademark over the domain name in order for it to have a legitimate

interest as understood by the Policy.

Respondent is a prominent soccer club. In Sri Lanka, soccer clubs are community-based

organizations that often have roles in their community far beyond merely playing

soccer matches. Renown has expanded into Internet projects and its goal in this

enterprise is to establish Cyber Cafes around Sri Lanka that provide free email

services in order to increase Internet awareness in it’s local community. Renown’s

role in this is as a not-for-profit community organization.

Respondent registered the disputed domain name only a few months prior to the

commencement of this proceeding. It was purchased with the sole intention of

providing free email services to all those with the first name or surname, ROMI.

This kind of venture, often referred to as ‘vanity email’, has been held to

constitute a ‘legitimate interest’ pursuant to the Policy: Bosco Products,

Inc. v. Bosco E-Mail Service, NAF Case No. FA0005000094828.

ROMI is in fact one of the most popular names in South East Asia, with millions

of Indians and Sri Lankans all sharing the name ROMI. Do a search on <google.com>

and you will see thousands of references to south-east Asians with the name

Romi.

Furthermore, ROMI is the first name of Vincent Peeris’ mother.

The only reason that Respondent did not pursue the email service venture was

because Respondent’s members voted to make the establishment of the Internet

Cafes themselves a priority over vanity email services, as a result of limited

financial resources.

Complainant accuses Respondent of ‘passive holding’ of the domain name in the

several months that the domain was registered by Respondent. Complainant fails

to demonstrate passive holding as understood by the Policy in this respect,

because of the very short time period that Respondent owned the disputed domain

name: Mondich and Am. Vintage Wine Biscuits, Inc. v. Brown, WIPO

Case No. D2000-0004 [1](February 16, 2000),

(finding Respondent cannot be said to lack a bona fide intent to use the domain

name when only 10 months have passed since registration) and Casual Corner

Group, Inc. v. Young, FA 95112 [2] (Nat.

Arb. Forum August 7, 2000), (finding that Respondent has rights and legitimate

interests in the domain name even though he has made no use of the web site

at the time of the Complaint. Only after a two-year period of non-use is there

an inference of a lack of bona fide intent to use the name).

Complainant cannot fairly accuse Respondent of passive holding when only a

very short period of time has passed since registration.

No Bad Faith

Complainant has the onus of establishing not just ‘bad faith use’ of the disputed

domain name, but also, ‘bad faith registration’ pursuant to Paragraph 4(a)(iii)

of the Policy. Complainant has not led any evidence of bad faith registration.

There is absolutely no evidence that Respondent registered the subject domain

name in bad faith. As previously stated, it was entirely in good faith that

Respondent registered the name. It is beyond credulity to suggest that Respondent,

a respectable Sri Lankan soccer club and community group, had heard of Complainant

(a Brazilian company) at the time that it registered the disputed domain name.

When the vanity email project was discontinued, Respondent’s members voted

at a meeting to have Respondent’s club President, Vincent Peeris, conduct some

research on the Internet in order to find a company that might be interested

in purchasing the domain name, in order to raise funds for the cyber café

project.

Respondent emphatically submits that it never, ever, heard of Complainant before

Mr. Peeris found them on the Internet, on or about September 26, 2001.

On September 26, 2001. Respondent, through Mr. Peeris, contacted the sales

department at Complainant’s offices in the United States of America, and frankly

asked if they wanted to purchase the name for the reasonable sum of $10,000.

The funds would be directed to the Internet café project.

Mr. Peeris, always believed that he was acting in good faith by locating a

purchaser, firstly because the money was going to a good cause, but also because

it was such a generic and common name, that surely nobody could claim that they

have exclusive rights to it.

Where a domain name is generic, the first person to register it in good faith

is entitled to the domain name. Pursuant to CRS Technology Corporation v.

CondeNet (concierge.com), NAF, Case No: FA#0002000093547, Judgment: March

28, 2000:

Here, there appears to be no evidence of the conduct referred to as "cybersquatting".

The domain name holder, the Respondent, has not registered the domain name and

is not using the domain name without reasonable cause. There is no evidence

of use of the registered trademark nor is there evidence of confusion.

…Even though the trademark and the name are all but identical, the Panel has

determined that the first person or entity to register the domain name should

prevail in circumstances such as these where the domain name is a generic word,

here indicating a provider of services, and where that word is widely used as

a trade or service mark, although almost always in connection with modifiers

or qualifiers.

Generic and descriptive words and phrases will generally not be transferred

to a Complainant just because a Complainant has a registered trademark. Pursuant

to Coming Attractions v.ComingAttractions.com, NAF, Case No. FA0003000094341,

Judgment: May 11, 2000:

Respondent’s registered domain name, comingattractions.com, is facially identical

to and/or confusingly similar to Complainant’s COMING ATTRACTIONS trademark.

