WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autoridad Portuaria de Santander v. Domain Drop, S.A.
Case No. D2007-1601
1. The Parties
Complainant is Autoridad Portuaria de Santander, Santander, Spain, represented by Clarke, Modet & Co., Spain.
Respondent is Domain Drop, S.A., Charlestown, West Indies, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <puertodesantander.com> is registered with BelgiumDomains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2007. On October 31, 2007, the Center transmitted by email to BelgiumDomains, LLC a request for registrar verification in connection with the domain name at issue. On October 31, 2007, BelgiumDomains, LLC 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 November 6, 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, and the proceedings commenced on November 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2007.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on December 11, 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 is a state-run agency that manages the Port of Santander in Spain. Complainant and its predecessor-in-interest have registered the word and design trademark and service mark PUERTO DE SANTANDER (with accompanying design in the shape of a building) on the trademark register of the Spanish Patent and Trademark Office, registration number 1294933, dated September 16, 1991, in International Class (IC) 16; registration number 1294934, dated January 16, 1992, in IC 35; registration number 1294935, dated June 1, 1992, in IC 36; registration number 1294936, dated January 1, 1992, in IC 37; registration number 1294938, dated January 1, 1992, in IC 39, and; registration number 1294939, dated January 1, 1992, in IC 40. Complainant has also registered the word and design trademark and service mark PUERTO DE SANTANDER AUTORIDAD PORTUARIA DE SANTANDER, dated January 16, 2007, in ICs 16, 35, 36, 39 and 40. Complaint, Annex 6.
According to Complainant, the Port of Santander commenced operation more than 2000 years ago. The net turnover for this port in the prior fiscal year (presumably 2006) was € 29,012,905, as compared with the total net turnover for the Spanish Port System of € 921,200,000. The Port of Santander accommodates an average of 140,000 passengers per year. It maintains ferry and cruise ship service facilities. (Complaint) The Port of Santander has received a Certificate of Approval from Lloyd’s Register Quality Assurance with respect to its Environmental and Quality Management System Standards (id., Annex 5). A substantial part of the business of the Port of Santander is international, including trade with other countries of the European Union, the United States, Japan and other nations. Representatives of the Port of Santander participate in international conferences to promote its business as a trade and passenger port. (Complaint)
Complainant has registered a number of domain names incorporating the term PUERTO DE SANTANDER, including (but not limited to) <puertosantander.com>, <puertosantander.net>, <puertosantander.org>, <puertosantander.biz>, <puertosantander.info>, <puertosantander.es>, <puertodesantander.org>, <puertodesantander.net> (id., Annex 7). The PUERTO DE SANTANDER domain names registered by Complainant are used to direct Internet users to an active website headed with “Puerto de Santander” and the combination trademark design registered with that term (the shape of a building) (Panel visit of December 24, 2007). The homepage of the web portal provides links to information concerning the operation of the port, the identity of various service providers at the port, attractions in the surrounding geographic area, and so forth, in the Spanish language.
According to the Registrar’s Verification report, Respondent is the registrant of the disputed domain name, <puertodesantander.com>. According to a BelgiumDomains LLC WHOIS report provided by the Center, the record of registration of the disputed domain name was created on February 27, 2006.
Respondent is using the disputed domain name to direct Internet users to a web portal headed with the term “Sponsored Listings”, above which appears a box for entering search terms. The language of the web portal can be varied (comparing Complainant’s Annex 11 Spanish language printout and the web portal printout provided by the Center; also, Panel visit of December 24, 2007), but the information displayed at the web portal nevertheless is substantially similar. The information displayed on an English-language version of the web portal on December 10, 2007, included a left-hand column of “Sponsored Listings”, such as “Shipping to Puerto Rico”, “Puerto Rico Cruises”, “Casa Aventura”, “Puerto vallarta cottage”, and a right-hand column of “Related Searches”, such as “Puerto de Barcelona”, “Puerto”, and “Puerto De La Cruz Property”. The Spanish language information on the web portal from a printout dated October 26, 2007 is substantially similar. The various “Sponsored Listings” and “Related Searches” provide links to third party websites with no apparent connection to Complainant, although some involve similar lines of business. The information displayed on the home page of the web portal appears to vary over time, and the information on the home page appears to be generated automatically by an algorithm or formula used by the host (as compared with a static display that requires manual modification).
By email (and attached letter) dated May 17, 2007,1 Complainant sent a cease and desist and transfer demand to Respondent. Respondent did not reply to that communication.
Complainant has provided a list of more than ten previous administrative panel decisions under the Policy covering the past two years in which Respondent has been found to have engaged in abusive domain name registration and use, including, e.g., Genlyte Thomas Group LLC v. Domain Drop S.A., WIPO Case No. D2006-1223 and Kiloutou v. Domain Drop SA, WIPO Case No. D2006-1105 (Complaint, Annex 10).2
The Registration Agreement in effect between Respondent and BelgiumDomains, LLC subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant asserts that it owns rights in the word and design trademark PUERTO DE SANTANDER based on registration at the Spanish Patent and Trademark Office and as evidenced by long use in commerce. Complainant contends that term PUERTO DE SANTANDER is the principal element of its mark.
