On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 100095
Time of Filing 2009-08-28 15:05:36
Disputed domain name LEROS-BOATYARD.COM
Case Administrator
Name Tereza Bartošková
Complainant
Organization LEROS ISLAND'S MARINA, EVROS S.A.
Authorized Representative
Name MRS CHARIKLEIA MAMALI
Respondent
Organization AGMAR MARINE S.A./ ANGELOS GAITANIDES
A summary of this Decision is hereby attached in English as an Annex.
Other Legal Proceedings
The Panel is not aware of other legal proceedings which are pending or decided and which relate to the disputed domain name.
Factual Background
The Complainant is „LEROS ISLAND’S MARINA, EVROS MARINE S.A.“, a Greek company duly established and registered in 1997. The Complainant moors and maintains boats and yachts in Lakki of Leros, the main gulf of Leros, Greek. “Leros” is an island in Greece, the Complainant is located on. The Complainant has purchased land property and constructed a boat yard as well as a private port in the cove of Lakki of Leros. Administrative licenses for the construction of a harbour and a boat yard were gained in 2000 and 2006 from the respective authorities. The company name is registered with the competent authorities and the Complainant has filed for the registration of 2 Greek trademarks “Leros Marina, EVROS M.S.A.” and “Marina Leros, EVROS M.S.A.” (numbers 190211 and 190212) with the competent national authorities. It is unclear, if the trademarks have been registered, as the translated copies of the documents provided in this respect only state “Declaration of National Trademark”, but do not prove a registration or give any other information that the trademark is valid and enforceable under Greek law without such.

The Greek term “Marina“ translates “the place at which services like mooring of boats are provided”.

The Respondent is also a Greek company, established in 1998 and situated in the golf of Lakki Leros as well. The Respondent operates in the same business as the Complainant.

The Complainant mentions another domain name “lerosmarina.com” in its Complaint, but did not list it in the respective column of its Complaint. Neither did the Complainant respond to the registrar’s verification of the domain name in dispute executed by the Czech Arbitration Court (CAC) only with respect to the domain name “leros-boatyard.com”.


The Respondent did not file a Response in the form required by the UDRP Rules, e.g. its response does not conclude with a statement acc. to § 5. b) (viii) UDRP Rules.
Parties' Contentions
A. Complainant
1. The Complainant claims that the domain name registered by the Respondent is identical and confusingly similar to the trademarks and company name registered by the Complainant.

2. Furthermore, the Complainant states the domain name has been registered without any rights or legitimate interest in the name.

3. Moreover, the Complainant believes that the domain name has been registered and is being used in bad faith.

4. The Complainant is convinced to be the only company being entitled to use the name and trademark “LEROS” and therefore demands to delete the Respondent as owner of the domain name and to transfer the domain name to the Complainant as domain name holder.

B. Respondent
1. The Respondent did not respond to the Complaint materially nor did it submit evidence to disprove any of the charges.

2. The Respondent states clearly that he does not acknowledge the CAC as the competent Arbitration Court in this matter and hence states that it will not recognize or accept any decision of the CAC.

Discussion and Findings
1. First of all it has to be straightened out that the legitimacy of the CAC is out of question. The ICANN approved the application of the CAC to become an international provider of UDRP services on 23 January 2008. The CAC is listed in the ICANN list of providers (http://www.icann.org/



2. According to § 5 e) of the UDRP Rules and as common in the UDRP case-law (WIPO Case No. D2001-1488 "akbank.com"; WIPO Case No. D2000-0508 "homeshopping-24.com") the Panel decides the dispute based upon the complaint, as the Respondent did not file a complete and valid response.

3. The Complaint relies on § 4 UDRP. In order to succeed, the Complainant must prove that the requirements of this rule are complied with.

§ 4 a presumes that:
(i) the 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
(iii) the domain name has been registered and is being used in bad faith

a) However, the basis for any claim under § 4 UDRP is an own trademark or service mark, which the Respondent infringes by holding the domain name in dispute (WIPO Case No D2000-0013 "sizesunlimited.com"). The Complainant asserts to have rights in the trademarks “Marina Leros, EVROS M.S.A” and “Leros Marina, EVROS M.S.A”, and in its company name “Leros Island’s Marina, Evros S.A.”.

b) The Complainant further asserts rights in the term ”Leros” and bases such rights on its trademarks and its company name. However, it does not provide any argument or further proof that the protection of such rights (trademarks and company name) grant a right in the mere term “Leros”. Leros is an island in Greece. Although it is not totally unthinkable to accept a trademark right in such a term, the Complainant failed to prove such right.. It provided documents, which shall confirm the rights of the Complainant in the trademarks as explicitly named and its company name. However, this cannot be regarded sufficient proof that it grants a right in the sole term “Leros”.

The documents provided indicate that the element “EVROS Marina S.A.” within the company name and “EVROS M.S.A” within the trademarks are the distinctive parts of the respective rights, particularly “EVROS”, as the term “Marina” defines a place at which services like mooring of boats are provided. Thus, it is descriptive. At least within the company name, "S.A." is likely to be descriptive as well, as it is the abbreviation for the company form "Soceite Anonymes".

