WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lo Monaco Hogar, S.L. v. MailPlanet.com, Inc.
Case No. D2005-0896
1. The Parties
The Complainant is Lo Monaco Hogar, S.L., Peligros Granada, Spain, represented by Clarke, Modet & Co., Spain.
The Respondent is MailPlanet.com, Inc., Washington D.C., United States of America, represented by John Berryhill, PhD, Esq., United States of America.
2. The Domain Name and Registrar
The disputed domain name <lomonaco.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2005. On August 22, 2005, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On August 28, 2005, Moniker Online Services, LLC 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. The Center verified that 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 August 31, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2005. The Response was filed with the Center on September 20, 2005.
The Center appointed Ross Carson, Dan Hunter and Richard W. Page as panelists in this matter on October 21, 2005. 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.
On October 25, 2005, Complainant filed a supplemental submission in reply to matters submitted in the Response. On November 3, 2005, the Panel, exercising its discretion pursuant to paragraphs 10 and 12 of the Rules, issued Procedural Order No. 1, refusing to accept Complainant’s further submissions. Pursuant to paragraph 11(b) of the Rules, the Panel requested Complainant to file translations or an English version of the registered trademarks listed in Exhibit 5 to the Complaint. In addition, the Panel requested Complainant to file English translations of Exhibits 3, 9 and 14 of the Complaint. Pursuant to an amendment to Procedural Order No. 1, the Panel fixed the time for the Complainant to file translations no later than November 14, 2005. Respondent was granted seven days until November 21, 2005, to respond to matters arising from the translated material. The time for filing the Panel’s decision with the Center was extended to November 28, 2005. On November 14, 2005, Complainant filed translations of Exhibits 3, 5, 9 and 14 to the Complaint with the Center. On November 17, 2005, Respondent filed comments on the translated material provided by Complainant. On November 18, 2005, Complainant e-mailed a letter to the Center requesting the Panel not to consider any comments or arguments included in Respondent’s comments or arguments submitted on November 17, 2005, which do not refer to the English translations submitted by Complainant. The Panel will only consider those submissions made in Respondent’s Response to the translated material which refer to the translated material submitted by Complainant.
4. Factual Background
Complainant is the owner of the following Trademark Registrations in Spain: NATURA DE LO MONACO, Reg. No. 2320221, Reg. Date 05/01/2001; GRUPO LO MONACO, Reg. No. 2327790, Reg. Date 20/06/2001; NATURA GRUPO LO MONACO, Reg. No. 2502266, Reg. Date 10/07/2003, Reg. No. LO MONACO GRUPO, Reg. No. 2502265, Reg. Date 10/07/2003; GRUPO LO MONACO, Reg. No. 2509930, Reg. Date 24/04/2003; GRUPO LO MONACO, Reg. No. 2510668, Reg. Date 16/10/2003; GRUPO LO MONACO, Reg. No. 2533683, Reg. Date 01/10/2003 and LO MONACO BEBE, Reg. No. 2618952, Reg. Date 10/03/2005
Complainant is also the owner of the following Trademark Registrations in Portugal: SUPREM GRUPO LO MONACO, Reg. No. 366680, Reg. Date 22/07/2003; LO MONACO GRUPO, Reg. No. 366681, Reg. Date 22/07/2003; GOLD CLASSIC GRUPO LO MONACO, Reg. No. 366682, Reg. Date 22/07/2003; and NATURA DE LO MONACO, Reg. No. 366683, Reg. Date 22/07/2003. Copies of the particulars of the registrations are attached as Exhibit 5 to the Complaint.
Complainant is also the registrant of the domain names <lomonaco.net>; <grupolomonaco.com>; <grupolomonaco.net>; and <grupolomonaco.org>. Copies of the whois data relating to the domain names are attached as Exhibit 7 to the Complaint.
5. Parties Contentions
Complainant submits that it is one of the leading companies in Spain in selling household items and services associated therewith. Complainant’s best known product is a high quality mattress made of latex. At present, Complainant has more than 300,000 clients all over Spain having commenced business in Spain in 1996. Complainant’s sales in Spain were as follows: 2001, over 27 million Euro and 2002, over 54 million Euro, 2003, over 64 million Euro and 2004, over 82 million Euro. Exhibit 3 to the Complaint. Complainant is active in financially supporting nonprofit public organizations such as the Red Cross, United Family Foundation, Cancer Association. Complainant also financially supports organizations providing cultural activities in Spain. Lists of their public service activities are attached as Exhibit 4 to the Complaint.
Complainant states that its goods and services are widely advertised in print and on television in association with its registered trademark as well as the trademark LO MONACO & design, which is well known in Spain. Invoices for television advertising form part of Exhibit 6 to the Complaint. Complainant states that, as a result of its public service contributions and support, extensive advertising of its goods and services in Spain, and substantial sales of goods and services in Spain, the Complainant’s trademarks for or including LO MONACO are very well known throughout Spain. As part of Exhibit 6 the Complainant includes copies of printouts of ranking of well known trademarks in Spain showing high recognition of LO MONACO as a trademark for goods and services in Spain.
Complainant states that the domain name in dispute <lomonaco.com> is confusingly similar to Complainant’s registered trademarks which identify the GRUPO LO MONACO goods and services and Complainant’s unregistered trademark for LO MONACO and design, which is known to the public throughout Spain.
RIGHTS OR LEGITIMATE INTERESTS
Complainant states that the earliest GRUPO LO MONACO trademark registration goes back to June 26, 2001. Exhibit 5 to the Complaint. Complainant states that Respondent registered <lomonaco.com> on December 16, 2003. Exhibit 1 to the Complaint, Whois Domain Name Search. Complainant submits that the activities of Respondent are not related in any way to the words “LO MONACO”. Complainant has never authorized Respondent to use the name “ MONACO”. Complainant submits that on the basis of the above facts, Respondent has no rights in the domain name <lomonaco.com>.
