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.: 07921
Time of Filing: 2020-04-01 12:15:47
Administrative Contact: Iveta Špiclová
 
Complainant
Name: Teletrade-DJ International Consulting Ltd, Igor Danilichev
 
Complainant's Authorized Representative
Name:
 
Respondent
Name: Filipe Romano
 
Respondent's Authorized Representative
Name:
 
Domain Name(s): TELETRADE.EU
 
Other Legal Proceedings
The Panel is not aware of any other legal proceeding regarding the disputed domain name.
 
English summary of the decision: English summary of this Decision is hereby attached as Annex 1
 
Factual Background
Rights 


The Complainant is the owner of the registered European Union trademark, being a logo mark with the distinctive and dominant word element, TELETRADE, and with a device being a T with two coloured halves, registration No. 016651226, registered on 28 August 2017 for services in International Classes 35, 36 and 41 (the “TELETRADE Trademark”).

The Complainant is also the registrant of the domain names <teletrade.es>, <teletrade.hu>, <teletrade.bg>, <teletrade.co.uk>, <teletrade-dj.it>, <teletrade-dj.ro>, <teletrade-dj.de>, <teletrade-dj.lv>, <teletrade-dj.cz>, <teletrade-dj.gr>, <teletrade-dj.lt>, <teletrade.pt>, <teletrade-dj.pl> and <teletrade-dj.sk>.

The Complainant has been using the name and mark in trade since 2013 or earlier and it is a mark with a reputation.

Factual Background

The Complainant in this ADR proceeding is an investment firm regulated by the Cyprus Securities and Exchange Commission with license No.158/11. It operates under the Markets in Financial Instruments Directive (MiFID).

The Respondent appears to be a physical person.

The disputed domain name <teletrade.eu> (the “Domain Name”) was first registered with MARCARIA.COM LLC (the “Registrar”) on 8 July 2010. The Respondent was registered as holder of the Domain Name on 12 February 2020.

Exceptionally in this case, the Panel sought historical whois information from Eurid. They confirmed as follows:

Before 12 February 2020 the registration details were the following:

Organisation: TELETRADE-DJ INTERNATIONAL CONSULTING LTD
Name: [REDACTED]
Address: 12 Esperidon Str 4th floor, 1087, Nicosia, Cyprus
Phone: +357.22465118
Email: ivatel@teletrade.eu
 
Parties’ Contentions
  1. Complainant
    According to the Complainant, the Domain Name is being used by the Complainant as its official website, following the approval granted by Cyprus Securities and Exchange Commission. 
    

    The account of the Complainant with the Registrar regarding the Domain Name was created by an individual who was a representative of a Belarus entity which was providing marketing services to an affiliate of the Complainant under a services contract. This account was in the name of an employee of the Complainant’s affiliate, and the e-mail and a relevant password of the representative of the Belarus entity were used as the credentials for the Company’s administrative panel of the Domain Name. Following the termination of the services contract, the Complainant repeatedly requested to be provided with these credentials, but the representative of the Belarus entity refused to provide them to the Complainant.
  2. Respondent
    The Respondent did not file a Response in this proceeding.
 
Discussion and Findings
1. Procedural issue – Notification of the Complaint to the Respondent


According to Article 2 (a), (b) and (e) of the ADR Rules “Communications and Periods of Time”:
(a) When forwarding a Complaint to the Respondent, it shall be the Provider's responsibility to employ the reasonably available means calculated to achieve actual notice to the Respondent.
(b) The Provider shall discharge its obligation to achieve actual notice by (i) sending the Complaint, or a notice with information detailing how to access the Complaint (e.g. for the purposes of an online platform operated by the Provider), to the Respondent, employing the means stipulated in (c) below to the address which the Registry has communicated to the Provider for the registered domain name holder, or to the Registry’s seat in case of a Complaint against the Registry's decision; and (ii) in case the Respondent does not confirm receipt of the electronic communication made pursuant to (i) above within five (5) days from sending the communication, by forwarding the above mentioned notice with information how to access the Complaint by registered postal or courier service, postage pre-paid and return receipt requested, to the address(es) specified in (i) above.
[...]
(e) Except as otherwise stipulated by these ADR Rules, all communications provided for under these ADR Rules shall be deemed to have been received, in accordance with this provision:
(1) if via the Internet, on the date that the communication was transmitted, provided that the date of transmission is verifiable; or
(2) if delivered by facsimile transmission, on the date shown on the confirmation of transmission; or
(3) if by registered postal or courier service, on the date marked on the receipt or, if it is not possible to deliver the communication in this way, on the expiry of twelve (12) days from the handing-over of the communication to a postal or courier service provider.”