Complainant argues that the disputed domain name <puertodesantander.com> is identical or confusingly similar to its trademark. It argues that the only difference between the trademark and the disputed domain name is the addition in the domain name of the generic top-level domain (gTLD) identifier “.com”.
Complainant contends that its trademark is well-known internationally based on its extensive use in commerce, and that Respondent must have been aware of its trademark when it registered the disputed domain name.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain because: (1) Respondent registered the disputed domain name after Complainant’s trademark became well-known; (2) Respondent has not been authorized to use Complainant’s mark, has not made commercial or fair use of the mark, and has not been commonly known by the disputed domain name, and; (3) Respondent’s activities are not in any way related to the words PUERTO DE SANTANDER.
Complainant alleges that Respondent registered and has used the disputed domain name in bad faith. Complainant states that Respondent’s failure to respond to its cease and desist and transfer demand is evidence of bad faith. Complainant states that it can be inferred that Respondent registered the disputed domain name to sell or rent it to Complainant. Complainant also argues that Respondent has engaged in a pattern of registering the trademarks of third parties in domain names to prevent them from doing so, providing a list of ten administrative panel determinations under the Policy in which Respondent has been found to have engaged in abusive domain name registration and use.
Complainant argues that Respondent, by providing links to third-parties unrelated to Complainant, some in the same field of business as Complainant, has attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s mark regarding Complainant’s status as source, sponsor, affiliate or endorser of Respondent’s website.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The courier tracking record included in the record of file transmission furnished by the Center indicates that the Complaint was successfully delivered to the address provided by Respondent in its record of registration for the disputed domain name. The Center communicated by e-mail to the address of Respondent and its Administrative Contact with no apparent transmission difficulties. Under the circumstances, and in accordance with paragraph 2(a) of the Rules, the Panel is satisfied that Respondent was given adequate notice of the commencement of these proceedings and an adequate opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s 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) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant is the owner of a number of trade and service mark registrations for the word and design mark PUERTO DE SANTANDER at the Spanish Patent and Trademark Office, and has provided substantial evidence of use of that trademark in commerce in Spain (see Factual Background supra). Respondent has not challenged Complainant’s rights in the aforesaid trademark.
“Puerto de Santander” appears to serve as the identifier of a geographical location as well as the identifier of Complainant and its goods and services. While the trademark law of Spain and the First Trade Marks Directive of the European Community absolutely prohibit registration as a trademark of terms that exclusively serve to designate the geographical origin of goods or services, this rule does not mean that place names cannot be registered and take on trademark or service mark functions in appropriate circumstances. The relevant law was discussed by this sole panelist in Excmo. Cabildo Insular de Tenerife and Promocion Exterior de Tenerife, S.A. v. Jupiter Web Services Limited, WIPO Case No. D2003-0525.
Complainant has registered the trademark PUERTO DE SANTANDER in connection with the furnishing of goods and services in its role as the provider of maritime port services and goods. That registration is for a word and design mark, not for words standing alone. The combination of a design with the geographic term helps to distinguish the trademark from the geographic name as such. The Spanish Patent and Trademark Office has registered the trademark PUERTO DE SANTANDER for Complainant’s exclusive use in connection with a defined range of activities, not to describe a geographical location. The terms PUERTO DE SANTANDER, to the extent they are used in a descriptive geographic sense, remain available for fair descriptive use by third parties.
Respondent has not challenged Complainant’s assertion of rights in the word and design mark PUERTO DE SANTANDER. In light of the fact that registration was granted more than 15 years ago by the Spanish Patent and Trademark Office, and that Complainant has provided evidence that the registration remains valid, the Panel accepts for purposes of the Policy that Complainant owns rights in the PUERTO DE SANTANDER trademark.
A principal legal issue in this proceeding is whether the disputed domain name <puertodesantander.com> is identical or confusingly similar to the Complainant’s PUERTO DE SANTANDER trademark. There is no direct evidence on the record of this proceeding regarding whether the Spanish Patent and Trademark Office would have granted registration for the words PUERTO DE SANTANDER in the absence of the associated design (i.e., the shape of a building) accompanying those words. If the Spanish trademark authorities would necessarily have rejected registration for the words standing alone (e.g., as being solely geographically descriptive), Complainant might unfairly extend the scope of its mark by comparing only the words in its trademark as against the words in the disputed domain name. Complainant, in effect, would be asserting greater trademark rights than it could have obtained through registration of its mark in Spain. However, Respondent has not challenged Complainant on this point. Moreover, the Panel notes that in Excmo. Cabildo Insular de Tenerife and Promocion Exterior de Tenerife, S.A. v. Jupiter Web Services Limited, WIPO Case No. D2003-0525, the Spanish Patent and Trademark Office had in fact granted registration to a “word only” mark identical to the geographic location “TENERIFE” (with respect to the provision of certain services). This suggests that according to Spanish trademark law registration of a word only mark that consists of a geographic name is not per se excluded (see also this sole panelist’s discussion of the relevance of Barcelona.com v. Excelentisimo Ayuntamiento de Barcelona, 330 F.3d 617 (4th Cir. 2003) in Excmo. Cabildo Insular de Tenerife, id). The Panel determines that for purposes of this proceeding Complainant may compare and oppose its word and design trademark as against the disputed domain name, consisting solely of words, because Spanish trademark authorities have granted Complainant rights in the word and design mark, and it has not been established that Spanish law prevents Complainant from opposing that combination mark to words alone.