With respect to the issue of legitimate interests, the Complainant submits that on April 18, 2005, a search under the domain name <lomonaco.com> disclosed a home page in which the words “Latex Monaco Curriculum”, “Work From Home”, “Spanish” and “Hotels” appear across the page below <lomonaco.com>. “What you need when you need it.” The above words were active links. Two boxes appear below the active links. One box is entitled “Popular Links” with the word “Latex” immediately below “Popular Links” and the word “Spanish” further down the list of “Popular Links” The second box having the heading “Popular Categories” includes the word “Latex” immediately below “Popular Categories” with the word “Spanish” as a further title under “Popular Categories.” A search box is located below the Popular Categories box. Exhibit 9 to the Complaint. Upon clicking on a link called “Latex” in the section called “Popular Links”, the home page resolves to a second page featuring Sponsored Links. One of the sponsored links with a description of the site in Spanish is one of the Complainant’s URL addresses “www.grupolomonaco.com”. The Spanish description includes mattresses and latex which are the Complainant’s leading products.
The Sponsored Links also include a second link in Spanish referring to mattresses and latex at another URL “www.latiendahome.com”. (Exhibit 9).
Attached as part of Exhibit 8 to the Complaint are two pages generated on April 4, 2005. On the first page the word “latex” is entered in the search box on the Sponsored Links page. As seen on the second page, the search for “latex” returned among others the URL’s “www.grupolomonaco.com” and “www.latiendahome.com”. The heading sponsored information also includes a fetish site and an erotic toy site.
The Complainant submits that the headings on Respondent’s home page of <lomonaco.com> which include “Latex” and “Spanish”, and the fact that a search for Latex provides a link to Complainant’s website <grupolomonaco.com> is evidence that the Respondent has clear knowledge of Complainant’s trademarks.
The Complainant submits that the appearance of Complainant’s products on the Respondent’s website creates a likelihood of confusion among Internet users.
REGISTERED AND USED IN BAD FAITH
Complainant submits that the Respondent had a clear knowledge of the Complainant’s activities and goods before registration of the domain name in dispute.
As stated above, a search for “www.lomonaco.com” on April 12, 2005, led to Respondent’s home page featuring headings in which the first word was “Latex” followed by further headings, including the words “Monaco” and “Spanish.” Exhibit 9 to the Complaint. The home page also includes boxes entitled “Popular Links” and Popular Categories, in which “Latex” is the first link followed by the word “Monaco” and further along by the word “Spanish.” The bottom of the home page, shown as part of Exhibit 9, includes a search box. The above referred-to words appear below the search box. When the word “Latex” is entered in the search box, a new page appears including boxes entitled “Sponsored Links” and “Top Sites.” The first two sponsored sites which appear in Spanish are “www.latiendahome.com” and “www.grupolomonaco.com”. The first Sponsored Link “www.latiendahome .com” is a site of a competitor of the Complainant. The second Sponsored Link, “www.grupolomonaco.com” with a Spanish language entry, is a website owned by the Complainant. Exhibit 8 to the Complaint generated on April 7, 2005, and Exhibit 9 to the Complaint generated on April 12, 2005.
Complainant submits that Respondent’s registration and use of the domain name <lomonaco.com> meet the bad faith elements set forth in paragraph 4(b)(ii) of the Policy since the purpose of registration of the domain name in dispute is to prevent Complainant, who is the owner of the “GRUPO LOMONACO” trademark, from reflecting the mark in a corresponding domain name, especially taking into account that Respondent’s website contains an unauthorized link to Complainant’s website “www.grupolomonaco.com”, evidencing that Respondent has clear knowledge of Complainant’s trademark.
On April 6, 2005, a cease and desist letter was sent by Complainant to Respondent, informing the Respondent of Complainant’s rights in the trademark GRUPO LOMONACO and requesting the Respondent to transfer the domain name in dispute to the Complainant. Exhibit 10 to the Complaint.
The e-mails between the parties are found in Exhibit 11 to the Complaint. By e-mail dated April 12, 2005, Complainant advised Respondent that Respondent’s home page included a heading called “Latex” which matches Complainant’s main activity, the manufacturing and selling of latex mattresses. Respondent was also advised that when the word “Latex”, under the heading “Popular Links” was clicked on, a subpage appeared, where there were several links. Among those links was a link to Complainant’s website <grupolomonaco.com>.
Respondent replied to Complainant by an e-mail dated April 15, 2005. Respondent stated that when he clicked on the link for “Latex”, there were no links related to mattresses. The links appeared to be primarily for sex fetish websites. Respondent also confirmed that it does not produce the links that appear on the landing page at <lomonaco.com>. Respondent has turned over the traffic on the domain name in dispute to a company named DomainSponsor.com, that decides which links should appear on the website of the domain name in dispute. Respondent stated that it does not have a relationship with the advertisers nor does it determine which links appear. Respondent stated that it could not find the link on the subpage that forwards to <grupolomonaco.com>.
In its e-mail of April 15, 2005, Respondent stated that as a gesture of goodwill, it requested that DomainSponsor display only their “generic” search page at the <lomonaco.com> domain. Respondent states that the “generic” search page is a page of commonly requested terms that is developed with no connection to the meaning or relevance of the domain name on which the page appears. Respondent submits that there are no longer any links for “Latex”. Exhibit 11 to the Complaint.
Complainant submits that changing the content of the website also evidences the bad faith use of the headings “Latex” etc. and links to Complainant’s and its competitors’ websites.
Complainant further submits that consumers should be protected by avoiding the risk of confusion and association that usually leads to unfair competition by using another’s trademark and obtaining a profit.
Complainant submits that the “generic” search page associated with the domain name in dispute still contains links to Complainant’s domain name <grupolomonaco.com>. Exhibit 12 to the Complaint. When “lomonica” is entered into the search box of the generic page associated with <lomonica.com>, a subject page is generated having two boxes, one entitled “Sponsored Links” and a second box entitled “Top Sites”. The “Sponsored Links” includes links to Complainant’s website <grupolomonaco.com> and to Complainant’s competitor’s website <latiendahome.com>. The description of the subject matter of websites is in the Spanish language: The last page of Exhibit 12 shows the “www.grupolomonaco.com” page generated from the “Grupo Lo Monaco” link.
Complainant submits that it has a very active presence in the Internet, which is one of their main distribution channels, and offers a wide range of online products and services. Grupo Lo Monaco’s website visits are shown in Exhibit 14 to the Complaint. The number of hits range from 36 thousand to 100 thousand per month. It can be said that online businesses can only be successful if an image of security is provided. It is of public knowledge that a company’s image can be seriously damaged if doubts are raised about the origin and ownership of the services offered in their website. Moreover, there is a public alarm regarding the online trade in the Internet, due to many recent cases of Internet fraud (“phishing attacks”).
