WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cancun Marcas, S.A. de C.V. v. Simone Martelli
Case No. D2006-0174
1. The Parties
The Complainant is Cancun Marcas, S.A. de C.V., Cancún, Quintana Roo, Mexico, represented by Bufete Soní, S.C., Mexico.
The Respondent is Simone Martelli, Prato, Italy.
2. The Domain Name and Registrar
The disputed domain name <dadyo.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2006. On February 9, 2006, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain name at issue. On February 9, 2006, Tucows Inc. 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 February 15, 2006. 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 February 16, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2006. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on March 9, 2006.
The Center appointed Miguel B. O’Farrell as the Sole Panelist in this matter on March 14, 2006. 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
The Complainant is the owner of the trademark DADY’O applied for in Mexico in 1986 and registered under Nos. 394.371, 394.817, 580.362, and 710.834.
The domain name <dadyo.com> was registered in 1999.
5. Parties’ Contentions
Complainant alleges that:
Complainant is an international entertainment company incorporated in Mexico since 1993 and is the owner of one of the largest discotheques and restaurants in Mexico, located in Cancun. The name of the discotheque/restaurant is Dady’O and it offers entertainment services, night club services and special events services for companies and national and international tourists. The Complainant is the owner of the trademark DADY’O applied for in Mexico in the year 1986 and registered under Nos. 394.371, 394.817, 580.362, 710.834.
Since 1989, Complainant has been continuously and extensively using the DADY´O trademark in national commerce and has made important investments in advertising and promoting the trademark worldwide. The trademark has become famous and has generated significant goodwill.
The DADY´O trademark is used in conjunction with certain restaurants, discotheques, boutiques and special events-related services, night clubs entertainment, and various similar services involving music entertainment.
Respondent’s domain name <dadyo.com> is confusingly similar to Complainant’s trademark registration for DADY´O.
The Respondent has no rights or legitimate interests in respect to the domain name.
The domain name was registered and is being used in bad faith. By capitalizing on a simple misspelling of the Complainant’s DADY´O mark Respondent’s behavior typifies the practice known as “typosquatting”. In addition, the inactive use of the <dadyo.com> domain name for more than 6 years represents bad faith standing alone and is clear evidence that the Respondent is just trying to obstruct the use of the owners of its intellectual property rights.
Because of the use and distinctive nature of the Complainant’s marks and the international presence and use of the DADY´O mark, the Respondent should have noticed the existence of the Complainant’s preexisting rights in the mark, and it can be inferred that the Respondent had knowledge of the Complainant’s rights in the mark when it registered the disputed domain name.
The registrant of the domain name was changed from Centerweb SRL to Mr. Martelli when the Complaint was filed, which would confirm that the Respondent acted in bad faith.
Finally, the Complainant requests that the domain name <dadyo.com> be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To qualify for cancellation or transfer, the Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In accordance with 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.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the complaint and (b) if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In accordance with the above, in previous URPD cases in which the responding party failed to file its response, the panels decisions were based upon the complainants assertions, evidence and inferences drawn from the respondents failures to reply (The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064) since respondent’s failure to dispute the allegations of the complainant permits the inferences that the complainant’s allegations are true. (Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936).
Notwithstanding the above, the Panel must not decide in the Complainant’s favor solely given the Respondent’s default. (Cortefiel S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the Complainant has introduced elements of proof which allow the Panel to presume that its allegations are true.
A. Identical or Confusingly Similar
The Complainant is the owner of the trademark DADY’O registered in Mexico in 1986.
The domain name in dispute is <dadyo.com>.
It is evident that the Complainant’s trademark “DADY’O” is confusingly similar to the domain name <dadyo.com>.
Therefore, the Panel finds that the Complainant has proved the first element required in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel understands that proving “a negative proposition can be particularly difficult” and agrees “that the burden on a Complainant regarding the second element is necessarily light, because the nature of the registrant’s rights or interests, if any, in the domain names lies most directly within the registrant’s knowledge” and that “once the Complainant makes a prima facie showing that the registrant does not have rights or legitimate interest in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name” (The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064).
The Complainant argued that Respondent has no trademark rights in Dadyo, that Respondent is neither a licensee of the Complainant nor an authorized person to use Complaint’s marks, that Respondent is not commonly known by Dadyo and that there is no evidence of Respondent’s use or preparations for use the domain name.
Respondent failed to file a reply and therefore it did not bring to these proceedings any element to show that it has rights or legitimate interests in the domain name.
In view of the above and in accordance with the paragraphs 15(a), 14(a) and (b) and 10(d) of the Rules transcribed above the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Consequently, the Panel finds that the Complainant has proved the second element required in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant alleges that Respondent knew the Complainant’s trademark when registering the domain name as an act of opportunistic bad faith. It also alleges that the fact that the domain name has been inactive since its registration in 1999 shows Respondent’s bad faith.
It also alleges that the registrant of the domain name was changed from Centerweb SRL to Mr. Martelli when the Complaint was filed, which would confirm that Respondent acted in bad faith.
In this connection, from the Whois printings filed with the Complaint the Panel notes that Mr. Martelli was listed as the “registration service provider” when the domain name was registered in the name of Centerweb SRL. Therefore, it is evident that there is a connection between them. However, in this case the mere change of registrants does not necessarily prove that they acted in bad faith nor does it help to show that they acted in good faith.
Regarding the alleged opportunistic registration, the Panel notes that the Complainant has provided entertainment services under the trademark DADY’O for national and international tourists since 1989. The Complainant’s discotheques, bars and restaurants are located in Cancun, which is a worldwide-known tourist destination in Mexico that constantly receives people from all parts of the world, including Italy where the Respondent is domiciled.
Therefore, it is possible that when the domain name was registered Centerweb SRL as well as Mr. Martelli knew of the prior existence of the Complainant’s trademark.
Had the Complainant’s trademark been a fairly descriptive word it could have helped to explain its adoption in connection with a related activity or business, but that is not the case.
Moreover, the Complainant’s trademark is a fanciful word, the adoption of which in the domain name was probably not made by mere chance but purposefully and with full knowledge of the Complainant’s trademark and business.
Finally, it is important to stress that Respondent failed to file a reply and therefore did not give any reason to explain why Dadyo was chosen for the domain name, nor did he show any legitimate interest or right in the adopted domain name.
In view of the above-given reasons the Panel finds that the domain name was registered in bad faith and that its passive holding constitutes sufficient evidence of bad faith use.
Consequently, the Panel finds that the Complainant has proved the third element required in paragraph 4(a) of the Policy.
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 <dadyo.com> be transferred to the Complainant.
Miguel B. O’Farrell
Dated: March 28, 2006