WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Orona, S. Coop. v. Kevin Mansfield
Case No. D2007-1076
1. The Parties
The Complainant is Orona, S. Coop. of Guipúzcoa, Spain, represented by Herrero & Asociados, Spain.
The Respondent is Kevin Mansfield, of Harrogate, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <oronagroup.com> is registered with Tucows, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2007. On July 24, 2007, the Center transmitted by email to Tucows, Inc. a request for registrar verification in connection with the domain name at issue. On July 24, 2007, 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. 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 31, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 20, 2007. Upon request by the Respondent and given the absence of any comments by the Complainant, this time limit was extended by the Center until August 27, 2007. The Response was filed with the Center on August 24, 2007.
The Center appointed Brigitte Joppich as the sole panelist in this matter on September 7, 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is a well-known Spanish cooperative with 3,000 employees, active in the business of producing, distributing and servicing elevators. It was established in 1964 and is today present in more than 50 Spanish regions, having contributed to the construction of many important vanguard Spanish buildings. Through its distributors, the Complainant is also present in more than 85 countries worldwide, inter alia Australia, China, France, Germany, Greece, India, Israel, Italy, New Zeeland, Russia, Saudi Arabia, South Africa, the United Arab Emirates and the United Kingdom of Great Britain and Northern Ireland, where the Respondent is domiciled. The Complainant provides its services (including commercial consultancy, project engineering, partner’s training and after-sales services) in each of these countries.
The Complainant owns numerous ORONA trademarks worldwide (collectively the “ORONA Marks”), including:
- Community trademark No. 2922276 ORONA in classes 6, 7, 9, 37 and 42;
- Community trademark No. 2924686 ORONA, in classes 7, 9 and 37;
- UK trademark No. 1.241.354 ORONA, in class 7;
- Spanish trademark No. 696.467 (2) ORONA, in class 7;
- Spanish trademark No. 696.469 (9) ORONA, in class 37;
- Spanish trademark No. 875.492 (6) ORONA, in class 9;
- Spanish trademark No. 2.461.535 (8) ORONA, in class 35;
- Spanish trademark No. 2.461.536 (6) ORONA, in class 38; and
- Spanish trademark No. 2.509.858 (6) ORONA, in classes 6, 7, 9, 11, 16, 19, 20, 36, 37, 40 and 42.
Furthermore, the Complainant is registered owner of many domain names, inter alia <oronagroup.es>, <oronagroup.net>, <oronagroup.org>, <oronagroup.fr>, <orona.es>, <orona.org>, <orona.info>, <orona.com.cn>, <orona.eu> and <orona.mobi>.
The disputed domain name was registered on October 20, 2006. The Complainant provided evidence that the domain name was used in connection with a website offering domain name registrations and commercial information links in Spanish about websites design, security copies, data protection, solar energy companies, database programs, information technology, etc.
In his response, the Respondent supplied screenshots of the website currently available under the disputed domain name, revealing a “Gary Orona Tribute Site”. The Center, in accordance with paragraphs 2(a)(ii)(c) and 9 of the Rules, also provided the Panel with screenshots of the Respondent’s website, dated July 31, 2007 and showing the “Gary Orona Tribute Site”.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case:
(1) The domain name <oronagroup.com> is confusingly similar to the well-known ORONA Marks as it consists of a combination of the trademark ORONA and the generic term “group” which does not modify the distinctiveness of the trademark ORONA.
(2) The Respondent has no legitimate right to use the name “Orona Group” as the Complainant has not licensed or otherwise authorized the Respondent to use its trademark or to apply for any domain name incorporating the trademark. Furthermore, the Complainant contends that there is no evidence that the Respondent is making a legitimate non-commercial or fair use of the domain name as the domain name is used in connection with domain name registration services and commercial information links in Spanish. Moreover, such use is not a bona fide offering of goods or services. The Complainant further contends that the Respondent is not commonly known under the domain name.
(3) The Complainant finally contends that the domain name was registered and is being used in bad faith.
With regard to bad faith registration, the Complainant contends that the Respondent knew or must have known the well-known ORONA Marks at the time he registered the disputed domain name. Given that the domain name owner and the Registration Service Provider are both British, it cannot be a mere coincidence to find links at the bottom of the website in Spanish, the official language in the country where the Complainant was established and is located.
With regard to bad faith use, the Complainant contends that the Respondent prevented it from using its trademark to provide its services on an international scale, “.com” being Internet users’ first choice TLD. By providing links of third parties in Spanish language, the domain name is supposed to be used by the Respondent with the aim of attracting a “misled” public to its website in search of information about the Complainant for financial gain. Finally, the Complainant contends that it tried to contact the Respondent in vain on many occasions (it sent a cease and desist letter by fax and email on February 19, 2007, March 7, 2007, March 15, 2007, and March 29, 2007, without ever receiving any response), which is argued to be another indication of bad faith.
The Respondent contends that none of the three elements specified in paragraph 4(a) of the Policy are satisfied by Complainant in the present case:
(1) The domain name <oronagroup.com> is neither identical nor confusingly similar to any of the Complainant’s trademarks as no ORONA GROUP trademarks or service marks are registered in the name of the Complainant and no similar marks are registered by a company known as ORONA GROUP. The Respondent further contends that the Complainant at all times refers to itself as ORONA, S. COOP, while no reference is made to any company being known as ORONA GROUP. Finally, the Respondent contends that the Complainant cannot derive any rights from its “oronagroup” domain names either as they were all registered after registration of the disputed domain name.
