WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Certamen Miss España, S.L. v. P1ESOFT.COM
Case No. D2006-0679
1. The Parties
The Complainant is Certamen Miss España, S.L., Madrid, Spain, represented by Herrero & Asociados, Spain.
The Respondent is P1ESOFT.COM, Miami, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <missespana.com> is registered with OnlineNic, Inc.
3. Procedural History
The Complaint was filed in Spanish with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2006. On June 2, 2006, the Center transmitted by email to OnlineNic Inc. a request for registrar verification in connection with the domain name at issue. On June 7, 2006, OnlineNic, Inc. transmitted by email to the Center its verification response confirming that the Respondent P1ESOFT.COM is listed as the registrant, and furnished other contact details.
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 June 7, 2006.
The Center appointed Roberto Bianchi as the sole panelist in this matter on July 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.
On July 17, 2006, considering inter alia that the language of the registration agreement is English, the Panel issued Procedural Order No. 1, ordering the Complainant to submit a translation of the complaint into English, and provided for re-notification of the translated complaint to the Respondent. In accordance with the Rules, paragraph 5(a), the Order granted the Respondent a period of 20 days for filing a Response.
On August 7, 2006, the Complainant requested a time extension for filing the translated Complaint, since the external translations firm preparing the translation had not finished with its task, and because it proved difficult to find a translator during the European summer holiday. On August 7, 2006, the Panel issued Procedural Order No. 2, deciding to reset the deadline for Complainant to comply with Procedural Order No. 1 to August 14, 2006.
On August 10, 2006, the Center acknowledged receipt of the translated Complaint and, after verifying that it 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”), proceeded with its re-notification to the Respondent. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2006.
4. Factual Background
The Panel considers the followings facts and circumstances to be true, because they were contended and/or evidenced by the Complainant, without having been contested by Respondent:
- Complainant Certamen Miss España, S.L. is a Spanish limited liability company devoted to the organization of national and international beauty contents, and also a model agency.
- As evidenced with printouts of data downloaded from the Spanish Trademark and Patent Office database available at “www1.oepm.es”, the Complainant owns the following trademark and service mark registrations:
- No. 816.331 MISS ESPAÑA, class 41, registration date: March, 2, 1979; covering contests services;
- No. 1.759.791 MISS ESPAÑA, class 3; registration date: February 5, 1996, covering cleaning products, soaps; cosmetic products, etc.;
- No. 1.759.792 MISS ESPAÑA, class 25; registration date: February 5, 1996, covering clothes, shoes, hats;
- No. 1.790.956 MISS ESPAÑA, class 28; registration date: May 20, 1994, covering games, toys, articles for gymnastics and sport, decorative articles for Christmas trees, etc.;
- No. 2.034.621 MISS ESPAÑA, class 41; registration date: March 20, 1997, covering education and entertainment services, and specially contests services;
- No. 2.540.409 MISS ESPAÑA, class 38; registration date: October 15, 2003, covering radio and TV broadcasting services, news agencies, telecommunication services through computers or worldwide computer networks, etc.
- On January 25, 2001, the Respondent registered the disputed domain name.
- On March 13, 2006 Complainant sent to the Respondent an email requiring it to transfer the disputed domain name to Complainant, to refrain from any use of the disputed domain name, and to expressly state in writing that it shall abstain from using any distinctive sign of Complainant. On April 11, 2006, Complainant sent the Respondent an email attaching a copy of the first email. The Respondent did not reply to any of these communications.
- There is no record of any active use of the domain name.
5. Parties’ Contentions
The Complainant contends the following:
- The Complainant Certamen Miss España is the owner of the MISS ESPAÑA registered marks. These marks, identical to the domain name in conflict, grant the Complainant an exclusive right to use them on the market and prevent third parties from using them without its consent.
- The Respondent has no rights or legitimate interests in respect of the domain name. Respondent has not received any authorization to use the MISS ESPAÑA marks or to register the disputed domain name. There is only one Miss España beauty contest and only one company entitled to use said name. Any other use carried out without the consent of its owner, is not legitimate. There is no record either of any non-commercial use of the afore-cited name, or of another cause that might reasonably justify the ownership of the domain name.
- The domain name <missespana.com> has been registered and is being used in bad faith. The passive possession of the domain name prevents the legitimate owner of the mark from accessing it and from using it to offer the services associated to the above-cited name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to obtain the requested remedy a complainant must prove that each element of Policy paragraph 4(a) is present, i.e.:
(i) That the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) That the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name was registered and is being used by the respondent in bad faith.
A. Identical or Confusingly Similar
As seen at section 4 above, Complainant has rights in the MISS ESPAÑA trademark and service mark, whose application and registration dates predate the registration of the disputed domain name.
Because the letter “ñ” in the word “España”, for technical reasons, could not be reproduced in the disputed domain name at the time of registration, the <missespana.com> domain name is not identical, but confusingly similar to the MISS ESPAÑA mark. See Excelentísimo Ayuntamiento de La Coruña vs. Vicente Mota Jiménez, WIPO Case No. D2004-0006 (enough similarity found between the <aytolacoruna.com> domain name and the “La Coruña” marks of the complainant, given inter alia the impossibility to register typographical characters such as “ñ”, which is replaced by “n”).
Thus, the Panel finds that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent has not received any authorization to use the marks MISS ESPAÑA or to register the <missespana.com> domain name, that there is only one Miss España beauty contest and only one company entitled to use said name, and that any other use carried out without the consent of its owner, is not legitimate. Further, the Complainant states that there is no record of any non-commercial use of the disputed domain name, or of another cause that might reasonably justify Respondent’s ownership of the domain name.
Taken together, these contentions of the Complainant amount to a prima facie case that Respondent lacks rights or legitimate interests in the domain name. For its part Respondent failed to submit any allegation or evidence whatsoever. It is a consensus view that a complainant is required to make out an initial prima facie case that a respondent lacks rights or legitimate interests, and that once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”.
Considering that Respondent is not actively making any use of the disputed domain name –see sub-section C below– and absent from the record any allegation or evidence in Respondent’s favor, the Panel cannot but conclude that the Respondent lacks rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
It is a consensus view of WIPO UDRP panels that a panel may visit the Internet site linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name. A panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision. See “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”. Accordingly, on September 8, 2006, the Panel used its Internet Explorer browser in an attempt to visit the website at the disputed domain name <missespana.com>, with an automated “Cannot find server or DNS error” message as only result.
There being no active use of the domain name in a website or otherwise, the Panel believes that Respondent’s inaction is a passive use in bad faith of the kind described in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, because bad faith registration and use can be inferred from a number of circumstances:
a) Given that the “Miss España” and “Mr. España” contests are well known in Spain, the Respondent more likely than not was aware of the MISS ESPAÑA marks, and of Complainant’s activities as an organizer of beauty contests at the time of registering the disputed domain name.
b) Since Respondent registered the domain name in 2001, there was sufficient time for the Respondent to develop a website under the disputed domain name as an evidence of a legitimate, or bona fide, or non-commercial purpose. However, there is no evidence of any such development.
c) Respondent received two cease and desist letters from Complainant, and did not reply to them. Although generally considered Respondent’s silence does not necessarily equal to bad faith, in the circumstances of the present case it certainly does not allow to infer the contrary.
d) Although the Respondent was notified of the complaint both in Spanish and in English, it has not presented any response or made any other submission in these proceedings, and is in default.
Accordingly, the Panel finds that the disputed domain name was registered and is being used 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 <missespana.com> be transferred to the Complainant.
Roberto A. Bianchi
Dated: September 12, 2006