The Czech Arbitration Court (“CAC”) has complied with the above requirements and has discharged its obligation to notify the Complaint to the Respondent, as it has sent the Complaint electronically via the Internet to the e-mail address of the Respondent communicated by the Registry to CAC, and by registered postal service, postage pre-paid and return receipt requested, to the postal address of the Respondent communicated by the Registry to CAC.

Therefore, the communication from CAC regarding the Complaint should be deemed to have been received by the Respondent although it did not confirm receipt of the electronic communication and was unknown at the postal address indicated by it for the registration of the Domain Name, for which reason the notification by the CAC regarding the Complaint through postal service was not possible. Domain name registrants are expected to indicate valid addresses for communication with them, and a respondent should not be allowed to avoid an ADR proceeding by providing a false postal address to the Registrar.

2. Substantive issues

According to Article 21(1) of Commission Regulation (EC) No 874/2004 of 28 April 2004 (“Regulation (EC) No. 874/2004”):  
“1. A registered domain name shall be subject to revocation, using an appropriate extra-judicial or judicial procedure, where that name is identical or confusingly similar to a name in respect of which a right is recognised or established by national and/or Community law, such as the rights mentioned in Article 10(1), and where it:
(a) has been registered by its holder without rights or legitimate interest in the name; or
(b) has been registered or is being used in bad faith.”

Regulation (EC) No. 874/2004 lists the conditions under (a) and (b) in the alternative, so if the Panel finds that one of these conditions is present, it would not be necessary for the Panel to analyse whether the other condition is present as well. The Panel will therefore first proceed to make a finding whether the condition under (a) above is satisfied, and depending on its finding will decide whether to review the presence of the condition under (b) above as well.

The Respondent did not file a Response in this ADR proceeding.

Under Article 22(10) of Regulation (EC) No. 874/2004:
“10. Failure of any of the parties involved in an ADR procedure to respond within the given deadlines or appear to a panel hearing may be considered as grounds to accept the claims of the counterparty.”

Pursuant to Paragraph B (10)(b) of the ADR Rules:
“(b) Unless provided differently in these ADR Rules, if a Party does not comply with any provision of, or requirement under, these ADR Rules, the Supplemental ADR Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.

Is the Domain Name identical or confusingly similar to a name in respect of which a right is recognized or established by national and/or Community law?

The Panel finds that Complainant is the owner of the TELETRADE Trademark, details of which are given above, and for which the Complainant has provided evidence which was not disputed by the Respondent. This trademark registration gives rise to rights of the Complainant in the distinctive and dominant element from the mark, the word TELETRADE within the meaning of Paragraph 10(1) of Regulation (EC) No. 874/2004, i.e., rights established by Community law.

It is widely accepted that the suffix “.eu” is not relevant for the purposes of the test for identity or confusing similarity under art.21(1) of Regulation (EC) No. 874/2004. Therefore, the dominant element of the Domain Name, which has to be analysed for the purpose of this test is the element “teletrade”. This element is identical to the distinctive element of the TELETRADE Trademark.
For these reasons, the Panel finds that the Domain Name is confusingly similar to the TELETRADE Trademark, in respect of which a right of the Complainant is recognised or established by Community law. Therefore, the condition set forth under Article 21(1) of Regulation (EC) No. 874/2004 is fulfilled.

Has the Respondent registered the Domain Name without having rights or legitimate interests in it?

The name and mark of the Complainant include the word element which is descriptive but the Complainant has a long period of use and the mark has a reputation. Furthermore, the parties are known to each other.  There is no question of the Disputed Domain Name being selected by accident, rather it appears that it was misappropriated by the Respondent from the Complainant itself and wrongly and unlawfully registered in the Respondent’s name.  

The Complainant submits that it was receiving marketing-related services from a third party that was contracted to deliver them by an affiliate of the Complainant. As part of these services, the third party created an account in the name of an employee of the affiliate of the Complainant with the Registrar, and the e-mail address of a representative of third party and a password were used as credentials for access to the administrative panel for the Domain Name with the Registrar. The service contract was terminated, but the Complainant was not provided with these credentials and was thus effectively denied control over the Domain Name.

