WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

EURO 6000 S.A. v. Esallk LLC

Case No. D2006-1511

 

1. The Parties

The Complainant is EURO 6000 S.A., of Madrid, Spain.

The Respondent is Esallk LLC, of Glendale, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <privilegioseuro600.com> is registered with GoDaddy.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2006. On November 29, 2006, the Center transmitted by email to GoDaddy.com Inc. a request for registrar verification in connection with the domain name at issue. On November 30, 2006, GoDaddy.com 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. 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 Respondent of the Complaint, and the proceedings commenced on December 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 3, 2007.

The Center appointed Roberto Bianchi as the sole panelist in this matter on January 9, 2007. 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, incorporated in 2000, is one of the leading Spanish companies in payment systems through its ATM network. Complainant markets the MasterCard and the Visa cards. Complainant has over 13.5 million customers.

Complainant owns the following Community trademark registrations with the OHIM - Office for Harmonization in the Internal Market:

6 EURO 6000 (figurative), No. 001431287, filing date April 14, 2000, registration date July 27, 2001;

EURO 6000 (figurative), No. 000151738, filing date August 7, 1996, registration date January 18, 2000;

EURO 6000 (word mark), No. 000151704, filing date August 6, 1996, registration date April 24, 2002.

These marks cover the following products and services: Automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines; data processing equipment and computers (class 9); printed matter, pamphlets, cards, catalogues, printed publications, magazines and computer programmes (not recorded) (class 16); advertising, business management, business administration, office functions (class 35); insurance and financial services (class 36); services relating to the communication and transmission of data by computer (class 38); legal services; scientific and industrial research; and computer programming (class 42).

Complainant also owns the <euro6000.es> domain name, registered on December 28, 1998, and the <privilegioseuro6000.com> domain name, registered on June 27, 2005. Both domain names resolve to active websites.

Respondent registered the disputed domain name on May 26, 2006.

 

5. Parties’ Contentions

A. Complainant

In summary, Complainant contends the following:

- The domain name at issue is identical or confusingly similar to a trademark and service mark in which the Complainant has rights. The Spanish word “privilegios” has no distinguishing character. It clearly indicates a connection with a mark renowned in the Spanish market.

- Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is subject of the complaint. Respondent has not been commonly known by the domain name, and has not acquired trademark or service mark rights that are incorporated in the disputed domain name.

- As the disputed domain name is an obvious misspelling of Complainant’s trademarks, there cannot be another reason for Respondent’s behavior than misleading Internet users into believing that they have accessed Complainant’s website. Respondent appears to be intentionally free riding on the fame of Complainant’s trademarks. Respondent, at Complainant’s expense, registered and used the disputed domain name in order to attract Internet users with Complainant’s marks for its own commercial benefit, and thus acted in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

In order to prevail, Complainant must prove that:

(i) The domain name is identical or confusingly similar to Complainant’s mark; and

(ii) Respondent has no rights or legitimate interests in respect of the <privilegioseuro600.com> domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has evidenced that it has rights in the EURO 600 mark. See 4 above. The domain name consists of the Spanish word “privilegios” (“privileges” or “advantages” in English), a generic or descriptive term, in addition to the mark. Neither the addition of an ordinary descriptive word (either as prefix or suffix) nor the generic top-level domain name “.com” can detract from the overall impression of the dominant part of the domain name, namely Complainant’s trademark. See Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409. See also Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102 the noun “girls” does not to distinguish the <nokiagirls.com> domain name from the NOKIA mark). When comparing “privilegioseuro600” with “EURO 6000”, the addition of a generic term (“privilegios”) and what amounts to a minor typographical “error” (deletion of the character “0”) is not sufficient to differentiate the disputed domain name from Complainant’s mark.

The Panel concludes that the domain name is confusingly similar to Complainant’s mark.

B. Rights or Legitimate Interests

Complainant’s not rebutted contentions that Respondent has not been commonly known by the domain name, and has not acquired trademark or service mark rights, are sufficient to establish a prima facie case that Respondent lacks rights or legitimate interests in the domain name. Thus, Respondent carries the burden of demonstrating any rights or legitimate interests. See “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” at “http://www.wipo.int/amc/en/domains/search/overview/index.html”.

Respondent failed to do so, since it has not replied to the Complaint, or made any other submission in this proceeding to dispute Complainant’s contentions. Furthermore, the Panel could not find any web page or other content at the URL under the disputed domain name (“http://www.privilegioseuro600.com”) that would indicate a bona fide offering of goods and services or any other legitimate use per paragraph 4(c) of the Policy. Accordingly, the Panel finds that Complainant succeeded in proving that Respondent has no rights to or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Complainant’s mark EURO 6000 predates the registration of the domain name at issue. Further, with thousands of ATMs in service using this mark, Complainant’s network is well known in Spain. Also, the domain name at issue is almost identical to Complainant’s domain name <privilegioseuro6000.com>, registered on June 27, 2005, which resolves to the active website “www.privilegioseuro6000.com”. This indicates that Respondent was aware of Complainant’s mark when it decided to register the disputed domain name.

Complainant contends that the content of Respondent’s website is similar to Complainant’s website, although it failed to provide any printout of Respondent’s website with the Complaint. The Panel’s search did not disclose any web page or other content at the website linked to the domain name at issue. It is feasible that Respondent has deleted all contents in that website in order to avoid an adverse finding in these proceedings. In failing to file a Response, Respondent has not denied Complainant’s contentions as to the former content of Respondent’s website.

Considering the allegations in the Complaint, and in absence of any element favorable to Respondent, the Panel believes that by using the domain name, and imitating Complainant’s website, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of products or services on its website. This is a circumstance indicating bad faith registration and use pursuant to Policy, paragraph 4(b)(iv).

The slight difference between “euro600” and “EURO 6000” constitutes typosquatting, and also indicates bad faith. See Longs Drug Stores California, Inc. v. Shep Dog, WIPO Case No. D2004-1069 (Respondent is not free to tread upon the goodwill built up by Complainant in order to steer traffic to a competing site based on intent to take advantage of Internet user confusion from typographical errors involving Complainant’s trademark).

In addition, the Panel also makes a finding in bad faith based on Respondent’s current passive holding of the domain name at issue and in the absence of any evidence of demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Previous panels have found that passive holding amounts to bad faith where the complainant’s trademark is widely known, the respondent has provided no evidence of any actual or contemplated good faith use of the domain name, and the respondent did not respond to complainant’s contentions. See e.g., Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. China Vogue.com, WIPO Case No. D2005-0615.

The Panel finds that disputed domain name was registered and used in bad faith.

 

7. Decision

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 <privilegioseuro600.com> be transferred to the Complainant.


Roberto Bianchi
Sole Panelist

Dated: January 23, 2007