WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pedro Latorre Beroiz, V. Domain Strategy, Inc.
Case No. D2002-0508
1. The Parties
The Complainant is Pedro Latorre Beroiz of PO Box 108, 31600 Burlata, Nararroa, Spain.
The Complainant is represented by Luis Bello Uguet of c/General Moscardo, 27, 6į - 1, 28020 Madrid, Spain.
The Respondent is Domain Strategy, Inc of 4 Place du Commerce, Montreal, Quebec H3E 1J4, Canada.
The Respondent is not represented.
2. The Domain Name and Registrar
The domain name in issue is: <skalariak.com>.
The domain name is currently registered with eNom, Inc of 16770 NE 79th St Suite 205, Redmon, WA 98052, United States ("eNom").
3. Procedural History
3.1 On May 30, 2002, a Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") pursuant to the Uniform Domain Name Dispute Resolution Policy (the "Policy"), adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on 26 August 1999, the Rules for Uniform Domain Name Resolution Policy also adopted by ICANN on August 26, 1999 (the "Rules"), and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") effective as of December 1, 1999.
3.2 A hard copy of the Complaint was received by the Center May 30, 2002.
3.3 The Center issued an Acknowledgement of Receipt on June 4, 2002.
3.4 The Center sent a Request for Registrar Verification to eNom on June 4, 2002. On 6 June eNom confirmed: (1) that a copy of the Complaint was sent to eNom by the Complainant as required by the Supplemental Rules, (2) that eNom is the Registrar for the disputed domain name, (3) that the Respondent was the current registrant of the domain name, (4) that the Respondentís contact details were as set out above, (5) that eNomís Registration Agreement (incorporating the Policy) was in effect for the domain name, (6) the current status of the domain name was "lock", (7) the language of the Registration Agreement was English, and (8) the Respondent has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain name.
3.5 The Center issued its Notification of Complaint and Commencement of Administrative Proceeding to the Respondent, as well as to its administrative and technical contacts, and to the Complainant.
3.6 The Respondent has filed no Response in reply to the Notification of Complaint and the Center issued a Notification of Respondent Default on July 4, 2002.
3.7 On July 10, 2002, Mr. Debrett Lyons transmitted a Declaration of Impartiality and Independence and a Statement of Acceptance to the Center to act as the sole Panelist.
3.8 On July 11, 2002, the Center issued a Notification of Appointment of Administrative Panel.
4. Factual Background
4.1 The Complainant is a member of a small music band from Navarra, Spain called ĎSKALARIAKí.
4.2 The Complainant holds the following registered trademarks in the Oficina Espanola de Patentes y Marcas (the Spanish Trademarks Office
No. 2122212 SKALARIAK (including stylised letters and star device) in class 9 (expiring on October 26, 2007)
No. 22122213 SKALARIAK (including stylised letters and star device) in class 41 (expiring on October 26, 2007)
4.3 The Complainant sought to register the domain name on March 8, 2000, with a registrar called "Iruna Chip". This registrar Ďdid not existí and the Claimant then registered the domain through another registrar called "Nominalia Internet SL". The content under that domain name was a web site outlining the activities of the band offering music and video downloads of the band and selling band merchandising.
4.4 Nominalia did not inform the Complainant that a renewal fee on the domain was payable until one week before the due date. The Complainant did not see this message, and, when the Complainant did see the message, the domain had already been registered by the Respondent on March 20, 2002.
4.5 The Complainant registered skalariak.org on March 24, 2002, and skalariak.net on March 26, 2002.
4.6 On March 24, 2002, the Complainant sent an email to the Respondent informing the Respondent that the Complainant was the proprietor of the "SKALARIAK" trademark and asserted that the registration of the domain name was trademark infringement.
4.7 The domain name is used by the Respondent to transfer Internet users to a pornographic site at "www.tinawebcam.com".
4.8 A research project by Ben Edelman of Harvard University ("Harvard Study") shows some 4000+ names are used by the Respondent to forward Internet users to this pornographic web site.