Complainant submits that summarizing the above-mentioned circumstances lead to the conclusion that Respondent’s conduct meets the bad faith element set forth in paragraph 4(b)(iv) of the Policy.
Complainant states that when trying to get in touch with Respondent, Complainant found out that Respondent’s alter ego is Telepathy, Inc. Respondent and Telepathy, Inc. have the same post office box and Telepathy, Inc. is listed as the Administrative Contact, Technical Contact and Billing Contact for Respondent. The individual whom Complainant contacted through the e-mail address provided by the Whois data base, and with whom Complainant has exchanged correspondence, is Nat Cohen, who appears to be a principal of both Respondent and Telepathy, Inc. Exhibit 11 to the Complaint.
These circumstances are identical to the circumstances described in WIPO Case No. D2000-0054 in which Respondent appears to be the same as in the case at issue. “Respondent’s alter ego is Telepathy, Inc. which uses identical post office box as respondent, and which is listed as the Administrative Contact, Technical Contact and Billing Contact for Respondent. Telepathy has registered or acquired more than 50 domain names consisting of words that may be trademarks of others or are generic words that others may wish to use. The identical post office box also is listed for an individual named Nat Cohen, who is believed to be a principal of both respondent and Telepathy, Inc. None of Telepathy’s domain names (other than its own domain name “www.telepathy.com” is being used for an active website. Telepathy is clearly in the business of offering its domain names for sale. Its purpose is registering or acquiring this domain names has been expressly stated on its website: “www.telepathy.com”: Telepathy has acquired attractive domains both for use in its own development efforts and for its development partners and clients.”
The above-mentioned facts and the analyzed circumstances of WIPO Case No. D2000-0054 leadComplainant to submit that Respondent is engaged in a pattern of conduct involving the speculative registration of domain names for profit. This pattern of conduct prevents others from making bona fide use of desirable domains that may correspond to their trademarks.
This is also evidenced when typing <lomonaco.com>. The bottom of the screen, while such search is processed it seems to be forwarded to “http://landing.domainsponsor.com/index”.
Complainant has also tried to enter the website “www.domainsponsor.com” and the introduction of such website states (Exhibit 13 to the Complaint):
“DomainSponsor is the industry’s leading solution for monetization of parked domains. Our solution offers:
*The highest payouts
*State of the art optimization
Our typical users range from registrars & portfolio owners with hundreds of thousands of parked domain names to those with a couple hundred.
Do you have a significant domain portfolio?”
According to Complainant, the presumed purpose of Respondent in registering the domain name object of this Complaint cannot be referred as one unique purpose but several. WIPO Case No. D2000-1684 “The bad faith concept has to be focused not only from a subjective, but also from an objective approach. It is not only the knowledge of the respondent in Purchasing a domain name which is similar to a notorious mark that counts, but also the mere fact of the continuous use of such domain name under conditions revealing that the Respondent’s activity, both registration and actual use, cannot be allowed without at the same time causing a damage to a legitimate interest or to a potiur ius of a third party.”
Therefore, in view of the circumstances, Complainant submits that there was not only bad faith in registering the domain name to prevent Complainant from reflecting a mark in a corresponding domain name, but also by using the domain name intentionally attempting to attract for commercial gain, Internet users to Respondent’s website, as it will be proved by virtue of the following facts and evidences:
Complainant states that another web page related to a well-known trademark in Spain and worldwide, “PORCELANOSA” (“www.wwwpoprcelanosa.com”) presents identical design and contents as Complainant’s web page. Further, this webpage also has a “search box” where by entering the word “Latex” one arrives to all the above-mentioned contents regarding Complainant’s activities in the Spanish market. Exhibit 15 to the Complaint.
More specifically, in May 2005, a search was conducted for the name PORCELANOSA, and, when reviewing the results in the report, Complainant’s attorney noticed that the shape and contents of the webpage of the domain name <wwwporcelanosa.com> matched absolutely with the current pages on the website “www.lomonaco.com”. Therefore and by virtue of the identity of both pages, Complainant submits that Respondent had also registered the domain name <wwwporcelanosa.com>, which causally matches a very famous Spanish and worldwide trademark (see Goggle’s matches with Porcelanosa), for the sole purpose of obtaining some extra profit.
Surprisingly, both websites, “www.lomonaco.com” and “www.wwwporcelanosa.com”, are managed or hosted by “domainsponsor.com”, which, as mentioned above, appears to be an advertising services company. On the company’s website slogans or advertisements such as “Join Now; Start making money of your domains”, may be found. Exhibit 15 to the Complaint. Complainant submits that this fact constitutes additional evidence of Respondent’s bad faith.
Complainant submits that it has proven all the Policy requirements. Registration of a domain name identical to Complainant’s trademarks without any possible claim to good-faith use; intent to prevent the legitimate use of the trademarks to represent Complainant’s identity and products with the appropriate domain name, as well as intentional attempt to attract, for commercial gain, Internet users to Respondent’s website.
Respondent submits that this dispute concerns a common surname meaning “The Monk” or “of or near a monastery” registered as a domain name by an e-mail service provider, and an opportunity presented to Complainant by a service disruption to that provider in order to manufacture evidence of “bad faith”.
IDENTICAL OR CONFUSINGLY SIMILAR
The evidence of trademark registrations in Spain and Portugal, Exhibit 5 to the Complaint, were in the Spanish language. The Respondent questioned whether the particulars of the trademarks in Exhibit 5 related to trademark applications or trademark registrations. In reply to a request from the Panel for a version of the particulars of the trademarks referred to in Exhibit 5 for trademarks for or including “Grupo Lo Monaco” in English, the Complainant submitted proof that the documents of Exhibit 5 are trademark registrations.
Respondent submits that “Lo Monaco” as a surname is neither inherently distinctive nor exclusively associated with the Complainant.
