Rhoss S.p.A. v. None (CTLGDN-272205)

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rhoss S.p.A. v. None (CTLGDN-272205)

Case No. D2003-0858

1. The Parties

The Complainant is Rhoss S.p.A., Codroipo, Udine, Italy, represented by Studio

Torta S.r.l. of Italy.

The Respondent is None (CTLGDN-272205), ChonAnSi, ChungNam, Republic of Korea.

2. The Domain Name and Registrar

The domain name in dispute is <rhoss.com>.

The Registrar for the disputed domain name is Catalog.com, Inc. of Oklahoma

City, United States.

3. Procedural History

The Complaint was filed the WIPO Arbitration and Mediation Center (the "Center")

on October 29, 2003. On October 30, 2003, the Center transmitted

by email to Catalog.com a request for registrar verification in connection with

the domain name in dispute. On October 30, 2003, Catalog.com transmitted

by email to the Center its verification response confirming that the Respondent

is the Respondent of the disputed domain name.

The Center verified that the Complaint satisfied the formal requirements of

the Uniform Domain Name Dispute Resolution Policy (the "Policy"),

the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"),

and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

(the "Supplemental Rules").

In accordance with Paragraphs 2(a) and 4(a) of the Rules, the Center formally

notified the Respondent of the Complaint, and the proceedings commenced on November 4, 2003.

In accordance with the Paragraph 5(a) of the Rules the due date for Response

was November 24, 2003. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on November 25, 2003.

The Center appointed Irina V. Savelieva as the sole panelist in this matter

on December 8, 2003. The Panel finds that it was properly constituted.

The Panel has submitted the Statement of Acceptance and Declaration of Impartiality

and Independence, as required by the Center to ensure compliance with Paragraph 7of

the Rules.

On December 22, 2003, the Center notified the Parties that the decision

date was extended to January 16, 2004.

4. Factual Background

The Complainant Rhoss S.p.A is an Italian company founded in 1968, leader in

the heating, refrigerating and air conditioning sector with activity in Europe

and worldwide (Asia, Africa and Latin America) (Complaint Annex 6).

The Complainant owns a registered trademark for RHOSS in many countries of

the world, including:

Italy - first registration No. 247146 of October 19, 1970, (with

renewals) for classes 7, 9 and 11 (Complaint Annex 7- 9);

Austria, Czech Republic, Germany, France, Hungary, Portugal, Slovak Republic,

Switzerland and other counties – first international registration No. 374167

of December 29, 1970 (with renewals) for classes 7, 9 and 11 (Complaint

Annex 12).

The Complainant owns a registered trademark for RHOSS and design in many countries

of the world, including:

Italy – registration No. 2472001BO of May 6, 2003, with priority

date March 2, 2001, for class 11 (Complaint Annex 10);

Croatia, Cuba, Egypt, Morocco, Russian Federation, Turkey, Slovenia and Ukraine

- international registration No. 807086 of June 5, 2003, for class

11 (Complaint Annex 13);

Spain – registration No. 2420394 of February 5, 2002, with priority

date August 9, 2001, for class 11 (Complaint Annex 14);

China – registration No. 2010461 of January 28, 2003, for class 11

(Complain Annex 15);

European Union countries – community trademark application No. 3079662 with

priority date March 3, 2003, (Complain Annex 11).

The Complainant owns domain name <rhoss.it> with corresponding website

"www.rhoss.it" (Complaint Annex 5). The Complainant used to own domain

name <rhoss.com> which was not renewed in June 2003, (Complainant Annex

19).

The Respondent registered the disputed domain name, <rhoss.com>, on September 9, 2003.

5. Parties’ Contentions

A. Complainant’s Summarized Contentions

- The disputed domain name, <rhoss.com>, is identical to the Complainant’s

trademarks. The gTLD suffix, .com, can not be considered as eliminating identity

since this suffix is inherent in all domain names in this gTLD.

