WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Ley Actualidad, S.A. v. Yoshiki Okada
Case No. D2002-0385
1. The Parties
The Complainant is La Ley Actualidad, S.A, a company incorporated in Spain, with its principal place of business located in Madrid, Spain and represented by Landwell-PricewaterhouseCoopers, Barcelona, Spain ("the Complainant").
The Respondent is Mr. Yoshiki Okada of Amnam-Dong Seu-gu, Busan, Republic of Korea ("the Respondent").
2. The Domain Name And Registrar
The Domain Name at issue is <laley.com> ("the Domain Name"). The Registrar of the Domain Name is Enom, Inc. United States of America ("the Registrar").
3. Procedural History
The complaint ("the Complaint") was submitted to the WIPO Arbitration and Mediation Center ("the Center") on April 25, 2002, in electronic form, and in hard copy on April 26, 2002, pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999.
The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Centerís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
On April 26, 2002, acknowledgement of receipt of complaint was sent to the Complainant.
On April 26, 2002, a request for registrar verification was transmitted to the Registrar and the Registrar confirmed that the Domain Name <laley.com> is registered with it and that the Respondent is the current registrant of the Domain Name.
On April 30, 2002, the Complainant was advised of certain deficiencies in the Complaint. The deficiencies were corrected by the Complainantís submission of amendments on April 30, 2002.
On May 13, 2002, a notification of complaint and commencement of administrative proceeding ("the Commencement Notification") was transmitted to the Respondent, setting a deadline of June 2, 2002, by which the Respondent could submit a response to the Complaint. A response was received on June 1, 2002. On June 3, 2002, the Center notified the Respondent of certain deficiencies in the response, and provided that the respondent could correct the deficiencies by June 7, 2002.
The Respondent did not submit an amended response by said deadline nor has the Respondent asked for an extension of the period of time for filing an amended response.
On July 14, 2002, the Center sent a notification of appointment of the Administrative Panel to the Parties, in which Mayer Gabay was appointed as Sole Panelist. The Sole Panelist finds that the Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
4. Factual Background
On the basis of the documents submitted by the Complainant, the following facts can be established:
The Complainant is the owner of several trademarks incorporating the Spanish words "LA LEY" (meaning "the law") and is a legal publisher which belongs to the Wolters Kluwer Group. LA LEY ACTUALIDAD S.A. is primarily engaged in providing legal professionals with solutions and services they need in their daily activity.
The Complainant alleges that the Respondent has a history of registering famous marks.
While the Respondent has submitted an administratively deficient response, the Panel has taken it into account. It is found that there are sufficient grounds to rule on the Complaint, based upon factual and legal findings that can be established to the satisfaction of this Panel.
5. Partiesí Contentions
5.1 The Complainant
The Complainant transacts its business on the internet through the Domain Names, <laley.net> and <laley-actualidad> of which it is also the registrant owner. The Complainant alleges that the Respondent has intentionally registered the Domain Name <laley.com> as a misspelling of the claimantís mark, with the aim of misleading consumers and capturing the Complainantís traffic for Respondentís own unauthorized monetary advantage.
5.2 The Respondent
The Respondent filed a deficient response. In substance, the Respondent stated that the Complainant does not own a Spanish trademark "LA LEY" and does not own other domain names incorporating those words.
6. Discussion And Findings
6.1 Identical or confusingly similar
The Domain Name <laley.com> is clearly identical or, at least, clearly confusingly similar to the Complainantís trademark LA LEY with its various additions. The correct Spanish spelling of the word LA LEY is not very different from the Domain Name used by the Respondent.
It is agreed that the fact that the mark LA LEY and the Domain Name <laley.com> are made up of two generic words is not a hindrance to the Complainant establishing identicality or confusing similarity to its trademark (see WIPO Cases Nos. D2000-0120 and D2001-1367).
6.2 Rights or legitimate interests
The Complainantís LA LEY and a number of related names are registered trademarks. The Respondentís Domain Name is not a registered trademark in Spain, or anywhere else, nor would it be registered in any jurisdiction that prohibits registration of trademarks that lead to confusion in the market or create a risk of association with other previously requested or registered trademarks.
In light of the above, and in the absence of an adequate response by the Respondent, it can be concluded that the Respondentís Domain Name is not a legitimate mark either in Spain or in any other jurisdiction.
The Complainant has not licensed or permitted in any manner Respondentís use of Complainantís trade name and registered mark based on the words "LA LEY" or "LA LEY ACTUALIDAD, S.A.".
In view of the above, it can be concluded that the goal of the Respondentís Domain Name registration was to intentionally attract users in Spanish interested in the Complainantís website for the Respondentís own commercial gain. Since registration on September 30, 1999, the website corresponding to the Domain Name <laley.com> has not had contents of its own, and for a period of time, offered pornographic contents that had no meaning or relation to the name "LA LEY".
6.3 Bad faith
Paragraph 4(b)(iv) of the Policy indicates that there is evidence of bad faith if the disputed Domain Name is registered under circumstances that show that the registration was done as an "attempt to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your web site or location".
The Respondentís Domain Name was registered on September 30, 1999, after the Claimantís marks had clearly enjoyed wide use for an extended period of time. Therefore it is likely that the Respondent had knowledge of the Complainantís trademark registration prior to registering the Domain Name.
As discussed above, the Respondentís Domain Name is identical or confusingly similar to the Complainantís trademark. The Respondentís Domain Name incorporates the Complainantís LA LEY mark.
In light of the above, and based on the evidence filed by the Complainant, the Panel finds that by having registered the Domain Name <laley.com>, the Respondent has infringed a prior trademark right and it concludes that the Respondent acted in bad faith.
In light of the foregoing, the Sole Panelist finds that the Domain Name <laley.com> at issue is confusingly similar to the Complainantís trademarks related to the Spanish words "LA LEY", that the Respondent has no rights or legitimate interests in respect of the Domain Name, and the Domain Name has been registered and used in bad faith.
Consequently, the Sole Panelist decides that the Domain Name at issue be transferred by the Registrar from the Respondent to the Complainant.
Dated: June 27, 2002