INTELLECTUAL PROPERTY FOR ALL(IPFA)

Arbitration and Mediation Center

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ADMINISTRATIVE PANEL DECISION
Case No. D2015-0001
ROMANCE TV Ltd. v. Restoration SRL

1. The Parties

The Complainant is Romance TV Ltd of 44 200 Suolahti, Finland , represented by Marie

Smith, UK.

The Respondent is Restoration SRL of str. L Pasteur nr 78 ap 3, Cluj, Cluj-Napoca 3400,

Romania.

2. The Domain Names and Registrar

The disputed domain names <storyofus-tv.ro>isregistered with Romarg SRL.

3. Procedural History

The Complaint was filed with the IPFA Center of Arbitration and Mediation (the “Center”)
on 17.04.2014. On 20.04. 2014, the Center transmitted by email to Romarg SRL. a request
for registrar verification in connection with the disputed domain name. On 21.04.2014
Romarg SRL transmitted by email to the Center its verification response confirming that the
Respondent is listed as the registrant and providing the contact details for the disputed
domain names. 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
IPFASupplemental 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 04.12.2014. In accordance
with the Rules, paragraph 5(a), the due date for Response 24.12.2014. The Response was
filed with the Center 27.12.2014.

The Center appointed Mrs. Paraschiv Carina as panelist in this matter on 16.01.2015. 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.

Other stages of the administrative proceeding

The Complainant elects to have the dispute decided by a single member Administrative
Panel and also the Respondent agrees with this condition.

In accordance with Paragraph 3(b)(xiii) of the Rules, the Complainant will submit, with
respect to any challenges that may be made by the Respondent to a decision by the
Administrative Panel to transfer or cancel the domain name that is/are the subject of this
Complaint, to the jurisdiction of the courts at "the location of the principal office of the
concerned registrar.”
The domain name has been or is in the process of being placed on Registrar lock, and
will remain so during the course of these proceedings. (paragraph 8 )

In the event that a domain which is the subject of a UDRP dispute is deleted or expires
during the course of the dispute, the complainant in the UDRP dispute will have the option to
renew or restore the name under the same commercial terms as the registrant. If the
complainant renews or restores the name, the name will be placed in Registrar HOLD and
Registrar LOCK status, the WHOIS contact information for the registrant will be removed,
and the WHOIS entry will indicate that the name is subject to dispute. If the complaint is
terminated, or the UDRP dispute finds against the complainant, the name will be deleted
within 45 days. The registrant retains the right under the existing redemption grace period
provisions to recover the name at any time during the Redemption Grace Period, and retains
the right to renew the name before it is deleted.

4. Factual Background

For the Complainant

The Complainant in this case is Romance TV. The registered address is 44200
Suolahi,Finland. Romance TV Ltd. is the owner of the community trademarks “StoryOfUs”
and “StoryOfUs-TV” both being registered for the goods and services classes no. 35 and 38
as per the Nice Classification.

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Romance TV first began using the “Story Of Us ” trademark in 2002 and registered it with
the National Patent and Trademark Office on June 11, 2003 and further registered “Story Of
Us -TV” on September 11, 2004.

For the Respondent

The Respondent in this case is Restoration SRL. The address is str. L. Pasteur nr.78 , ap.3 ,
Cluj, Cluj-Napoca 3400, Romania.
Restoration SRL registered storyofus-tv.ro in 29.10.2012 and appllies it since then without
the consent of Romance TV Ltd.

5. Parties’ Contentions

A. Complainant

The Complainant in this administrative proceeding is ROMANCE TV Ltd.

The Complainant’s contact details are:
Address: 44 200 Suolahti, Finland
Telephone: 358204550697 (Office telephone)
Fax: 358206020100 (Office FAX)

The Complainant’s authorized representative in this administrative proceeding is:

Marie Smith
AGCO Ltd.
Abby Park Stoneleigh Kenilworth, Warwickshire CV8 2TQ
United Kingdom
442476852256 (Office telephone)
442476852620 (Office FAX)
louise.smith@agcocorp.com

Romance TV Ltd is a nationally known company that has been doing media and TV
business under the name “Romance TV” since 1980. In 2002, Romance TV has launched the
TV Show - Story Of Us - about people living together. The show has become extremely
popular and turned into a huge success among the Finish viewers giving rise to a national
network of clubs where people living together would meet on Saturdays afternoon to spend
time together while sharing their stories. On a constant basis, the stars of the TV Show -
Story Of Us would participate in such meetings. A magazine had been launched on 23 rdof
March 2004 - Story Of Us – TV, which became the most popular magazine for couples’
fashion, lifestyle, sex and relationship. From February 2005, the format of the show with the
same name had exported to other national television networks in Europe.