In connection with “Leros”, it can be assumed that the public will understand the term “Leros Marina” or “Marina Leros” as the place on the island Leros, where boats are maintained, hibernated, repaired, etc. It will not understand it as a sign to distinguish goods or services of one company from the goods or services of another company. As said, the term “EVROS” seems to be the distinctive term of the trademarks and the company name. The Complainant has not provided any other material in this respect, which could prove this interpretation to be wrong or that the Complainant has established other rights in “Leros”, such as by secondary meaning (see also CAC UDRP case 100087 “novotelvietnam.com”).

Although, acc. to § 5 e) UDRP Rules the panel may decide the case on the basis of the Complaint alone, the panel is hindered to accept the assertion of the Complainant with respect to a right in “Leros”, as the Complainant itself provided documents, which support the panel’s opinion.

c) Therefore, the panel is of the opinion that the Complainant (if at all, see e) below) has rights in the terms as registered in its favour as trademarks and company name, only.

To fulfil § 4 a. (i) UDRP, the Respondent must have a domain name identical or confusingly similar to at least one of these rights of teh Complainant.

The Complainant asserts that it is the owner of the trademarks “Marina Leros, EVROS M.S.A.” and “Leros Marina, EVROS M.S.A.” and has proven that it is the owner of its registered company name “Leros Island’s Marina, EVROS M.S.A.”.

Compared to “leros-boatyard” the trademarks and the company name are not identical, moreover they only have one identical element “Leros” in common, the name of the Greek island. Even if “marina” and “boatyard” might have identical or similar meanings, the public will not confuse the two signs with each other, as it will understand the trademarks of the Complainant as “boatyard of the Island Leros, owned by/run by the company Evros” and the company name in a similar way. It will not confuse the domain name of the Respondent with these signs, as it focuses on the element “EVROS” rather than “Marina Leros”, “Leros Marina” or “Leros Island’s Marina”.

That the Complainant claims to be the only company with the right to use the domain name in question, is disputed by its own commitment that the Respondent is in the same business as the Complainant.

Hence, the Panel finds that the Complainant has not proven that the domain name in dispute is confusingly similar to its trademarks or company name. Rather it appears that the element “Leros Marina” is merely descriptive within the Complainant’s trademarks and its company name.

d) Moreover, the panel further doubts that the material provided by the Complainant is sufficient to prove rights in the trademarks as mentioned above. As said, the Complainant stated only that it has “submitted and filed the trademarks” in question. Neither the Complainant nor the documents provided confirm a registration of the trademarks. The panel is not aware of nor has the Complainant stated that mere trademark applications or “Declarations of National trademarks” grant rights as requested by § 4 UDRP (see also WIPO Case No D2003-0583 "usdocuments.com"). However, even if the Complainant had the asserted trademark rights, they would not be a sufficient basis of this Complaint (as laid out above).


4. As the Complainant failed to include the second domain name “lerosmarina.com” in the correct column and thus did not extend the Complaint to this domain name, and, further, did not oppose the verification of – only – the first domain name in question by the CAC with the registrar, in the opinion of the panel it failed to include this domain name in this proceeding. However, even, if the domain name was subject to this Complaint, the panel would tend to decide as laid out above in this case as well.
Decision
For the reasons set out above, the Complaint is Rejected
and the disputed domain name(s) is(are) to be
LEROS-BOATYARD.COM Complaint rejected
Panellists
Name Dominik Eickemeier
Date of Panel Decision 2009-10-07
Annexes
Annex: English summary of the Panel Decision
The Complainant asserts to have trademark rights in the name “Leros”. The Complainant has filed for the registration of two Greek trademarks “Leros Marina, EVROS M.S.A.” and “Marina Leros, EVROS M.S.A.” (numbers 190211 and 190212) with the competent national authorities. Its company name LEROS ISLAND’S MARINA, EVROS MARINE S.A.“ is registered with the competent authorities. “Leros” is also the island in Greece, the parties are located on. The Greek term “Marina“ translates “the place at which services like mooring of boats are provided”.

The Respondent is also a Greek company, established in 1998 and situated in the golf of Lakki Leros as well. The Respondent operates in the same business as the Complainant.

The Respondent states that it does not acknowledge the CAC as the competent Arbitration Court in this matter and hence states that it will not recognize or accept any decision of the CAC. It did not file a complete and valid response.

The panel held that the legitimacy of the CAC is out of question. The ICANN approved the application of the CAC to become an international provider of UDRP services on 23 January 2008.

Further, the panel is of the opinion that the Complainant – despite § 5 e) UDRP Rules - did not manage to prove that it has trademark or company name rights in the mere term “leros”, as its rights - at best - indeed contain the element "Leros", however, such element is of mere descriptive nature, as it is the name of the island, where the Complainant runs its business, and does not form a distinctive part of the Complainant’s rights. The domaine name in question will not be confused withe the trademarks and the company name of the Complainant, as they are not similar enough.

Therefore the panel decided to reject the Complaint.
Publication of the Decision
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