WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Barcel Corporacin Empresarial, S.A. v. Hello Domain

Case No. D2007-1380

 

1. The Parties

The Complainant is Barcel Corporacin Empresarial, S.A., of Palma de Mallorca, Baleares, Spain, represented by Herrero & Asociados, S.L., Spain.

The Respondent is Hello Domain, of New York, United States of America, represented by its administrative contact, Mr. Jaime (Jim) Coll.

 

2. The Domain Name and Registrar

The disputed domain name <barcel.com> (xn--barcel-gxa.com) is registered with Melbourne IT Ltd., trading as Internet Names Worldwide.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2007. On September 21, 2007, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the domain name at issue. On September 21, 2007, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 26, 2007. 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 by email, and the proceedings commenced on October 1, 2007. Delivery to the Respondent of a hard copy of the Complaint by courier was refused. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2007. An informal Response was filed with the Center on October 21, 2007.

The Center appointed Alan L. Limbury as the sole panelist in this matter on October 30, 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.

The language of the proceeding is English, the language of the registration agreement.

 

4. Factual Background

The Complainant is a member of the Barcel Group which started as a small transport company in Majorca, Spain, in 1931 and which is now one of the largest hotel groups in the world, with more than 39,000 rooms in 19 countries, including the United States of America. The first Barcel hotel, the Barcel Pueblo Palma, opened in Majorca in 1962.

The Complainant is the proprietor in many countries of registered trademarks comprising the word BARCEL either alone or with descriptive words, such as BARCEL HOTELS, BARCEL HOTELS & RESORTS and BARCEL HOTELS USA. The trademark BARCEL has been found by other panels to be distinctive of the Complainant and well-known in the hotel and tourism business: see Quiroocan, S.A. de C.V. v. ZJ, WIPO Case No. D2005-1310; Barcel Corporacin Empresarial, S.A. v. KPYR/Svetlana Zubovich, WIPO Case No. D2005-1335 and Quiroocan, S.A. de C.V. (Barcel) v.Media Insights, WIPO Case No. D2006-0801. The Complainant registered the domain name <barcelo.com> in 1996, before domain names containing accents became available.

The disputed domain name was registered on July 16, 2003. Prior to a cease and desist letter sent by the Complainant to the Respondent on June 25, 2007 the domain name resolved to a website, in the Spanish language, displaying links to commercial sites, including links to hotels. Since the cease and desist letter, it has resolved to a website listing various instances of the use of “Barcel” as a surname, such as the artist Miquel Barcel.

 

5. Parties’ Contentions

A. Complainant

The Complainant says the disputed domain name should be transferred to it because the domain name is identical to its registered trademarks; the Respondent has no rights or legitimate interest in the disputed domain name; and the disputed domain name was registered and is being used in bad faith.

B. Respondent

In its informal Response (which the Panel has taken into account in the interests of fairness), Mr. Coll on behalf of the Respondent says Barcel is a common surname, mostly from Mallorca natives; that he himself is an artist and a friend of the internationally famous artist Miquel Barcel; that he (Mr. Coll) was unable to register his own surname as a domain name to promote his own art work because somebody else has it; and that if the disputed domain name were taken away from him, it would cause pain to him and to the artworld community and would be interpreted as treating artists as third class citizens. The Respondent also points to several other domain names which include the word “Barcelo” and says the word is only a genuine surname to which the Respondent was the first to have the [domain name] rights.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered in the name of the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

A. Identical or Confusingly Similar

The disputed domain name is clearly identical to the Complainant’s registered BARCEL trademark, since the generic top level domain “.com” is inconsequential and may be disregarded. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 and Rollerblade, Inc. v. Chris McReady, WIPO Case No. D2000-0429.

The Complainant has established this element of its case.

B. Rights or Legitimate Interests

The Complainant says it has not authorized the Respondent to use its mark nor to register the disputed domain name; that Barcel is indeed a surname but it is not the Respondent’s surname; and that the use, prior to the cease and desist letter, to which the domain name was put (including links to hotels) was not bona fide use, having regard to the fame of the BARCEL mark in relation to hotels.

The Panel finds that these assertions establish a prima facie case against the Respondent. Accordingly, the burden shifts to the Respondent to provide evidence of its right or legitimate interests under paragraph 4(c) of the Policy: See Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.

The Respondent relies entirely upon the character of the word “Barcel”as a surname, in particular the surname of his friend and fellow artist Miquel Barcel. The Policy, paragraph 4(c)(ii), provides that a respondent’s rights or legitimate interests to a domain name shall be demonstrated upon proof that the Respondent has been commonly known by the domain name. There is no evidence of this kind before the Panel. The Respondent makes no such assertion, nor any claim that the domain name was registered on behalf of anyone named Barcel.

The use of the domain name prior to the cease and desist letter had nothing to do with the character of the word as a surname and indicated awareness on the part of the Respondent of the Complainant’s mark in connection with hotels. Use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services; See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and <madonna.com>, WIPO Case No. D2000-0847. On the Respondent’s argument, the Respondent would be free to use the domain name <apple.com> in connection with computers because the word apple is the name of a fruit. The proposition needs only to be stated to be seen as untenable.

The Panel finds that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant has established this element of its case.

C. Registered and Used in Bad Faith

As mentioned, the use of the domain name prior to the cease and desist letter had nothing to do with the character of the word as a surname and indicated awareness on the part of the Respondent of the Complainant’s mark in the field of hotels. The Panel finds that, prior to the cease and desist letter, the Respondent used the domain name intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s BARCEL mark as to the source, sponsorship, affiliation or endorsement of the hotel services offered on its website. The Policy, paragraph 4(b)(iv), provides that this shall be evidence of both registration and use in bad faith. Under these circumstances, the Panel finds that the change of use subsequent to the cease and desist letter was an attempt to circumvent such a finding and itself constitutes further evidence of bad faith use on the part of the Respondent.

The Panel finds that the Domain Name was registered and is being used in bad faith. The Complainant has established this element of its case.

 

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, <barcel.com> (xn--barcel-gxa.com) be transferred to the Complainant.


Alan L. Limbury
Sole Panelist

Dated: November 12, 2007