Respondent states that Complainant admits that “Lo Monaco” is primarily the surname of the principal shareholder Livio Lo Monaco (Complaint, page 7). Indeed, many persons and businesses use that surname for various purposes around the world, and in the United States. The “Lo Monaco” surname apparently arose in Palermo, Sicily in the 12th century, as noted in Exhibit A to the Response, in connection with the Lo Monaco family crest. An alternate derivation of the name also included in Exhibit A states, in rough English automated translation:
“Lo Monaco is decidedly Sicilian, while Lomonaco is rarer and is present to a macchia di leopardo in the south Italy, originally derives from a nickname legacy to the fact to be near to a monastery or to its dependencies.”
Respondent argues that Complainant admits that it “has signed an agreement with Monaco’s Principality which, the Complainant claims, “increases the legitimacy of Complainant.” The “agreement” is not included in the exhibits, which is unusual for a piece of evidence that would, as claimed, increase “the legitimacy of the complainant”. An astute attorney would, however, surmise from the necessity of an agreement with the Principality of Monaco, that there has been some question concerning the legal right of Complainant to use the term “Monaco” on goods demonstrates a legal impairment to Complainant’s claims abroad.
Respondent further submits that while Complainant claims world fame in “Lo Monaco”, Complainant provides no explanation of why Complainant has never obtained or attempted registration of “Lo Monaco” as a trademark apart from other words and graphical features. It would certainly come as a surprise to the U.S. businesses listed in Exhibit B to the Response, and to celebrity chef Michael Lomonaco, that they are in violation of international treaties requiring them to stop using this “world famous” unregistered trademark by the mere use of their surnames in business.
Respondent submits that there is substantial reason to doubt the Complainant’s claims of longstanding or continuous use of even such terms as “Grupo Lo Monaco” in commerce.
Respondent attached as Exhibit D to the Response a printout generated on September 20, 2005 using the Internet Archive WaybackMachine. Respondent conducted a search for homepage printouts of the URL “http://www.grupolomonaco.com” from May 26, 2002, until November 17, 2004. Attached as part of Exhibit D are printouts of the homepage at <grupolomonaco.com> on May 26, 2002; September 2, 2002; November 26, 2002; December 8, 2002; June 18, 2003 and July 13, 2003. A chronological summary of Complainant’s use of the domain name <grupolomonaco.com> is shown in Exhibit D, and is as follows: May 2002 – Under Construction; November 2002 – Under Construction; June 2003 – Under Construction.
Respondent submits that use of the <grupolomonaco.com> domain name does not appear to have commenced until August 2003, more than a year and a half after the site was “under construction”, and even then many of the links in the Archive indicate they were directed to a page called “www.enconstruccion.htm”. A similar chronology also applies to <lomonaco.com>, giving every indication that the domain name was merely an abandoned, unused domain name. In any event, the Complainant accrued no trademark interest by virtue of its year and a half of non-use of the domain name <grupolommonaco.com> and its claims otherwise are overstated.
Respondent argues that completely absent from the Complaint is any mention of the fact that Complainant actually held the domain name <lomonaco.com> for several years, did nothing with it, and allowed the domain name to expire. The Complainant apparently does not want the Panel to know that it simply let the domain name go through non-use and non-renewal.
Respondent submits that Complainant has failed to demonstrate an enforceable right in the common surname “Lomonaco”. The Complainant has studiously avoided attempting to perfect a right in the term “ Lo Monaco” which is apparently the subject of a settlement or license agreement from another party entirely.
Respondent submits that the following facts are indisputable – (a) Lo Monaco is primarily a surname used by various parties, (b) Complainant’s use of the term is subject to the terms of an agreement with another party, and (c) despite its new-found interest, and apparent ability to file numerous trademark applications, Complainant has never attempted registration of what it now claims to be the “distinctive” part of its various compound and graphical marks. Furthermore, Complainant has not bothered to register such domain names as <lomonaco.es>, <lomonaco.com.es>, etc. as indicated in the attached Exhibit C to the Response, which shows these names as unregistered.
LEGAL RIGHTS AND INTERESTS
Respondent submits that the second criterion required to be proven by Complainant is that Respondent lacks any legitimate right or interest in the domain name. Under the Policy, such rights and interests are not limited to trade or service mark rights, but include equitable rights and interests such as substantial preparations and/or use of the domain name in connection with a bona fide offering of goods and services prior to notice of a dispute.
Respondent submits that, as set forth in the attached Declaration of Nathaniel Cohen, Exhibit E to the Response, paragraph 3, <lomonaco.com> was acquired from a list of expiring and abandoned domain names for use with a vanity e-mail service provided by Respondent. Respondent is a subsidiary of Telepathy, Inc., incorporated in 2000 for the purpose of commercializing Telepathy’s last-name domains in a vanity e-mail service. Vanity e-mail services offer personalized, consumer chosen e-mail addresses, so that various persons sharing a common surname or other interest can utilize corresponding domain name services. The market leader in this segment is NetIdentity, which claims to offer thousands of last-name domains covering over 70% of the US and European populations (“www.netidentity.com”).
Respondent submits that it has made a substantial investment in developing the service, including graphic design, installation and customization of the e-mail handling software, creation of a registration and administration system, and online payment functionality. Respondent has also actively sought to increase its holdings of last-name domains to broaden the choices available to customers and in attempt to defray the start-up costs over a larger base of domains. Respondent researched the availability of thousands of domains using the United States Census Bureau report on last-name frequency (available at “http://www.census.gov/genealogy/names/dist.all.last”). Respondent registered many available domains, including ones that became available once the registrations of the prior owners lapsed, and negotiated the purchase of many last-name domains directly with the prior owners. As set forth in paragraph 5 of the Declaration of Nathaniel Cohen, “Prior to December 2003, I became aware that the domain name “lomonaco” had expired, and was due to be released for registration. Because “Lomonaco” is a common surname useful for Respondent’s service, I submitted an order to attempt to register <lomonaco.com> upon its abandonment.”
Respondent states that it holds over three hundred last-name domains including <garcia.com>, its most popular last-name holding. Garcia is currently the 18th most common last name in the United States of America. Other last names held by Respondent include <Norris.com>, <Middleton.com>, <Garner.com>, <Bellamy.com>, <Crenshaw.net> and <Graham.net>. A detailed list of Respondent last name domains is provided as Exhibit G to the Response.