However, Complainant’s trademark applies specifically to apparel and there is

no evidence that Respondent ever used or intended to use the subject domain,

comingattractions.com in any way related to apparel. There is no indication

that Respondent has intended to attract Internet users to its web site or other

on-line location by creating a likelihood of confusion with Complainant’s mark

as to the source, sponsorship, affiliation or endorsement of the web site.

The term "coming attractions" is a generic term in the field of entertainment

and its widespread use predated Complainant’s trademark registration. Thus,

Respondent had the right to register the subject domain name, comingattractions.com

and the domain registration is a fair use of a generic term that was available

for registration in the form of the subject domain name without disparagement

of, or impact upon, Complainant’s trademark rights.

There are no circumstances that indicate the domain name was acquired primarily

for the purpose of transferring it to the Complainant or to prevent Complainant

from reflecting its trademark in a corresponding domain name, or that Respondent

has engaged in a pattern of such conduct. Since there is no indication that

Respondent registered the domain name primarily for the purpose of disrupting

the business of a competitor, Complainant has failed to establish that Respondent

registered the domain name "comingattractions.com" in bad faith.

Remarkably, Complainant, who by its own submission is a very large and powerful

company, has been in operation since 1940, and has never, ever made any effort

to register the disputed domain name until now.

It must be fairly assumed, that Complainant was not interested in the disputed

domain name until it was approached by Respondent, and that it was only the

modest price of $10,000 that formed the impetus for this proceeding. Quite clearly,

the domain name was not registered by Respondent in order to unfairly prevent

Complainant from registering it – Complainant always had every opportunity to

do so until it was recently acquired by Respondent.

An aggravating factor in these circumstances is Complainant’s, rather than

Respondent’s, bad faith. By email correspondence, Complainant, actually advised

Respondent that it was interested in the domain name and asked for a price.

It also advised that it would need to confirm registration through its attorneys.

Obviously, it was Complainant’s attorneys, who turned the situation around,

and suggested to Complainant that it didn’t need to pay Respondent for the name,

because Complainant could get it for free by fabricating a case against Respondent!

Respondent’s President, Vincent Peeris, did in fact write to Complainant and

offered the disputed domain name for sale. Respondent did so in a completely

honest and straight-forward manner evidencing credibility and honest intentions.

Both Respondent, and Vincent Peeris, have no history or pattern of bad faith

registrations. In fact, they are new to the Internet and were entirely caught

by surprise by the commencement of this proceeding.

Complainant (i.e. its attorney) being somewhat sophisticated in the ways of

the Internet, and domain name registrations, in particular, replied to Respondent

and inquired as to how much the domain name was for sale for. Absolutely no

mention was made to Respondent that Complainant was relying on any purported

trademark rights or believed that it was entitled to the domain name for merely

out-of-pocket expenses. Complainant in fact, attempted to unscrupulously mislead

Respondent as to Complainant’s malicious intentions.

Complainant now points to this offering for sale as ‘bad faith’, when it was

a party to the negotiations and never put Respondent on notice that it was asserting

any sort of rights over the disputed domain name. This frankly, borders on entrapment,

and ought to be considered Reverse Domain Name Hijacking.

It is submitted that even if Respondent’s act of attempting to sell the domain

name to Complainant is considered to be ‘bad faith use’ of the disputed

domain name, Complainant has failed to evidence ‘bad faith registration’, and

accordingly, the Complaint must fail.

Furthermore, Complainant has not filed any evidence of customers being misled

or purposefully diverted by Complainant.

Respondent accuses Complainant of Reverse Domain Name Hijacking and requests

that the Panel make a finding accordingly.

Complainant is obviously attempting to obtain Respondent’s domain name for

free. Complainant conduct must not be condoned. The Policy affords Complainants

relief only when they are the victim of cybersquatting, and in no

other circumstances. In this case, Respondent registered the subject domain

name in good faith for a legitimate purpose. Respondent is by no means a cybersquatter

and accordingly, should not be the victim of Complainant’s attempt to forcibly

take Respondent’s property.

Respondent submits that it was the price of the domain name which led to this

proceeding and not any legitimate claim of cybersquatting.

6. Discussion and Findings

Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on

the basis of the statements and documents submitted and in accordance with the

Policy, the Rules and any rules and principles of law that it deems applicable.

To qualify for cancellation or transfer, a Complainant must prove each element

of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the

domain name; and

(iii) the disputed domain name has been registered and is being used in bad

faith.

Identity or confusing similarity

Respondent concedes that the disputed domain name is identical to Complainant’s

registered trademark ROMI and the Panel so finds.

