WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Union Alcoyana S.A. de Seguros y Reaseguros v. Cosmar Hard-Soft
Case No. D2003-0570
1. The Parties
The Complainant is La Union Alcoyana S.A. de Seguros y Reaseguros, Alcoy (Alicante), Spain, represented by Nominalia Internet, S.L., Spain.
The Respondent is Cosmar Hard-Soft, Casablanca, Morocco.
2. The Domain Name and Registrar
The disputed domain name <launionalcoyana.com> is registered with Gandi SARL.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 22, 2003. On July 23, 2003, the Center transmitted by email to Gandi SARL a request for registrar verification in connection with the domain name at issue. On July 28, 2003, Gandi SARL 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 administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 30, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 on July 30, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on August 21, 2003.
The Center appointed Massimo Introvigne as the Sole Panelist in this matter on August 28, 2003. 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.
4. Factual Background
Complainant is the owner of the Spanish trademark LA UNION ALCOYANA, registered for services in international class 36. La Union Alcoyana is the main part of Complainantís trade name, which is well-known in Spain in the field of insurances.
Respondent, Cosmar Hard-Soft of Casablanca (Morocco), has registered its domain name <launionalcoyana.com>, without dispute, well after trademark and trade name rights for the name "La Union Alcoyana" were acquired by Complainant, and has no known connection with any activity or trade carried out under the trade name or trademark La Union Alcoyana. The domain name <launionalcoyana.com> resolved, according to Complainant, to a link redirecting visitors to "www.pornocasera.com," a pornographic website. The domain name <pornocasera.com> is not owned by Respondent.
5. Partiesí Contentions
a. Complainant claims that it is the owner of the well-known and well-used LA UNION ALCOYANA trademark and trade name for insurance services.
b. Complainant claims that the domain name <launionalcoyana.com> has been registered by Respondent in bad faith. Respondent could not ignore Complainantís trademark rights, nor has Respondent any rights or legitimate interests in respect of the domain name. At least the zip code and telephone number, and possibly the address, of Respondent are also false.
c. Complainant claims that the domain name <launionalcoyana.com> has been, or is being, used by Respondent in bad faith, particularly by directing visitors to a pornographic website.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
A. General Principles
Under paragraph 4(a) of the Policy, the Panel should be satisfied that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name;
(iii) the domain name has been registered in bad faith;
(iv) the domain name is being used in bad faith.
B. Confusion with Complainantís Trademark
The Panel finds that Complainant has established that it is the owner of the trademark and trade name LA UNION ALCOYANA for insurance services. The validity of its trademark is beyond dispute. Respondentís domain name is identical to Complainantís trademark and trade name.
C. Respondentís Absence of Rights or Legitimate Interests in the Domain Name
There is no evidence that Respondent has any rights or legitimate interests whatsoever in respect of a domain name confusingly similar to the well-known trademark LA UNION ALCOYANA. Respondent does not own the domain name <pornocasera.com>. At any rate, using a domain name confusingly similar to well-known trademarks in order to redirect users to a pornographic website does not create a "legitimate interest" (See Caledonia Motor Group v. Amizon, WIPO Case No. D2001-0860, August 29, 2001).
D. Registration in Bad Faith
The argument that the zip code and telephone number are obviously false is not crucial in the opinion of this Panel. Complainant should have established that there is no company "Cosmar Hard-Soft" at the Respondentís address in Casablanca in order to build a strong case of bad faith based on false WhoIs information, but failed to offer any evidence on this point.
Respondent, when registering the domain name, was obviously aware that LA UNION ALCOYANA was a trademark associated with Complainantís services.
When it may be presumed that "the Respondent (Ö) knew of the renown of the Complainantís trademarks," a finding of "opportunistic bad faith" is in order (See Banca Sella s.p.a. v. Mr. Paolo Parente, WIPO Case No. D2000-1157 (November 27, 2000), where the panel found that Respondent could not have ignored that BANCA SELLA is a famous trademark in Italy for banking services). In Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (May 1, 2000), the panel noted that "<veuvecliquot.org> is so obviously connected with such a well-known product [Veuve Cliquot champagne] that its very use by someone with no connection with the product suggests opportunistic bad faith." In Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 (May 17, 2000), it was also suggested that:
"the Domain Names are so obviously connected with such a well-known name and products that its very use by someone with no connection with the products suggests opportunistic bad faith [quoting Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (May 1, 2000)]. In the absence of contrary evidence, the Panel finds that Respondents knew of or should have known of the Complainantís trademark and services at the time Respondents registered the Domain Names given the widespread use and fame of the Complainantís CHRISTIAN DIOR mark ."
Even in a case where the trademark involved (EXPEDIA for online travel services) was somewhat less famous than VEUVE CLIQUOT or CHRISTIAN DIOR, it was decided that "the Respondent knew of or should have known of the Complainantís trademark and services at the time it registered the domain name <xpediatravel.com>, given the widespread use of the Complainantís EXPEDIA website" (Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137, April 18, 2000).
The Panel concludes that the domain name has been registered in bad faith.
E. Use in Bad Faith
Complainant states that the domain name is being used in bad faith. Although as of August 29, 2003, the domain name <launionalcoyana.com> does not resolve to a link to the pornographic website "www.pornocasera.com," Complainant has submitted evidence that it did as of July 22, 2003, and Respondent has not challenged this evidence. This is a typical case of "pornosquatting" where a well-known trademark is used within the framework of a domain name to link to a pornographic website and attract to the latter users looking for entirely different products and services. As the Panel stated in the case Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079, April 27, 2000, "while many adult sex sites are perfectly legal and constitute bona fide offering of goods or services, the use of somebody elseís trademark as a domain name (or even as a meta-tag) clearly does not constitute a bona fide offering of goods or services when the website owner has no registered or common law rights to the mark, since the only reason to use the trademark as a domain name or meta-tag is to attract customers who were not looking for an adult sex site, but were instead looking for the products or services associated with the trademark. Such use of a trademark can create customer confusion or dilution of the mark, which is precisely what trademark laws are meant to prevent. And actions that create, or tend to create, violations of the law can hardly be considered to be bona fide." That redirection to pornographic sites from a domain name incorporating a well-known trademark is, per se, evidence of bad faith has been confirmed by several Panel decisions (see Ty, Inc. v. O.Z. Names, WIPO Case No. D2000-0370, June 27, 2000), Youtv, Inc. v. Alemdar (Nat. Arb. Forum Case No. FA 94243, March 7, 2000), Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362, June 21, 2000, Simple Shoes, Inc. v. Creative Multimedia Interactive (Nat. Arb. Forum Case No. FA 95343, September 11, 2000), Dell Computer Corporation v. RaveClub Berlin, WIPO Case No. D2002-0601, August 12, 2002, Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022, March 4, 2003, Cattlemens v. Menterprises Ė Web Development (CPR Case No. CPR0304, February 28, 2003).
This Panel agrees that using a domain name including a well-known trademark in order to redirect users to a pornographic website is evidence of bad faith.
The Panel concludes that the domain name <launionalcoyana.com> is used by Respondent in bad faith.
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 <launionalcoyana.com> be transferred to the Complainant
Dated: September 1, 2003