Respondent submits that the United States Census Bureau lists the frequency of nearly 90,000 US last names ranked from most popular to least popular, with Smith at the top of the list. According to the Census bureau statistics even the last name ranked 20,000th in popularity is shared by several thousand people in the United States of America alone. Respondent determined that domains based on the most common 20,000 last-names had a large enough base of potential customers to make their acquisition worthwhile. Lomonaco is in position 13,726 in this list (Exhibit H print-out from “http://www.census.gov/genealogy/www/namesearch.html”).
Due to prior registration of all of the most popular last-name domains, Respondent found that the opportunity to acquire most last-name domains lay primarily among “second-tier” last-name domains – those ranked between 10,000 and 20,000 in popularity according to the census reports – and most of the last-name domains it was able to obtain fall in this rage.
Respondent further submits that it maintains a server for handling its e –mail accounts and contracts with an experienced system administrator to maintain the mail server. Respondent tested the commercial viability of the service by operating in a “soft-launch” mode to ensure that it could provide a high-quality service before making an aggressive effort to attract new customers. Respondent attracted over 100 paying customers to its vanity mail service, relying primarily on type-in traffic to the last-name domains in the service. These domains were redirected to Respondent’s website which announced the availability of vanity e-mail addresses at the last-name domains entered by the user.
After launching the service, Respondent discovered that high volumes of spam directed towards domains that are part of its service affected the quality of the service as massive spam blasts would disrupt e-mail service and also would delay the sending and receiving of e-mail. Respondent began a search for a third-party hosted e-mail solution, as combating the spam blasts, the frequent need to upgrade the e-mail software and other technical issues were placing an unsustainable burden on the support staff (Exhibit E to the Response, Paragraph 6).
Respondent selected Tucows to host its e-mail service and is in the process of migrating customer accounts from its own server to the hosted service provided by Tucows. During this process, Respondent stopped accepting new accounts, and changed the set-up for domains that did not currently have customers so that instead of redirecting to Respondent’s service, those domains have been temporarily directed to a “parking page” that is also used by its parent company to monetize the undeveloped domains that it owns. Respondent’s service is currently transitioning existing account holders to a new e-mail hosting provider. Until the transition is complete and the decision is made to begin accepting new accounts, domains without customer accounts, such as <lomonaco.com>, are configured to go to the same parking page used by Respondent’s parent company, for its temporarily out-of-service domain names.
Respondent submits that is operates a functioning business with paying customers and was incorporated for this purpose. <lomonaco.com> was acquired as part of this service. Respondent therefore has a clear legitimate interest in this domain name.
REGISTRATION AND USE IN BAD FAITH
Respondent submits that the third set of criteria required to be proven by Complainant is that the domain name was registered in bad faith, and that it was further used in bad faith. This is an element of specific intent. Though non-limiting, all of the enumerated examples of bad faith evince a conscious, knowing intent to exploit or usurp rights known to belong to another. That is why, for example, the Policy refers to “intentional” diversion, as opposed to what would normally occur when a domain name is registered to one person having a purpose that differs from another potential registrant of the domain name. The question here is, “Was Respondent motivated by a bad faith intent toward Complainant in registering the domain name?”
As noted in the Declaration of Nathaniel Cohen, Exhibit E to the Response, paragraph 11, Respondent had never heard of Complainant or its claimed trademarks prior to being contacted by Complainant’s attorney.
Respondent submits that the only reason the domain name became available for registration to any party was that Complainant, having registered <lomonaco.com> for quite some time, and having not used the domain name for over a year and a half, abandoned it. The facts available to Respondent at the time of registration were that the prior registrant – in fact Complainant – had not been using the domain name, and allowed it to expire, just as Complainant is making no use of its <lomonaco.net> domain name even at the present time: Corbis Corporation v. Zest, NAF Case No. 98441.
Respondent submits that it was collecting surnames within the top 20,000 names in the United States Census Bureau list of surnames, noticed that one of those names – <lomonaco.com> – became available for registration, and registered it for use in connection with an e-mail service. Complainant did nothing for two years after allowing Respondent to register the domain name.
Respondent further submits that it has not attempted to pass itself off as Complainant. Respondent has used none of the other terms which Complainant combines with the surname “Lo Monaco”. Respondent has displayed no graphics or symbols such as those used by Complainant. Indeed, Respondent has not even used the domain name in connection with a Spanish language web page at all. These facts suggest quite the opposite behavior as one might expect from a person who was intent upon exploiting or abusing trademark rights of a business operation in Spain and Portugal, and confirm that Respondent had no knowledge of any such rights, nor did Respondent, located in the United States of America, have any duty to be aware of such claimed rights (which, as noted above, Complainant still has not made clear).
Respondent submits that Complainant advertises a competing vanity e-mail service at the webpage for <lomonaco.net>. Attached as Exhibit F to the Response. A search for the URL “http://www.lomonaco.net” on September 20, 2005, showed a home page identified by the NET IDENTITY trademark. Respondent submits that NetIdentity is the market leader in vanity e-mail service and claims to offer thousands of last-name domains covering over 70% of the US and European populations (“www.netidenty.com”).
Respondent submits that on the point of bad faith, Complainant submits that Respondent must have had knowledge of Complainant because “the home page of Respondent’s website contained the following words as headings of the home page: LATEX/LOMONACO/SPANISH, words that are directly related to Complainant’s activity.” Complainant then purports to show Respondent’s webpage in Complainant’s Exhibit 8. The Panel is requested to closely inspect Complainant’s Exhibit 8, as there are several pages shown. On the first page (in the order as received by Respondent), the Panel will note that the “search box” is filled-in with the word “latex”, and in the second page (as received), the Panel will note the page notes “Your search for latex returned the following results:” and includes a sponsored link to <grupolomonaco.com>. Finally, the Panel will note that Complainant’s Exhibit 8 includes a generic parking page.