The Complainant has established this element.

Illegitimacy

The Panel infers that the Complainant has not authorized Respondent to use

its trademark nor to register the disputed domain name. Respondent’s name is

Renown SC. There is no evidence Respondent is known by the disputed domain

name; that it has any trademark registration for ROMI; nor that it made any

use of the disputed domain name in the few months between the date of registration

and the initiation of this Administrative Proceeding.

These circumstances are sufficient to constitute a prima facie showing

by Complainant of absence of rights or legitimate interest in the disputed domain

name on the part of Respondent. The evidentiary burden, therefore, shifts to

Respondent to show by concrete evidence that it does have rights or legitimate

interests in that name: Do The Hustle, LLC v. Tropic Web (WIPO

Case No. D2000-0624) and the cases there cited.

Respondent has provided a copy of a birth certificate of a person whose middle

name is Romi, said to be Mr. Peeris’ mother. The Panel accepts that the name

Romi is a common personal name in Sri Lanka and elsewhere. But the fact that

individuals have a legitimate interest in their personal names does not mean

that others, not known by the personal name in question, have such an interest.

In this respect personal names differ from the generic names considered in Coming

Attractions v.ComingAttractions.com, (NAF Case No. FA94341) and CRS Technology

Corporation v. CondeNet (concierge.com), (NAF Case No. FA93547) which anyone

is entitled to use.

In Shirmax Retail Ltd. v. CES Marketing Group, Inc. (eResolution Case

No. AF-0104) proof of even "perfunctory" preparations was held sufficient

to demonstrate a legitimate interest within paragraph 4(c)(i) of the Policy.

Mere assertion of a plan is insufficient: Tourism and Corporate Automation

Ltd. v. TSI Ltd. (eResolution Case No. AF-0096); World Wrestling Federation,

Inc. v. Ringside Collectibles, (WIPO

Case No. D2000-1306). Here Respondent has not demonstrated that it ever:

- decided to embark on a vanity e-mail project;

- took any steps in furtherance of that project;

- decided to discontinue that project;

- decided to embark on a cyber café project;

- pursuant to the vote of members in a meeting, authorized Mr. Peeris to conduct

research on the Internet to find a buyer for the disputed domain name to raise

funds for a cyber café project.

Nor has Respondent attempted to substantiate the assertions in its email of

September 26, 2001, that:

- it has expanded into Internet ventures;

- it plans to establish Cyber Cafes in Sri Lanka;

- it has decided to sell some of its domains;

- it has domains other than the disputed domain name;

- the disputed domain name was to be used in a joint venture with an Asian client

also named Romi;

- it has been getting offers for the disputed domain name from other businesses

named Romi and from domain brokers.

Unlike Respondent in Bosco Products, Inc., v. Bosco E-Mail Service (NAF

Case FA 94828), Respondent is not in the "vanity e-mail" business

nor is it shown to have made even perfunctory preparations to enter that business

(nor the Cyber Café business) prior to notice of this dispute.

The extensive experience in this field of Counsel representing Respondent enables

the Panel comfortably to draw the conclusion that, had there been evidence available

of any of the matters just enumerated, Respondent would have provided it in

its Response.

Respondent has not demonstrated by concrete evidence that it has rights or

legitimate interests in the disputed domain name.

Complainant has established this element.

Bad faith registration and use

The only evidence before the Panel as to the activities of Respondent since

registering the disputed domain name shows that, within 3 months, Respondent

approached Complainant with an offer to sell the disputed domain name and, when

asked for a price, sought $10,000. In these circumstances it is open to the

Panel to infer that sale to Complainant at a profit was Respondent’s primary

purpose for the registration: Educational Testing Service v. TOEFL (WIPO

Case No. D2000-0044). The Panel so finds. This finding involves rejection

of Respondent’s denial that it had ever heard of Complainant before September

2001. Respondent’s failure to produce any evidence in support of its assertions

enables the panel to reject this denial.

Under paragraph 4(b)(i) of the Policy, this finding is evidence of both bad

faith registration and bad faith use. Accordingly, it is unnecessary to consider

the issue of use separately.

The Panel finds that the disputed domain name has been registered and is being

used in bad faith.

The Complainant has established this element.

Reverse domain name hijacking

Complainant having succeeded on all three elements, this claim must be rejected.

There is no basis for the assertion by Respondent’s Counsel that Complainant’s

Counsel advised Complainant to fabricate a case.

7. Decision

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs

that the domain name <romi.com> be transferred to Complainant.

Alan L. Limbury

Sole Panelist

Dated: November 25, 2001

Footnotes:

1. https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0004.html

2. http://www.arbforum.com/domains/decisions/95112.htm