Decisión del Panel Administrativo nº DRO2019-0007 of WIPO Arbitration and Mediation Center, July 04, 2019 (case Subway IP Inc. v. Cetinje S.R.O.)
| Resolution Date | July 04, 2019 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Transfer |
| Dominio | Rumanía (.ro) |
The Complainant is Subway IP Inc., United States of America (“USA”), represented by FairWinds Partners, LLC, USA.
The Respondent is Cetinje S.R.O. Slovakia, represented by Ferenc Farkas, Hungary.
The disputed domain name [subway.ro] is registered with ROTLD (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2019. On May 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2019. The Response was filed with the Center on June 7, 2019.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on June 20, 2019. 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 the Rules, paragraph 7.
The Complainant was founded in the USA in 1965 and is now one of the largest franchised chains of sandwich shops in the world. In 1968, the Complainant’s sandwich shop was renamed “Subway”. The Complainant now has over 21,000 franchisees operating approximately 42,000 Subway-branded shops in more than 100 countries around the world. At the end of 2010, the Complainant became the largest fast food chain worldwide. The Complainant is the second-largest fast food advertiser in the USA, sponsors a number of sporting events and benefits from extensive media coverage in the international press. The Complainant has over 35 restaurants in operation in Romania and utilizes a localized website at “www.subwayro.com”.
The Complainant is the owner of a wide variety of registered trademarks in the mark SUBWAY including Romanian registered trademark no. R18002 for the word mark SUBWAY filed on September 14, 1990 and registered on May 6, 1994 in respect of class 42, restaurant services, and European Union registered trademark no. 0076778 for the word mark SUBWAY filed on April 1, 1996 and registered on July 4, 2001 in respect of classes 29, 30 and 42 covering certain foods and restaurant services. The Complainant asserts that the SUBWAY mark is globally famous due to the scale of its restaurant network, and its extensive marketing and promotional activities.
According to the WhoIs record, the disputed domain name was created on September 26, 2018 and its registrant, the Respondent, is a trading company with an address in Trávnik, Slovakia. The Complainant shows that the disputed domain name [subway.ro] had previously been registered between February 28, 2006 and June 28, 2018 and was showing a status of “PendingDelete” on September 24, 2018, thus indicating that the disputed domain name was registered after a previous incarnation had been allowed to expire.
The Complainant produces a spreadsheet print indicating that it has matched the contact email address and nameservers shown on the WhoIs record for the disputed domain name with a range of other domain names including inter alia [airbnb.sg], [pinterest.sg], [pizzahut.sg], [realtor.com.sg], [tesla.com.sg], [viber.tw] and, [virgin.tw].
The Panel visited the website at the disputed domain name as the Panel considered this to be useful to assessing the case merits and reaching a decision (see [section 4.8] of the [WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition] (“WIPO Overview 3.0”) on the topic of panels’ limited factual research into matters of readily accessible public record). The Panel did not refer its findings back to the Parties on the basis that both may reasonably be presumed to know the appearance of said website.
The said website has the appearance of a parked and largely undeveloped page which features a logo containing the disputed domain name and a brief message under the heading “COMING SOON” stating, in part, “[…] Subway.ro offers easy access not just to another MLS site, but to one of a kind. Our latest development project lists those properties for you that are close to a subway station. The webpage has been designed to be completed with a smart map system. Stay tuned, coming very soon”. Said website also features a “Legal notice” stating that the owner of the website is a limited company with an address in Tortola, British Virgin Islands. There is no mention of the Respondent. A footer on said website features the name “Propertygroup.ro” along with 24 hyperlinked country names under the legend “Countries included in the property group holding”, two of which feature typographical errors, namely “Hon Kong” and “Quatar”.
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that...
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