Generating this evidence required a bit of cleverness on the part of the Complainant’s attorney. During the time Respondent has been re-arranging its e-mail services, the domain name <lomonaco.com> was simply pointed at a generic parking page – the final page shown in Complainant’s Exhibit 8. Respondent does not generate that parking page, and Respondent does not operate the search bar shown on that page. As noted at the bottom margin, the page is generated by <domainsponsor.com> which is not associated with Respondent. In order to generate the other pages of Exhibit 8, it was necessary for Complainant to intentionally enter search terms into the search bar, and use that function to cause the DomainSponsor search engine to generate the search results that Complainant is complaining about. Moreover, in order for <grupolomonaco.com> to appear among the “sponsored results”, it was necessary for Complainant to purchase advertising through one of DomainSponsor’s partners for Complainant to appear in the results. In other words, the only reason the pages in Complainant’s Exhibit 8 show the things described by Complainant is by the deliberate action of Complainant to generate those search results from DomainSponsor. The search results mentioned in the Complaint demonstrate nothing about Respondent’s intent in registering the domain name.
Respondent further submits that it is not the registrant of the <wwwporcelanosa.com> domain name mentioned in the Complaint, and the Respondent has nothing whatsoever to do with that domain name.
Respondent states that the e-mail correspondence between the parties shown in Exhibit 11 to the Complaint speaks for itself. When Complainant asserted rights, Respondent asked for evidence of U.S. rights, because Respondent operates in English, uses U.S. servers, and conducts no business in Spain or Portugal. When Complainant objected to a link on the page for “latex”, Respondent courteously requested DomainSponsor to remove the link. It is apparent in this correspondence that Respondent clearly stated the purpose for which the domain name was registered, respectfully requested relevant information, and took the extra measure of responding to Complainant’s expressed concerns. Hence, Complainant has been on complete and full notice of Respondent’s reasons for registering the domain name, the reasons for the temporary parking page, and the fact that Respondent does not control the search function on the page. Nonetheless, Complainant asserts otherwise, with no basis in fact, in its Complaint.
Respondent’s Comments on Matters Arising From The Translations
Respondent’s submissions with respect to the translations of Complainant’s registered trademarks did not relate to issues arising from translation into English of the particulars of registration of the trademarks relied on by Complainant. Respondent states that the translation of the other documents submitted by the Complainant do not demonstrate ownership of a trade or service mark right in “Lomonaco” per se, nor do they provide any basis for believing that Respondent targeted Complainant by selecting and registering the common surname as a domain name.
6. Discussions and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, Complainant must prove that each of the three following elements is satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the domain name; and
3. The domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with Complainant.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
Complainant is the owner of six trademark registrations in Spain for or including the words GRUPO LO MONACO alone or in combination with other words. Complainant is also the owner of two registrations in Spain for LO MONACO together with other words. See paragraph 4 above for particulars of these registrations. The Registrations are registered in relation to goods and services associated with household items. The earliest of the trademark registrations goes back to June 26, 2000.
Complainant has been in business since 1996 selling household items and providing services associated therewith. Complainant currently has over 300,000 clients all over Spain. Complainant’s sales in Spain were over 27 million Euro in 2001; over 54 million Euro in 2002; over 64 million Euro in 2003 and over 82 million Euro in 2004. Exhibits 3 to the Complaint. Complainant is very active in financing non-profit organizations such as the Red Cross, United Family Foundation and the Cancer Association and in supporting cultural activities in Spain. Exhibit 4 to the Complaint. Complainant carries on substantial television advertising of its goods throughout Spain. Exhibit 6 to the Complaint. LO MONACO has a substantial recognition factor in Spain as a result of its advertising, sales and promotions. Exhibit 6 to the Complaint, Arena Media Communication Ranking. Complainant is the owner of a number of domain names including <grupolomonaco.com>, created in March 3, 2001; <grupolomonaco.net> created on March 3, 2001; <grupolomonaco.org> created on March 2, 2001 and <lomonaco.net> created on January 21, 2000. Exhibit 7 to the Complaint. Complainant has an active presence on the Internet which provides a main distribution channel for goods and services. The number of hits at Complainant’s website range from 36 thousand to 100 thousand hits per month. Exhibit 14 to the Complaint.
Respondent submits that as a surname the term “Lo Monaco” is neither inherently distinctive nor exclusively associated with Complainant. Complainant admitted that Livio Lo Monaco is the name of the principle shareholder of Complainant.
Respondent submits that many persons and businesses use the surname around the world. In Exhibit B to the Response, Respondent shows that there are ten businesses in the State of New York and two businesses in the State of New Jersey in which the surname LOMONACO appears. Such evidence does not establish that LOMONACO is not inherently distinctive nor capable of distinguishing the goods and services of Complainant. The fact that Complainant “has signed an agreement with Monaco’s Principality” did not prevent Complainant from registering its GRUPO LO MONACO trademarks in Spain.
The Panel finds that the GRUPO LO MONACO trademarks are well recognized throughout Spain in association with the mattresses and associated goods and services sold in Spain by Complainant.
The domain name in dispute contains the words “LO MONACO” found in Complainant’s trademark registrations for or including LO MONACO. The addition of the suffix “.com” is an irrelevant distinction which does not change the likelihood of confusion. Microsoft Corporation v. Amit Mahrotra, WIPO Case No. D2000–0053.
The Panel finds that the domain name <lomonaco.com> is confusingly similar to Complainant’s registered trademarks for or including Grupo Lo Monaco or those registered trademarks including LO MONACO.
B. Rights or Legitimate Interests
The Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) 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 noncommercial 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.”
Paragraph 4(c) of the Policy is not limited to subparagraphs (i), (ii) and (iii) above. Panels in a number of cases found that once a complainant makes a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name, the burden of proof on this issue shifts to the respondent to rebut the showing by providing concrete evidence that it has rights to, or legitimate interests in the domain name (See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 <croatiaairlines.com>; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 <belupo.com>).
Complainant has proven that prior to the forwarding of a cease and desist e-mail to Respondent on April 6, 2005, Exhibit 10 to the Complaint, the homepage associated with Respondent’s domain name <lomonaco.com> included links entitled “Latex”, “Monaco”, “Curriculum”, “Work from Home”, “Spanish” and “Hotels”. The words “Latex”, “Monaco” and “Spanish” also appear in top positions in boxes bearing the titles “Popular Links” and “Sponsored Links”. This homepage for <lomonaco.com> was generated on April 4, 2005. Exhibit 8 to the Complaint. (See also the letter of April 12, 2005 from Complainant to Respondent, part of Exhibit 11 to Complaint). Complainant advised Respondent of the content of the homepage associated with the domain name <lomonaco.com> and further advised that when “Latex” under the heading “Popular Links” was clicked on, a subpage appeared where there were several links including a link to Complainant’s domain name <grupolomonaco.com> as well as a link to the website of a competitor of the Complainant. Exhibits 9 and 11 to the Complaint. The links to Complainant’s and its competitor’s websites were in Spanish. Complainant’s main product is latex mattresses. Complainant’s business is located in Spain.