4.9 No other factual information is known about the Respondent.
5. Partiesí Contentions
5.1 The Complainant seeks the transfer of the domain name from the Respondent to the Complainant in accordance with paragraph 4(b)(i) of the Policy.
5.2 The Complainant contends that the domain name in issue is identical or confusingly similar to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name was registered and is being used in bad faith.
5.3 No Response having been filed, the Complainantís contentions have not been rebutted.
6. Discussion and Findings
6.1 Since the Respondent has not submitted a Response, the Panel can only decide the case on the basis of the evidence submitted by the Complainant in accordance with paragraph 5(e) of the Rules.
"If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint."
6.2 Even though there has been no Response the Panel must still, under paragraph 14(a) of the Rules, "proceed to a decision on the complaint".
6.3 Paragraph 4(a) of the Policy states that in order to be successful, the Complainant must prove three elements are present in its Complaint. The Panel will now consider in detail each of the three elements in paragraph 4(a):
4(a)(i) your domain name is identical or confusingly similar to a trademark in which the Complainant has rights
6.4 The Complainant has registrations for the trademark set out in paragraph 4.2 above. The trademark is not identical to the disputed domain name (because it is stylised and contain a star device), but in the Panelís view it is similar, so paragraph 4(a)(i) is proved.
4(a)(ii) you have no rights or legitimate interests in respect of the domain name
6.5 By failing to file a Response, the Respondent has done nothing to contest the allegations of the Complainant that it lacks any rights or legitimate interests in the disputed domain name.
6.6 However it can only be assumed that the Respondentís motive in registering the domain name was use of the domain to attract an existing Internet audience and to divert that audience to its pornographic website.
6.7 Paragraph 4(c) of the Policy sets out the ways in which a Respondent can show rights or legitimated interests in a disputed domain name:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue"
6.8 None of the criteria listed above can be met by use of the domain name to divert the Complainantís Internet audience to the Respondentís pornographic website. In addition, the Respondent has in the past opportunistically picked up and registered other domain names which were used to transfer segments of the Internet audience to the same pornographic sites. Harvard Study, The Kwini Municipality v Domain Strategy, Inc., WIPO Case No. D2002-0204 and Rug Doctor L.P. v Domain Strategy, Inc.,WIPO Case No. D2002 Ė 0355.
6.9 Since no circumstance has been evidenced by the Respondent that could support an inference in its favour under paragraph 4(c) of the Policy, the Panel finds that the Respondent has no rights or legitimate interests to the domain name and that paragraph 4(a)(ii) has been proved.
4(a)(iii) the domain name has been registered and is being used in bad faith
6.10 By failing to file a Response, the Respondent has done nothing to contest the allegations of the Complainant that the domain name has been registered and is being used in bad faith.
6.11 Paragraph 4(b) sets out illustrative circumstances that constitute 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 or 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 attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location."
6.12 No arguments have been advanced by the Complainant in relation to paragraphs (i) to (iii) of the bad faith criteria. In relation to paragraph (iv) the Complainant asserts that the forwarding of Internet users to the pornographic website is registration and use in bad faith. The picking up of a lapsed domain name and directing it to a pornographic web site raises an overwhelming presumption that the registration and use of the domain is to trade upon the confusion created with the Complainantís trademark and the residual reputation of the Complainantís original web site.
6.13 The Panel therefore finds that the Complainant has established registration and use of the domain name by the Respondent in bad faith.
7.1 Taking into consideration the Complaint, the Policy, the Rules and the Supplemental Rules, the Panel decides that:
(i) the domain name is confusingly similar to a trademark in which the Complainant has rights under paragraph 4(a)(i) of the Policy;
(ii) the Respondent has no rights or legitimate interests in the domain name under paragraph 4(a)(ii) of the Policy; and
(iii) the domain name was registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
7.2 The Panel orders that the domain name shall be transferred to the Complainant.
Dated: August 5, 2002