- The Complainant owns domain name <rhoss.it> and has corresponding website

which is used to offer its goods and services. The Complainant used to own domain

name <rhoss.com> and accidentally failed to renew registration of the

disputed domain name in June 2003, (Complaint Annex 19). According to Whois

database the Respondent registered the disputed domain name on September 9, 2003,

(Complaint Annex 1).

- The Complainant has never authorized the Respondent to use the trademark

RHOSS or use any domain name incorporating its trademark.

- There is no information that the Respondent has any trademark registration

for RHOSS in any other country of the world.

- There is very little information about the Respondent, its name and legal

status are unknown, there is no information that the Respondent has a trade

name or a company name identical or similar to the disputed domain name.

- There is no information that the Respondent is commonly known under the domain

name in dispute.

- The Respondent has no rights or legitimate interests in respect of the disputed

domain name.

- The Respondent’s present use of the disputed domain name can not be treated

as a bona fide offering of goods or services. It merely used as a link

to other websites or web page under construction (Complaint Annex 20-22).

- The domain name should be considered as having been registered and used in

bad faith by the Respondent. The Respondent (or its representative) has proposed

several times that the Complainant buy the domain name in dispute for a significant

sum of money clearly exceeding out-of-pocket costs directly related to domain

name (Complainant Annex 2, 23-24).

- The Respondent’s registration of the domain name with the exclusive purpose

of making money constitutes bad faith as it was indicated in Comitato per

l'Organizzazione dei XX Giochi Olimpici Invernali -Torino 2006 v. gate24,

WIPO Case No. D2003-0411 and Agnona S.p.A.

v. Mr. Lian Ming, WIPO Case No. D2003-0296

(Complainant Annex No. 27).

- The disputed domain name, <rhoss.com>, should be

transferred to the Complainant.

B. Respondent’s Summarized Contentions

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Respondent was given notice of this proceeding in accordance with the Rules.

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.

However, as previously indicated, the Respondent failed to file any reply to

the Complaint and has not sought to answer the Complainant’s assertions, evidence

or contentions in any other manner. The Panel finds that the Respondent has

been given a fair opportunity to present its case, and the Panel will proceed

to a decision on the Complaint.

The Respondent’s default does not automatically result in a decision in favor

of the Complainant. The Complainant must still prove the elements required by

the Policy. In accordance with Paragraph 4(a) of the Policy, in order to succeed

in this proceeding and obtain the transfer of the domain name, the Complainant

must prove that each of the three following elements are satisfied:

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

or service mark in which the Complainant has rights;

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

domain name; and

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

Pursuant to Paragraph 15(a) of the Rules the Panel shall decide the 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.

Moreover, in accordance with Paragraph 14(b) of the Rules, the Panel may draw

such inferences as it considers appropriate from the Respondent’s failure to

reply to the Complainant’s assertions and evidence or to otherwise contest the

Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s

assertions and evidence and inferences drawn from the Respondent’s failure to

reply.

Identical or Confusingly Similar

The Complainant has exhibited its trademark registration RHOSS, RHOSS and design

and similar in many countries all over the world for international classes 7,

9 and 11 including among others the following counties: Austria, China, Cuba,

Germany, Egypt, France, Hungary, Italy, Portugal, Russian Federation, Spain,

Switzerland, Turkey, Ukraine, United Kingdom (Complaint Annex 7-18) dated from

1970 (first registration October 19, 1970).

Respondent has not filed any reply to the Complaint or contested the Complainant’s

assertions. In the circumstances, the Panel finds that the Complainant has rights

in trademarks RHOSS, RHOSS and designs and others.

The disputed domain name, <rhoss.com>, is similar to the Complainant

trademark RHOSS.

The word "rhoss" in disputed domain name neither bears any specific

meaning nor represents a commonly known or generic name. Therefore, the Respondent

would not have been able to demonstrate any justified connection with this name.

The Panel infers the Complainant has satisfied its burden of proof under Paragraph

4(a)(i) of the Policy.