Respondent, relying on paragraph 4(c)(i) of the Policy, submits that before any notice to it of the dispute, Respondent had made demonstrable preparations to use <lomonaco.com> in connection with a bona fide offering of services. It argues that it provides Internet e-mail services known as “vanity” e-mail services by registering common names and words as Internet domain names and allowing others to use e –mail addresses utilizing those domain names. Exhibit E to the Response. The <lomonaco.com> domain name had originally been registered by Complainant. Prior to December 2003, Respondent became aware that the previous registration of <lomonaco.com> had expired and was due to be released. Respondent submitted an order to attempt to register <lomonaco.com> upon its abandonment because “Lomonaco” is a common surname. Exhibit E to the Response, paragraph 5. The Panel recognizes that expired or abandoned domain names may be acquired by others. The issue is whether the Respondent made demonstrable preparations to use the domain name in dispute in association with a bona fide offering of goods or services.
The evidence filed by the Respondent discloses that “Lomonaco” is the 13,726 ranking surname according to the U.S. Census Bureau. Exhibit H to the Response. Exhibit H does not disclose how many persons bear the surname Lomonaco in the United States. Exhibit B to the Response includes printouts of Business Names or Category for Lomonaco in several states in the United States The results disclose ten entries for New York State, two entries for New Jersey, three entries for California and two entries for Pennsylvania. The Panel attended at <http://white pages.com> on the Internet and found 299 entries of the surname Lomonaco in the white pages for the United States. The surname “Lomanaco” is not a widespread or frequently occurring surname in the United States
Demonstrable Preparation to Use
There is no evidence that demonstrable preparations were made to use the domain name in dispute as a vanity e-mail domain name following its registration on December 12, 2003. Respondent’s evidence is that because of problems with operating vanity e-mail services, Respondent has parked domain names which had not attracted customers at the time of Respondent’s service disruption. Exhibit E, paragraphs 6, 7. Respondent did not provide evidence of the date it discontinued offering vanity e-mail services. The domain name in dispute was parked with DomainSponsor as it was a domain name without customers. Respondent’s evidence is that it has recently entered an agreement with a service provider and Respondent will be transitioning their existing customers to the new service provider. Exhibit E, paragraph 8. Respondent’s evidence is silent as to its future intentions for domain names intended for vanity e-mail which have no customers, such as the domain name in dispute. The Panel finds that there is no evidence that Respondent has made demonstrable preparations to use the domain name in dispute for vanity e-mail or intends to use <lomonaco.com> as a vanity e-mail domain name in the future.
Has the Respondent proven that it is using the domain name in connection with a bona fide offering of goods or services? Is the parking of the domain name in dispute with DomainSponsor a bona fide use of the domain name <lomonaco.com> in relation to services?
Respondent’s evidence establishes that it parked the domain name in dispute with DomainSponsor. The home page associated with <lomonaco.com> prior to the cease and desist letter included a “Latex” link which when clicked upon resolved to a sponsored link including Complainant’s and a competitor of Complainant’s URLs as well as a fetish site. Respondent states that it does not select or control the links or advertisements displayed on parked pages provided by DomainSponsor. Exhibit E to the Response.
Subsequent to receipt of the cease and desist letter and receipt of evidence objecting to the content of the home page at <lomonaco.com>, Respondent, in an attempt to satisfy Complainant, “changed the homepage content for the <lomonaco.com> domain name to a “generic” home page, made up of commonly searched keywords. The fact that Respondent did change the home page associated with <lomonaco.com> discloses Respondent’s ability to change the content of the landing or home page for <lomonaco.com> parked with DomainSponsor.
Subsequent to the change of the landing page at <lomonaco.com>, Complainant generated the generic page on April 15, 2005. On entering “Latex” in the search box on the generic page, a subject page including Sponsored Information was generated which included the URL “www.grupolomonaco.com” belonging to Complainant and the URL “www.lataiendahome.com” belonging to a competitor of Complainant. Exhibit 8 to the Complaint, pages generated April 15, 2005. It is not unlikely that a customer of Complainant looking for Complainant’s latex mattress would enter “Latex” in the search box at the bottom of the generic home page of <lomonaco.com>.
Respondent submits that Complainant purchased advertising from DomainSponsor or its partners to appear among the “sponsored results” on the <lomonaco.com> home page. The Respondent provided no such evidence from DomainSponsor. The <lomonaco.com> home page with direct links to Complainant’s competitor’s homepage, and URLs for fetishes, etc. is operated for click through payments and is not a legitimate use of the domain name in dispute.
Respondent argues that it did not select or control the advertisements or links displayed on the home page of <lomonaco.com>. Respondent did state that it monetized the domain name in dispute.
The President of Respondent is also the President of Telepathy, Inc., which uses identical post office box, Administrative Contact, Technical Contact and Billing Contact as Respondent. The President of Telepathy, Inc. and Respondent are very experienced in Internet business services. As stated in Koninklijke KPN N.V. v. Telepathy Inc., WIPO Case No. D2001-0217 at page 4.
“Respondent offers Internet business services, including online branding services website design, website hosting, and domain registration. As part of its online branding service, it acts as a consultant to businesses seeking an online presence, suggesting appropriate Internet addresses and helping companies avoid naming mistakes.”
DomainSponsor.com is well known in the Internet business and its name and services are referred to in many UDRP decisions. The panel in BWT Brands, Inc. v. Domains By Proxy, Inc., WIPO Case No. D2005-0105 states at page 3 of the decision, under the heading Discussion and Findings with respect to Rights or Legitimate Interests:
“Dealing with the first point the evidence of the use of the domain name is set out as a print out at Annex E to the Complaint. This is a print out of the home page generated by DomainSponsor.com. DomainSponsor.com specializes in greeting (creating) “landing” home pages generated off search engines which provide relevant links based upon the domain name being visited. The landing page will then provide links tied to the domain name which offer the domain owner a “pay per click” source of revenue. The landing page contains a number of cigarette related links none of which are links to an official cigarette website maintained by the Complainant. Thus links onto the website include links entitled “Kool Cigarette”, “Cigarette Coupons” and “Kool”. Clicking on any of these links generates a page of further links. If the Internet user follows any of those further sponsored links the Respondent, Robin Becherrawy, obtains payment.