The disputed domain name consists solely of the word portion of Complainant’s PUERTO DE SANTANDER trademark, with the addition of the gTLD “.com”. Because Complainant’s full trademark consists of a word and design, the disputed domain name is not identical for purposes of the Policy to Complainant’s mark. However, the design portion of Complainant’s mark does not obscure the central identifying role of the words with which it is combined. The sight, sound and meaning of the trademark words PUERTO DE SANTANDER, and the disputed domain name <puertodesantander.com>, are the same. The design (i.e., the accompanying shape of a building) combined with the trademark words in Complainant’s mark do not materially change the overall impression of similarity. The Panel determines that the disputed domain name is confusingly similar to Complainant’s PUERTO DE SANTANDER trademark.
Complainant has established that it has rights in the trademark PUERTO DE SANTANDER and that the disputed domain name <puertodesantander.com> is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
Respondent has not been authorized by Complainant to use its PUERTO DE SANTANDER trademark. There is no evidence to show that Respondent has been commonly known by the disputed domain name.
Respondent is using the disputed domain name to direct Internet users to a website offering goods and services directly competitive with those of Complainant, as well as offering goods and services unrelated to Complainant and its commercial activities. Respondent is acting solely as a conduit to third party offers of goods and services, and is presumably receiving some form of compensation for click-throughs to such third party offers. Respondent is taking advantage of the goodwill associated with Complainant’ s mark to offer goods and services of third parties, including direct competitors of Complainant. This does not constitute a bona fide offering of services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139; GoDaddy.com, Inc. v. Chad Lovell, WIPO Case No. D2007-1289, and; Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah, WIPO Case No. D2007-1368.
As noted in the discussion of trademark rights, supra, a third party might in appropriate circumstances fairly register and use the terms “Puerto de Santander” in a domain name in a geographically descriptive sense. In Excmo. Cabildo Insular de Tenerife and Promocion Exterior de Tenerife, S.A. v. Jupiter Web Services Limited, WIPO Case No. D2003-0525, the respondent had registered and used a geographic term (also registered as a trademark) in a descriptive sense and was found to have fairly used that geographic term. In the instant proceeding, Respondent is not using Complainant’s trademark in a geographically descriptive way. It is using the mark for the sole apparent purpose of attracting Internet users to a web portal where it provides sponsored advertising links and a search engine. The fact that the web portal algorithm may at some points generate the names of third party goods or service providers that are proximate to the types of goods and services provided by Complainant is not sufficient to make this a geographically descriptive fair use by Respondent. The specific geographic location in the disputed domain name is essentially unconnected to the information shown on Respondent’s web portal. The specific geographical location “Puerto de Santander” is not materially connected to what is being shown or offered on the web portal. Respondent is not making fair use of Complainant’s trademark within the meaning paragraph 4(c)(iii) of the Policy.
Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are (1) that the domain name has been registered by a respondent “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 [respondent’s] documented out-of-pocket costs directly related to the domain name” (id., para. 4(b)(i)); (2) that a 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” (id., para. 4(b)(ii)); (3) that a respondent has “registered the domain name primarily for the purpose of disrupting the business of a competitor” (id., para. 4(b)(iii)), and; (4) that a respondent “by using the domain name, … [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 [respondent’s] website or location of a product or service on [its] website or location” (id., para. 4(b)(iv)).
Respondent has registered the trademark of Complainant in the disputed domain name and has thereby prevented Complainant from reflecting its mark in a corresponding domain name. Complainant has provided a list of more than ten administrative panel decisions under the Policy in the past two years in which Respondent has been found to have engaged in abusive domain name registration and use. This indicates that Respondent has engaged in a pattern of such conduct. The Panel determines that Respondent registered the disputed domain name in bad faith within the meaning of paragraph 4(b)(ii) of the Policy.
Respondent has also used Complainant’s mark in the disputed domain name for commercial gain to attract Internet users to Respondent’s website by creating a likelihood of confusion as to Complainant’s status as source, sponsor, affiliate or endorser of Respondent’s website. This constitutes bad faith registration and use by Respondent within the meaning of paragraph 4(b)(iv) 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, <puertodesantander.com>, be transferred to the Complainant.
Frederick M. Abbott
Dated: December 25, 2007
1 The letter furnished by Complainant is headed May 17, 2006, but the accompanying e-mail transmission is dated May 17, 2007. Complainant has indicated that the e-mail and letter were sent on May 17, 2007. Complaint, and Annex 9.
2 The Panel has independently reviewed several, but not all, of the administrative panel decisions referred to by Complainant.