The Complainant has also provided evidence that the Domain Name has been included in the Cyprus Securities and Exchange Commission List of Approved Domains of the Complainant since 2008.
According to the information provided by the Registrar, the Complainant was registered as holder of the Domain Name from 13 February 2013 until 12 February 2020, when the Respondent was registered as its holder. See above the EURID confirmation.

The Respondent was given a fair opportunity to respond to the Complaint and to present its case, but has not challenged the allegations and the evidence submitted by the Complainant. It has not provided any explanation why it has acquired the Domain Name. The Respondent has also failed to contend that any of the circumstances described in Article 21(2) of Regulation (EC) No. 874/2004 - or indeed any other circumstance – is present in his favour.

Under Article 21(2) of Regulation (EC) No. 874/2004:
“2. A legitimate interest within the meaning of point (a) of paragraph 1 may be demonstrated where:
(a) prior to any notice of an alternative dispute resolution (ADR) procedure, the holder of a domain name has used the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so;
(b) the holder of a domain name, being an undertaking, organisation or natural person, has been commonly known by the domain name, even in the absence of a right recognised or established by national and/or Community law;
(c) the holder of a domain name is making a legitimate and non-commercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name on which a right is recognised or established by national and/or Community law.”

There is no evidence in the case file that the Respondent is using the Domain Name in connection with the offering of goods or services, or is making a legitimate and non-commercial or fair use of it. Rather, the evidence in the case file shows that the Domain Name has been used solely by the Complainant and was misappropriated by the Respondent. There is no evidence that the Respondent has been commonly known by the Domain Name, and indeed its name bears no resemblance to the Domain Name. Therefore, the Panel accepts that none of the circumstances listed in Article 21(2) of Regulation (EC) No. 874/2004 is present in this case.

In view of the above, and in the absence of any evidence to the contrary, the Panel accepts as more likely than not that the Complainant has rights and legitimate interests in the Domain Name, and was deprived of control over it as a result of illegitimate actions of a third party that was contractually engaged to act to the benefit of the Complainant, following which the Respondent was registered as holder of the registration of the Domain Name without having rights or legitimate interests in it.

Therefore, the Panel finds that Respondent has acquired the Domain Name without having rights or legitimate interests in it, and that the condition under Article 21(1)(a) of Regulation (EC) No. 874/2004 is satisfied.

For the same reasons, the alternate ground of Bad Faith is also made out and the registration on 12 February 2020 in the name of the Respondent was in bad faith and wrongful as also is the subsequent holding/use.  

The remedy sought by the Complainant is the transfer of the Domain Name to the Complainant. As the Complainant has its registered office in Cyprus, it satisfies the general eligibility criteria for registration of the Domain Name set out in Paragraph 4(2)(b) of Regulation (EC) No.733/2002. Therefore, the Complainant is entitled to request the transfer of the Domain Name.

For the above reasons, the Panel finds that Complainant has established the prerequisites under Article 21(1) of Regulation (EC) No. 874/2004 for the transfer of the Domain Name.
 
Decision
For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that the Domain Name <TELETRADE.EU> be transferred to the Complainant.
 
Panelists
  • Apostolos Anthimos
  • Ms. Victoria McEvedy
  • Assen Zahariev Alexiev
Date: 2020-07-31
Annex 1
I.      Disputed domain name: teletrade.eu


II.     Country of the Complainant: Cyprus, country of the Respondent: Spain

III.    Date of registration of the domain name: 8 July 2010

IV.    Rights relied on by the Complainant (Art. 21 (1) Regulation (EC) No 874/2004) on which the Panel based its decision:
        1.   combined trademark TELETRADE with registration No. 016651226, registered on 28 August 2017 for services in International Classes 35, 36 and 41.
      
V.    Response submitted: No

VI.   Domain name is confusingly similar to the protected right of the Complainant.

VII.  Rights or legitimate interests of the Respondent (Art. 21 (2) Regulation (EC) No 874/2004):
        1. No
        2. Why: The Domain Name was illegitimately transferred to the Respondent.

VIII. Bad faith of the Respondent (Art. 21 (3) Regulation (EC) No 874/2004):
        1. Yes
        2. Why: The Domain Name was illegitimately transferred to the Respondent.

IX.   Other substantial facts the Panel considers relevant: -

X.    Dispute Result: Transfer of the Domain Name
XI.   Procedural factors the Panel considers relevant: Notification of the Complaint to the Respondent

XII.  [If transfer to Complainant] Is Complainant eligible? Yes