It was known prior to registration of the domain in dispute that DomainSponsor.com home pages were used to divert traffic from the domain name in dispute. Deloitte Touche Tohmatsu v Henry Chan, WIPO Case No. D2003-0584:
“The Panel considers that the Respondent has no rights or legitimate interests in respect of the domain name. It appears that the only use made of the disputed domain name has been to direct Internet users to “domainsponsor.com’s website at “www.dp.information.com”. The use of Deloitte Consulting on a page linked to that website does not constitute a bona fide offering of goods or services giving rise to any right or legitimate interest.”
The Panel infers from the evidence that Respondent is a very experienced Internet company and knew that DomainSponsor would create a home page generated from search engines which provide relevant links based upon the domain name being visited. The Respondent intended to obtain a share of the click through fees, said in some UDRP decisions to be 50% of the click through fee.
Respondent also submitted that it had no control over the home page: This is not so as Respondent had the home page amended.
Respondent has not established any rights or legitimate interests under paragraph 4(c)(i) of the Policy.
Respondent has not contested Complainant’s statements that Respondent is not commonly known by the domain name in dispute. Respondent was not known by the domain name in dispute. Respondent has not acquired any trademark rights in LOMONACO and Respondent is not licensed by Complainant to use Complainant’s trademarks.
Respondent has not submitted any proof under paragraph 4(c)(iii) of the Policy.
The Panel finds that Respondent has not proven any rights or legitimate interests in the domain name in dispute under paragraph 4(c) of the Policy.
Respondent relies on the decision in Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO Case No. D2005-0241. In that case the respondent used the domain name <elephant.com> in relation to the provision of information about elephants, coupled with advertising unrelated to the complainant’s business to generate revenue. In this case there is no evidence of any use of the domain name <lomonaco.com> in association with a home page to generate revenue before the home page bearing the links “Latex”, “Monaco” and “Spanish”.
In Admiral Insurance, the panel found that the generic character of the mark and the Canadian base of the respondent afforded no ground for finding that the respondent was aware of the complainant’s mark. In Admiral Insurance the first use of <elephant.com> was in relation to elephants. In this case, Respondent has not proven that “Lomonaco” is a common surname or generic name. Further, Respondent has not established use of <lomonaco.com> in a generic manner.
In Admiral Insurance, a home page including an advertisement of insurance services in the United Kingdom, the home country of the respondent, was generated after the respondent became aware of the complainant’s mark. In this case, immediately prior to the cease and desist letter, the <lomonaco.com> home page bore links entitled “Latex” and “Spanish”. A click on the link “Latex” resolved to subpages including descriptions of Complainant’s and its competitor’s goods in Spanish together with their URL’s. Respondent states that it was not aware of Complainant or its trademarks at the date of the cease and desist letter, as DomainSponsor had generated the <lomonaco.com> home page. This is a different fact situation than that occurring in the Admiral Insurance case.
In the Admiral Insurance case, the respondent entered into a contract with the service provider under which the service provider made the advertisements and the respondent agreed that it did not have authority to control the advertisements. In this case, the Respondent did have authority to change the home page and did change the home page. In the Admiral Insurance case, the respondent proved that the advertisements prepared by the service provider changed from country to country, there was no proof that the service provider in this case contracted to do the same.
The Respondent also relies on the decision in Experimental Aircraft Association (EAA) v. EAA.COM, National Arbitration Forum, Case No. FA 0310000206309. In that case, the panel decided that the complainant had not satisfied its burden under paragraph 4(a)(ii) of the Policy on the grounds that a random selection of three letters <eaa.com> is insufficient to create legitimate rights.
The Panel finds that on a balance of probabilities Complainant has proven that Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used In Bad Faith
Complainant must prove under paragraph 4(a)(iii) of the Policy that: “your domain name has been registered and is being used in bad faith”.
Paragraph 4(b) of the Policy provides:
“Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii) the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name 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 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 Panel finds that Respondent, through its associate, is working in a co-ordinated fashion to use the confusingly similar domain name <lomonaco.com> to intentionally attempt to attract for commercial gain, Internet users to the <lomonaco.com> website, by creating a likelihood of confusion with Complainant’s marks for or incorporating LO MONACO by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website in dispute. (Paragraph 4(b)(iv) of the Policy.)
Respondent’s webpage incorporated active links such as “Latex”, “Spanish”, which were linked to webpages including Complainant’s, as well as Complainant’s competitors’ websites. Respondent had control of the website, as evidenced by the changes that occurred on Respondent’s request. The Panel has already found that Respondent did not prove that the domain name was used as a vanity name or that the name “lomonaco” was a common surname in the United States. Respondent’s statement that it was not aware of Complainant or its trademark prior to hearing from Complainant lacks credibility, as Respondent and Respondent’s associate were utilizing the confusingly similar domain name for profit before the Complainant e-mailed Respondent.
With respect to the intention of Respondent, the Panel agrees that intention should be determined by an objective test. As stated in Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453: “The proper test in this Panel’s view, is whether the objective consequences or effect of the Respondent’s conduct is a free-ride on the Complainant’s goodwill, whether or not that was the primary (subjective) intent of the Respondent.”
Paragraph 4(b)(iv) states that “using” the domain name to divert Internet users (relating back to 4(b)) “shall be evidence of the Registration and use of the domain name in bad faith.” See Park Place Entertainment Corporation v. Anything.com Ltd., WIPO Case No. D2002-0530. As stated in the Park Place decision: “The fact that a third party is effectively operating the website on behalf of Respondent, and making payments to the Respondent on the basis of that use, does not insulate Respondent from the conduct of its authorized agent.”
The “using” of the domain name to divert users is sufficient evidence of the registration and use of the domain name in bad faith and the evidence provided by Respondent is insufficient to rebut this evidence.
The Panel therefore finds that Complainant has proven that the domain name has been registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <lomonaco.com> be transferred to Complainant.
Richard W. Page
Date: December 2, 2005