(2) The Respondent further contends that the domain name has been registered for a legitimate purpose, namely for a non-commercial fan site operated by a private group of fans of Gary Orona and that such use could not be considered to be in bad faith or with the sole aim of attracting a “misled” public to the website in search of information about the Complainant. The Respondent claims that the website and domain name usage are legitimate and non-commercial, without intent for commercial gain and do not misleadingly divert consumers or tarnish the trademarks or service marks at issue.
The Respondent denies failure to respond to the Complainant’s cease-and-desist letters, and states that he did not receive these letters, in particular not by fax as the Respondent claims not have a fax machine as no fax numbers are listed in the domain name registration.
The Respondent asks for a finding of reverse domain name hijacking.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s highly distinctive ORONA Marks in which the Complainant has exclusive rights.
The mere addition of the generic word “group” following the trademark does not eliminate the similarity between the Complainant’s marks and the domain name, as “group” is a common term which is often used as an annex to a company name in order to designate a corporate group. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Dr. Grandel GmbH v. Drg Randel Inc, WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253).
It is also well established that a top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.,
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the service marks at issue.
The Respondent claims a legitimate non-commercial use of the domain name based on its hosting a fan website for a certain Gary Orona under paragraph 4 (c)(iii) of the Policy. The content of the website available at the disputed domain name was, as far as the Panel is aware, changed by the Respondent after the Complainant prepared its Complaint and before the Center (per paragraphs 2(a)(ii)(c) and 9 of the Rules) took screenshots of the website on July 31, 2007. Unfortunately, the Complainant did not provide the date on which the screenshots attached to the Complaint were taken, and the Respondent did not supply any information as to the first date of use of the domain name as an alleged fan site. In search of further information in this regard, the Panel visited the Respondent’s current site available at the disputed domain name. Apart from one message dated August 3, 2007, the Panel found both the “Fan Forum” and the “Contact Form” to be inactive. The “Contact Form” did not seem to work. Furthermore, the Panel discovered that all content available at the website under the disputed domain name merely seems to have been copied from other Internet sources, without any original contributions by Gary Orona fans:
1. The biography of Gary Orona is an identical copy of the “Mini Biography” available at http://www.imdb.com/name/nm0650381/bio.
2. The text in the “Review Summary” section is also simply from other Internet sources:
- Stripshow (1996):http://www.amazon.ca/Stripshow-Gary-Dean-Orona/dp/630532672X
- Crime and Passion (1999):http://movies.nytimes.com/movie/230342/Crime-and-Passion/overview
- The Bikini Car Wash Company (1990):http://www.blockbuster.com/catalog/movieDetails/3270
- The Great Bikini Off-Road Adventure (1994):http://movies.nytimes.com/movie/131453/The-Great-Bikini-Off-Road-Adventure/overview
The Panel, in light of the circumstances in this case, therefore considers the current content of the website at the domain name as a mere pretense, creating the impression of a legitimate non-commercial use of the domain name. The Panel does not consider these activities of the Respondent as a legitimate non-commercial or fair use of the domain name under paragraph 4(c)(iii) of the Policy, even if the present content of website had already been available when the Respondent first learnt about this dispute.
As to the earlier use of the domain name by the Respondent reflected in the evidence submitted by the Complainant to the Panel, this is neither a bona fide offering of goods or services in connection with the domain name, nor does the Respondent appear to be commonly known by the domain name, nor does he make a legitimate non-commercial or fair use of the domain name by such use.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.,
(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive. However, the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.
The Complainant is well-known internationally and has been doing business in many countries worldwide since 1964, in particular in the United Kingdom of Great Britain and Northern Ireland, where the Respondent is domiciled. Given also the high distinctiveness of the ORONA Marks and the fact that the English Respondent provided commercial links on its website in Spanish, the official language in the country where the Complainant is located, the Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant’s ORONA Marks and therefore in bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant stated that the domain name is used with the aim of attracting a “misled” public to the website in the search of information on the Complainant for financial gain. In his response, the Respondent did not deny these allegations. By fully incorporating the ORONA Marks into the domain name and by using the website under such domain name as a website providing advertising links to third parties, the Respondent is in the opinion of the Panel in all likelihood trying to divert traffic intended to locate the Complainant to Respondent’s website for the purpose of earning click-through-revenues from Internet users searching for Complainant. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (cf. L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, with further references).
Therefore, the Respondent has also been using the disputed domain name in bad faith and thus the requirements of paragraph 4(a)(iii) of the Policy are satisfied as well.
7. Reverse Domain Name Hijacking
The Respondent requests a finding of reverse domain name hijacking. This is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Moreover, paragraph 15(e) of the Rules provides as follows:
If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
In the present case, where the Complainant owns several registered marks identical to the second level domain name and clearly predating the Respondent’s domain name registration, there is no room for a reverse domain name hijacking order.
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 <oronagroup.com> be transferred to the Complainant.
Dated: September 27, 2007