Decisión del Panel Administrativo nº D2015-0398 of WIPO Arbitration and Mediation Center, June 02, 2015 (case win.rarGmbH v. Win Road Assistance Repairs Pvt. Ltd.)
| Resolution Date | June 02, 2015 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Transfer |
| Dominio | Generic Domains |
The Complainant is win.rarGmbH of Berlin, Germany, represented internally.
The Respondent is Win Road Assistance Repairs Pvt. Ltd. of Mumbai, Maharashtra, India, represented internally.
The disputed domain name [winrar.com] is registered with BigRock Solutions Pvt Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2015. On March 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2015, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on March 13, 2015.
The Center verified that the Complaint together with the amended 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced March 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for filing a Response was April 5, 2015. On April 2, 2015 the Respondent submitted a request for an extension to file a Response. The due date filing a Response was extended to April 9, 2015. The Response was filed with the Center on April 9, 2015. The Complainant filed a supplemental filing on April 16, 2015. The Respondent filed a supplemental filing on April 21, 2015.
The Center appointed Adam Taylor, Paul M. DeCicco and The Hon Neil Brown Q.C. as panelists in this matter on May 12, 2015. The Panel finds that it was properly constituted. Each member of 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.
Because the facts in this case are somewhat complicated, and because timings are important, the Panel considered that it would be helpful to set out a slightly more detailed factual summary than normal in this part of the decision.
The Complainant, a German company, distributes data compression software known as “WinRAR” under licence from Eugene and Alexandar Roshal, developers of the software. The Complainant and its predecessors have traded under this name since 1996. The Complainant has trading partners in some 80 countries worldwide. The Complainant’s own websites are at “www.win-rar.com” and “www.rarlab.com”.
The Complainant is the exclusive licensee of a number of trade marks for WINRAR owned by Eugene Roshal including International Registration no. 834821 for the word WINRAR, registered June 24, 2004, in class 9. The Complainant itself owns Indian trade mark no. 1526245 for the word WINRAR filed January 25, 2007, in class 9.
The disputed domain name was registered on August 29, 2006. The Respondent says that the disputed domain name was registered by the Respondent’s predecessor, a partnership in Mumbai, India, which had allegedly been trading under the name “Win Road Assistance Repairs” since September 1, 2005, offering vehicle maintenance and repairs.
The Respondent, an Indian company, was incorporated by the partners of the motor business on December 22, 2006 and allegedly took over that business.
The Respondent claims that, on February 15, 2007, it “entered into a partnership with some people to expand [its] business” under the name “WINRAR”.
The Respondent owns an Indian trade mark no. 1536350 filed March 2, 2007, for the term WINRAR plus device in class 37 (“garage repairs and installation services”).
The Complainant has not supplied any archive screenshots showing how the disputed domain name was used as a website in 2006 / 2007. However, according to the findings in a previous case which concerned the disputed domain name, discussed further below, until September 2007 the website at the disputed domain name “focused on zip software, free downloads, file converters and other products”. The panel added that, in October 2007, the complainant in that case ascertained that the respondent “was using a parking service under which the disputed domain name resolved to a website page containing advertising links and listings.”
There is evidence of a number of complaints by the Complainant’s customers in the period from April to September 2007 concerning alleged use of the disputed domain name for a website which was offering unauthorised versions of the Complainant’s products and/or for phishing.
On November 30, 2007 Eugene Roshal filed a UDRP case against the Respondent seeking transfer of the disputed domain name. See Eugene Roshal v. Win Road Assistance Repairs Pvt. Ltd,WIPO Case No. D2007‑1768 (“the Roshal Case”).
On January 4, 2008, a panel found bad faith in F. Hoffmann-La Roche AG v. Comdot internet services private limited/PrivacyProtect.org,[WIPO Case No. D2007-1637] concerning the domain name [xenical‑al.com] registered in 2004. This was the first in a series of 17 UDRP decisions finding bad faith on the part of two companies Comdot Internet Services Private Limited and Compsys Domain Solutions Private Limited. These companies share a registered address and a common director with the Respondent (Vanita Sehgal).
On March 5, 2008, the complaint in the Roshal Case was rejected on grounds that the Respondent had demonstrated that it was commonly known by the disputed domain name under paragraph 4(c)(ii) of the Policy based on various documents produced by the Respondent showing that “Winrar” had been the trading name of a partnership known as “Win Road Assistance Repairs” since 2005.
Screenshots produced by the Complainant show that, at various times during February and March 2008, the website at the disputed domain name being used as a parking page with links relating to zip, file converters and other kinds of software.
Archive.org screenshots produced by the Respondent show extracts from motor services-related websites at the disputed domain name at various times starting from May 2008.
On September 25, 2008, an Indian company was incorporated under the name “Winrar Softwares Private Limited”. Ms. Vanita Sehgal was named as one of the directors.
Ms. Sehgal owns the following Indian trade marks filed in by her in 2009 (“the 2009 Trade Marks”):
- no. 1850490 for “Winrar.Toolbar” (stylised) filed August 13, 2009, in class 42 (“design and development of computer hardware and software”);
- no. 1850491 for “Winrar.Toolbar” (stylised) filed August 13, 2009, in class 35 (“advertising, business management, business administration, office functions);
- no. 1890707 for “Winrar.Software” (stylised) filed December 2, 2009, in class 39 (“transport; packaging and storage of goods/ travel arrangement”); and
- no. 1890708 for “Winrar.Software” (stylised) filed December 2, 2009, in class 42 (“design and development of computer hardware and software”).
The Complainant has produced screenshots showing that, at least during the period 2012-2014, there were websites at the disputed domain name which were devoted entirely to offering free downloads of what was purportedly the Complainant’s software. It is not in dispute that this version of the website was presented only to Internet users outside India and Germany.
The following is a summary of the Complainant’s contentions:
The disputed domain name is identical to the Complainant’s trade mark.
The Complainant is amongst the top data compressing software providers worldwide, with trading partners in some 80 countries and 100 million downloads per year via the Complainant’s own websites at “www.win‑rar.com” and “www.rarlab.com”
The Complainant owns registered trade marks as well as common law rights in the trade mark WINRAR. The Complainant has made substantial investment in advertising its brands including through its website.
The refiled complaint...
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