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ADR Center for .eu attached to the Arbitration Court attached to the Czech Chamber of Commerce and the Agricultural Chamber of the Czech Republic (Czech Arbitration Court)
Panel Decision
§ B12 of the .eu Dispute Resolution Rules (ADR Rules)
Case No.: 06343 Time of Filing: 2012-09-11 10:22:17 Administrative Contact: Lada Válková Complainant Name: GetData Pty Ltd, Graham Henley Complainant's Authorized Representative Name: Respondent Name: Recover My Files Co., Ltd., Matthew Settles Respondent's Authorized Representative Name: Domain Name(s): RECOVERMYFILES Other Legal Proceedings English summary of the decision: English summary of this Decision is hereby attached as Annex 1 Factual Background
2. GetData's first product, “Recover My Files”, was launched from its web site http://www.recovermyfiles.com in 2002.
3. GetData also owns and operates the following domains associated with the product:
http://www.recovermyfiles.co.uk (operated by an authorized UK based reseller)
http://www.recovermyfiles.com.au (redirects to www.recovermyfiles.com)
http://www.recovermyfiles.de (redirects to www.recovermyfiles.com)
http://recovermyfiles.net (redirects to www.recovermyfiles.com)
http://recovermyfiles.info (redirects to www.recovermyfiles.com)
http://recovermyfiles.org (redirects to www.recvoermyfiles.com)
4. On 7th of December 2010, GetData was granted the trademark “RecoverMyFiles” (ref: 1397046) by the Commonwealth of Australia Trade Marks office (see Annex "Certificate of Registration of Trade Mark").
5. The Respondent is Matthew Settles,organization Recover My Files Co., Ltd. with the address at 71 Walker Road, Leicester, Great Britain (UK) LE43BP.
6. On 13th of April 2012, the Respondent registered with the Registrar Go Daddy Software Inc., the disputed domain name "recovermyfiles.eu, which registration is, at the moment of these ADR proceedings, blocked by EURid.
7 On 19th of September 2012, the Complainant issued the Complaint in the present ADR proceedings. Having been notified of the Complaint, the Respondent did not submit a Response to the Complaint within the required time period.
8. On 14th of November 2012, the Czech Arbitration Court issued a Notification of Respondent’s Default.Parties’ Contentions
- as a software development company, it founded in February 2002 its first product, “Recover My Files
- GetData also owns and operates a series of domains associated with the product, as indicated in the factual background,
- Since 2002, Recover My Files has sold more than 400,000 individual licenses world-wide.
- Recover My Files is distributed in 9 different languages and has retail distribution agreements in countries including USA, Germany, UK, France, Netherlands and Japan. Recover My Files customers include large organizations such as Office Depot USA retailer who uses it in its stores nation-wide for customer data recovery services.
- On 7th December 2010, it was granted the trademark “RecoverMyFiles” (ref: 1397046) by the Commonwealth of Australia Trade Marks office.
- In August 2012, the Complainant released the latest major version of Recover My Files, version 5.
- In late August 2012, the Complainant was contacted through its online support portal by a customer having problems activating a "new version of Recover My Files”, which was identified as not being a Complainant's product but a competitors commercial data recovery software called “Recover Files” (see Annex "recover-files-registration").
- This competitors product is also sold at the following web-sites which have a structure and content almost identical to www.recovermyfiles.eu: http://www.mp3-organizer.net, http://www.organize-music.net, http://www.recover-files.ca, http://www.recoverfiles.de, http://www.recoverfiles.nl, http://www.recover-files.us,http://www.restorefiles.us, http://www.sort-files.com, http://www.sort-music-files.com, that do not provide any contact or support information.
- The contact details used to register these web sites do not exist. As regards the address: 71 Walker Road, Leicester, UK: Google Maps indicate that street numbers on this street end at 50 and as regards the company name Recover My Files Co., Ltd., this company name cannot be found in the UK company search at http://wck2.companieshouse.gov.uk/. Moreover, the phone and fax numbers indicated as contact details Ph: 441162676215 & Fax: 441162671428 are not in service.
- The www.recovermyfiles.eu web site and the product name "Recover My Files" are being actively promoted online using Portable Application Description (PAD) submissions and by free press release sites (see Annex "recovermyfies.eu Google Search at 5-Sep-12"). This is leading to search engine listings which are being confused with the Complainant's product.
- The structure and content of domains used to promote "Recover Files", including the disputed domain name shows, a systematic effort by the author to market the product.
- The registration of the disputed domain name and the modification of the site content to "Recover My Files" is intent to attract Internet users, for commercial gain, by creating a likelihood of confusion with Complainant’s trademarked and highly recognized brand.
- The disputed domain name is confusingly similar to the trademark “RecoverMyFiles” in respect of which Complainant's rights are recognized by the Australian Government Trademarks Office.
- The disputed domain is leveraging on an established brand of data recovery software to promote a competitor and by doing this it is tarnishing the reputation of Complainant’s Recover My Files with its existing and potential customers.Discussion and Findings
(i) the domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by national and/or Community law and; either
(ii) the domain name has been registered by the Respondent without rights or legitimate interest in the name; or
(iii) the domain name has been registered or is being used in bad faith.
Article 21(1) of the Commission Regulation (EC) 874/2004 of 28 April 2004 contains similar provision.
In arriving to the findings in this case, the Panel has reviewed and considered the Complainant’s submissions and annexed documents in detail and has decided based on article B7(a) of the ADR rules.
I. Condition according to Paragraph B11(d)(1)(i) of the ADR Rules
The disputed domain name consists entirely of the Complainant's trademark "RecoverMyFiles". This trademark is protected under Australian national law which is neither a Member State national law nor Community law, in the sense of ADR Rules and Commission Regulation (EC) 874/2004. The Panel accordingly finds that no right of the Complainant is recognized or established within the meaning of Paragraph B.11(d)(1)(i)of the ADR Rules. It is true that the Complainant refers to different domain names which seems to be registered with different ccTLDs of Member States. Nevertheless the Complainant does not assert specific rights in connection to Recover My Files recognized or established by national law of those Member States.
Considering that Complainant has failed to prove the fulfillment of the condition provided at Paragraph B11(d)(1)(i) of the ADR Rules, the Panel does not find it necessary to analyze the fulfillment of the other conditions provided at Paragraph B11(d)(1) of the ADR Rules.Decision Panelists
- Beatrice Onica Jarka
Date: 2012-12-20 Annex 1
II. Country of the Complainant: Australia, country of the Respondent: UK
III. Date of registration of the domain name: 13 April 2012
IV. Rights relied on by the Complainant (Art. 21 (1) Regulation (EC) No 874/2004) on which the Panel based its decision:
1. word trademark Recover My Files registered in Australia reg. No. 1397046, on 7th of December 2010. No list of goods and services was attached.
V. Response submitted: No
VI. Domain name is neither identical nor confusingly similar to the protected right/s of the Complainant
VII. Rights or legitimate interests of the Respondent (Art. 21 (2) Regulation (EC) No 874/2004):
1. Not necessary to examine
VIII. Bad faith of the Respondent (Art. 21 (3) Regulation (EC) No 874/2004):
1. Not necessary to examine
IX. Other substantial facts the Panel considers relevant: None
X. Dispute Result: Complaint denied
XI. Procedural factors the Panel considers relevant: None