Romance TV first began using the “Story Of Us ” trademark in 2002 and registered it
with the National Patent and Trademark Office on June 11, 2003 and further registered
“Story Of Us -TV” on September 11, 2004. For over 9 years, Romance TV has expended
substantial time, effort and funds to develop the good will associated with the name “Story Of

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Us” as well as to promote and develop its other trademarks. Romance TV does not allow
unauthorized parties to use its marks as part of their Internet domain names.

Romance TV developed its Internet web presence in 1995 using the domain name
romance-tv.com. At its web site, Romance TV offers detailed information relating to a
variety of topics that include its programs, shows, events and information about its
independent contractor agents. On this website there are information displayed about the
show “Story Of Us”. Romance TV has also registered the domain name storyofus.com to
support the magazine’s website. Romance TV has expanded substantial time, effort and funds
to develop its websites as a primary source of Internet information for the products, services
and information provided under Story Of Us name.

These facts are sufficient to permit the Panel to recognise the Romance TV the only owner of
the " StoryOfUs" and "StoryOfUs-TV".

B.Respondent

The Respondent in this administrative proceeding is Restoration SRL.

The Respondent’s contact details are:
Restoration SRL
str. L Pasteur nr 78 ap 3
Cluj
Cluj-Napoca 3400
City xx
RO [ROMANIA]

The Respondent’s authorized representative in this administrative proceeding is:

Georgy Restoration
Aleea George Bacovia Nr 5A, 400366
Cluj-Napoca Romania
narcis@somesfalean. ro +40744256463 (Mobile telephone)
postmaster@restoration.ro

On April 20.2014, the Respondent received a notification of Complaint and

Commencement of Administrative Proceeding from the IPFA Arbitration and Mediation
Center (the Center) by e-mail informing the Respondent that an administrative proceeding
had been commenced by the Complainant in accordance with the Uniform Domain Name
Dispute Resolution Policy (the Policy), approved by the Internet Corporation for Assigned
Names and Numbers (ICANN) on October 24, 1999, the Rules for Uniform Domain Name
Dispute Resolution Policy (the Rules), approved by ICANN on October 30, 2009, and the
IPFA Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the
Supplemental Rules).

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The respondent sustains the fact that :

1. The domain name is not identical with the service marks owned by Complainant. The
disputed domain name comprises of dictionary descriptive words as “Story” “Of” “Us”.

2. The Respondent has registered a domain name made up of confirmed dictionary words
which is genuinely used in connection with the relied-upon meaning.

3. The Respondent has been using the disputed domain name in connection to a bona fide
offering of services. The website under which the disputed domain name resolves, offers
information on matrimonial match and fashion for ordinary people with a story as it is
everybody from us.

The Respondent failed to submit a Response within the specified time period.
The Respondent agrees to have the dispute decided by a single member Administrative Panel.

6. Discussion and Findings

In accordance with article 8 of the Paris Convention, the trade name, which reflects a
registered trademark, shall be protected in all the countries of the Union, without the
obligation of filling or registering, regardless of whether it is, or not, part of a trademark.

A. Identical or Confusingly Similar

The domain name “storyofus.com” is not only similar but is practically identical to the
trademark “Storyofus-tv.ro” in textual form and in graphical form, the capitalization
difference being minor.

The Complainant has established common law rights in the " StoryOfUs" mark(s)
pursuant to Policy 4(a)(1) through continuous and extensive use of the StoryOfUs mark since
1980, on the grounds of the following:

 launched the TV Show - Story Of Us - wich exported to other national television

networks in Europe
 the magazine " Story Of Us – TV " , became the most popular magazine for couples’
fashion, lifestyle and relationship
 for over 9 years, Romance TV has expended substantial time, effort and funds to
develop the good will associated with the name “Story Of Us” as well as to promote
and develop its other trademarks.

The World Intellectual Property Organization’s recommends the factors to determine

whether a mark is well-known: the degree of knowledge or recognition of the mark in the
relevant sector of the public; the duration, extent and geographical area of any use of the
mark; the value of the mark; and the record of successful enforcement of the mark.