Rights or Legitimate Interests

The Complainant contends the Respondent has no rights or legitimate interests

in the disputed domain name. The Complainant has never given any authorization

to the Respondent or its representative to use the Complainant’s trademark or

to register domain name containing its trademark.

Even though the Respondent has not filed any reply to the Complaint and has

not contested the Complainant’s assertions, it is upon the Panel to consider

whether the Respondent’s use of the disputed domain name demonstrates rights

or legitimate interests in the domain name.

According to Paragraph 4(c) of the Policy the following circumstances, if proved,

demonstrate a Respondent’s rights or legitimate interests in a domain name:

(i) Respondent used or demonstrably prepared to use the domain name or a corresponding

name in connection with a bona fide offering of goods or services prior

to notice of the dispute;

(ii) Respondent (as an individual, business, or other organization) has been

commonly known by the domain name, even if it has not acquired trademark rights;

or

(iii) Respondent is making a legitimate non-commercial or fair use of the domain

name, without intent for commercial gain to misleadingly divert consumers or

to tarnish the complainant’s mark.

The Respondent may elect to show rights and legitimate interests, non-exhaustively,

by producing proof under Paragraphs 4(c)(i-iii) of the Policy. By not responding

to the Complainant’s contentions the Respondent in this proceeding has never

attempted to show its rights and legitimate interests.

Firstly, there is no evidence that before any notice of a dispute with the

Complainant, the Respondent was using the disputed domain name for a legitimate

offer of goods and services.

The Complainant points out that the disputed domain name's website is only

being used as a link to other websites or web page under constriction. After

domain name registration on September 9, 2003, for about a month the

Respondent’s website "www.rhoss.com" had a link with a website for

registering domain names and displaying banners and advertisements (Complaint

Annex 20). Later in October 2003, the website was linked to the Samsung

Electronic Italia website. At present the website "www.rhoss.com"

is linked to a web page under construction (Complaint Annex 22).

The Panel finds no evidence that Respondent is using the disputed domain name

for a legitimate offering of goods and services.

Secondly, as for the Respondent’s proof under Paragraph 4(c)(ii) of the Policy

there is no evidence that the Respondent has been commonly known by the disputed

domain name.

There is no information that the Respondent may be known under the disputed

domain name as its business name or its company name. In e-mail correspondence

with the Complainant the Respondent never mentions any rights or legitimate

interests to the word "rhoss" (Complaint Annex 2, 23-24). The Complainant

contends the Respondent is not commonly known by the disputed domain name RHOSS.

The Panel does not have any grounds to believe that the Respondent may be known

under the name "rhoss".

The Panel recalls that the Respondent registered the disputed domain name on

September 9, 2003. The Complainant and its trademark RHOSS have been

well known since 1970. The company name RHOSS and its trademarks are known all

over the world. The Panel believes that the Respondent knew about the Complainant’s

trademarks.

Afterwards, regarding these facts, it is in the Panel’s view that the Respondent

set out to register disputed domain name since he knew it was valuable and he

was well aware of the Complainant’s trademark interests in the domain name.

Thus, the Panel does not find that the Respondent’s use of the disputed domain

name as a link to a web page under construction is a bona fide offering

of services under Paragraph 4(c)(i) the Policy. Nor does it show any demonstrable

preparations to use the disputed domain name. Rather, the Respondent essentially

is using a holding pattern for the disputed domain name while the Respondent

waits to see how best to exploit it for generating profit by selling it.

Furthermore, the Panel draws an adverse inference from the Respondent’s failure

to provide any explanation or rationale for its use of the disputed domain name.

The Panel finds the Complainant has carried out its burden of proof to show

the Respondent has no legitimate rights or interests in the disputed domain

name.

Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are

deemed to be evidence that a Respondent has registered and used a domain name

in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired

the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the complainant who is the owner

of the trademark or service mark or to a competitor of the complainant, for

valuable consideration in excess of its documented out-of-pocket costs directly

related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the

owner of the trademark or service mark from reflecting the mark in a corresponding

domain name, provided that the Respondent has engaged in a pattern of such conduct;

or

(iii) the Respondent has registered the domain name primarily for the purpose

of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to

attract, for commercial gain, Internet users to its website or other on-line

location, by creating a likelihood of confusion with the complainant’s mark

as to the source, sponsorship, affiliation or endorsement of its website or

location or of a product or service on its website or location.

The Complainant contends the Respondent has violated the bad faith provisions

of the Policy, Paragraph 4(b)(i), because it intends to sell the disputed domain

name to the Complainant (who is the owner of the trademark) for much more than

Respondent’s out-of-pocket costs directly related to domain name. There is sufficient

evidence that this is the case.

The Complainant presented the copies of e-mail correspondence with the Respondent

(or his representative) in which the proposals was made to sell the disputed

domain name for the price of USD 50,000 (e-mail of October 3, 2002

– Complaint Annex 25), the price far exceeding what Respondent paid for it.

The Respondent is in violation of the bad faith provisions of the Policy in

paragraph 4(b)(i), i.e. the Respondent registered the disputed domain name with

the intention of selling it for far more than it paid for it.

Thus, the Respondent’s registration of the domain name, which was accidentally

lost by the Complainant, with a solo purpose of selling it at high profit constitutes

bad faith as it

was indicated in InTest Corporation v. Servicepoint, NAF Case No. FA0095291.

The Panel finds that the Respondent’s bad faith in registering and using the

disputed domain is most apparent in the fact that the Respondent has held the

disputed domain name while doing essentially nothing with it and has offered

to sell it for a significant amount of money.

The Panel does not interpret the Policy to mean that the mere offer for sale

of a domain name for a substantial sum of money has to be considered an act

of bad faith. Selling of domain names is prohibited by the Policy if the other

elements of Paragraph 4(a) of the Policy are also violated, i.e. that the domain

name "has been registered and is being used in bad faith".

According to the widely cited case Telstra Corporation Limited v. Nuclear

Marshmallows, WIPO Case No. D2000-0003:

"the requirement in paragraph 4(a)(iii) that the domain name "has been

registered and is being used in bad faith" will be satisfied only if the Complainant

proves that the registration was undertaken in bad faith and that the

circumstances of the case are such that Respondent is continuing to act in bad

faith".

The Panel finds that the Respondent "has registered the disputed domain

name in bad faith". The Respondent does not conduct any legitimate business

activity using the disputed domain name. Given the Complainant’s numerous trademark

registrations for, and its wide reputation in, the word "rhoss", it

is not possible to conceive of a circumstance in which the Respondent could

legitimately use the domain name <rhoss.com>. It is also not possible

to conceive of a situation in which the Respondent would have been unaware of

this fact at the time of registration. These findings, together with the finding

that the Respondent has no rights or interests in the domain name, lead the

Panel to conclude that the domain name <rhoss.com> has been registered

by the Respondent in bad faith.

The Panel finds that the disputed domain name "is being used in bad faith"

by the Respondent. The domain name <rhoss.com> does not resolve to a website

or other on-line presence. The web page under construction does not give any

sufficient evidence that a website or other on-line presence is in the process

of being established which will use the domain name. There is no evidence of

advertising, promotion or display to the public of the domain name.

It should be further noted that the Panel has sufficient grounds to believe

that by using in e-mail correspondence with the Complainant the name different

from the name used for domain name registration the Respondent has taken steps

to conceal its true actions.

The Panel finds the Complainant has shown the Respondent registered and is

using the disputed domain name in bad faith.

7. Decision

The Administrative Panel decides that the Complainant has proven each of the

three elements in Paragraph 4(a) of the Policy. In accordance with Paragraph

4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the

disputed domain name, <rhoss.com>, be transferred to the Complainant.

Irina V. Savelieva

Sole Panelist

Date: January 15, 2003

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