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All these factors are met in this case.
No doubt, the disputed domain name “Storyofus-tv.ro” is identical with the common
law trademark “StoryOfUs” of the Complainant. Accordingly, the Panel holds that the
Complaint fulfills the condition provided in Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent does not have rights to or legitimate
interests in the disputed domain name. The Complainant has never authorized the
Respondent to use the trademark or the disputed domain name. The Complainant’s assertion
is sufficient to establish a prima facie case under Policy 4(a)(ii), thereby shifting the burden
to the Respondent to present evidence of its rights or legitimate interests. The Respondent has
failed to show that he has any rights or legitimate interests in respect of the disputed domain
name. No evidence has shown that the Respondent is using or plans to use the domain name
for a bona fide offering of goods or services. The Respondent is not commonly known by the
disputed domain name. The evidence submitted by the Complainant further shows that the
Respondent is not making a legitimate non commercial or fair use of the disputed domain
name. The act of registering the disputed domain name does not automatically
endow any legal rights or interests with the Respondent.

In January of 2014 it was brought to Romance TV's attention that Complainant’s

trademark "StoryOf Us - TV" had been registered as the disputed domain name. The domain
name sends a person to a web page which states it is provided by Restoration SRL and
contains banner ads with links for various products and companies.
On February 18th 2014, a cease and desist letter was sent by Complainant’s Intellectual
Property Administrator via email to Respondent. On February 28th 2014, another cease and
desist letter was sent to the Respondent via email; however, there was no response from the
Respondent.
Because of Complainant’s substantial efforts, the public associates the phrase “ Story
Of Us -TV” with the owner of the service marks “Story Of Us - TV.”, “Story Of Us” The
servicemarks “Story Of Us - TV ”, “Story Of Us” are distinctive and have acquired secondary
meaning. The domain name at issue is confusingly similar to servicemarks “Story Of Us -
TV.”, “Story Of Us”.
The Respondent has no right or legitimate interest in the disputed domain name. The
Respondent is not associated with, affiliated with or sponsored by Romance TV, the owner of
the servicemarks “Story Of Us - TV.”, “Story Of Us”.
Respondent is not commonly known under the domain name “storyofus-tv.ro.” It is
believed that the Respondent has never been known under the domain name at issue. It is true
that Complainant had initiated in May 2004 correspondence with Mr. Georgy Restoration, in
order to develop agency relationship for the distribution of the format show, but this
correspondence had not been finalized with the conclusion of contract Therefore,Romance
TV does not have a contractual arrangement with Respondent that would allow them to offer
services under the disputed domain name.

The Panel therefore finds that the Complaint fulfills the condition provided in
paragraph 4(a)(ii) of the Policy.

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C. Registered and Used in Bad Faith

Turning to the question of bad faith use and registration, the Panel finds that the
Respondent registered the disputed Domain Name in bad faith and continued to engage in
bad faith use.

Under Paragraph 4(b) of the Policy, the following are relevant examples a Panel may
take as evidence of registration and use in bad faith:

(i) Circumstances indicating that you have registered or you have acquired the domain
name primarily for the purpose of selling, renting or otherwise transferring the domain name
registration to the complainant who is the owner of the trademark or service mark or to a
competitor of that complainant, for valuable consideration in excess of your documented out-
of-pocket costs directly related to the domain name; or

(ii) You have registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain name,
provided that you have engaged in a pattern of such conduct; or

(iii) You have registered the domain name primarily for the purpose of disrupting the
business of a competitor; or

(iv) By using the domain name, you have intentionally attempted to attract, for
commercial gain, internet users to your website or other on-line location, by creating a
likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation,
or endorsement of your website or location or of a product or service on your website or
location.

The Complainant has been carrying out business with the common law trademark
“StoryOfUs”, "StoryofUs-TV" and achieved great success. This can be well testified by the
evidence submitted by the Complainant: the number of pages views by Internet users, the
fame of the magazine , the 9 years experience, etc. The Complainant has put in a lot of
money and efforts in promoting its products and services trademarked.

The Respondent registered the “storyofus-tv.ro” domain name specifically to take

unfair advantage of the goodwill associated with Complainant’s mark.
Since Romance TV service marks have been used in commerce from 2002 and after
registered with the NPTO and thus serves as constructive notice of Complainant’s rights in
the marks and this represents bad faith in registration and use of the disputed domain name.

Accordingly, the Panel finds that the Complaint satisfies the condition provided in
Paragraph 4(a)(iii) of the Policy.

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7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy
and 15 of the Rules, the Panel orders that the domain name(s), be transferred to the
Complainant.

Panelist
Paraschiv Carina

Date: 29.01.2015