WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tiago Manuel Da Nobrega Themudo Gallego v. Edward Kelly
Case No. D2008-0740
1. The Parties
Complainant is Tiago Manuel da Nobrega Themudo Gallego, Montijo, Portugal, represented by J. Pereira da Cruz, Lisbon, Portugal.
Respondent is Edward Kelly, Hertfordshire, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <lavarzea.com> and <lavarzea.net> (“Domain Names”) are registered with Directi Internet Solutions d/b/a PublicDomainRegistry.Com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2008. On May 14, 2008, the Center transmitted by email to Directi Internet Solutions d/b/a PublicDomainRegistry.Com a request for registrar verification in connection with the Domain Names at issue. On May 14, 2008 , Directi Internet Solutions d/b/a PublicDomainRegistry.Com transmitted by email to the Center its verification response confirming that 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, Complainant filed an amendment to the Complaint on June 2, 2008. 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 Respondent of the Complaint, and the proceedings commenced on June 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 27, 2008.
The Center appointed Bernhard Meyer-Hauser as sole panelist in this matter on July 9, 2008. The Panel finds that it was properly constituted. The Panel 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 the owner of the Community Trademark Registration no. 4277414 LA VARZEA, granted on May 17, 2006, covering classes 3, 18, 25 and 28.
Further Complainant is the owner of the following Brazilian trademark registrations LA VARZEA granted on March 4, 2008: Trademark no. 828291462 for class 3; Trademark no. 828291470 for class 18; Trademark no. 828291535 for class 25 and Trademark no. 828291500 for class 28.
Additionally, Complainant owns the following Argentinean trademarks LA VARZEA granted on June 2, 2007: Trademark 2167637 for class 3; Trademark 2167638 for class 18; Trademark 2167639 for class 25; Trademark 2167640 for class 28.
The disputed Domain Names were registered by Respondent on January 12, 2007.
5. Parties’ Contentions
Complainant objects to the use of the Domain Names by Respondent and bases its Complaint on the following grounds:
1. Firstly, Complainant contends that the disputed Domain Names are identical to a trademark or service mark in which Complainant has rights.
The Domain Names <lavarzea.com> and >lavarzea.net> totally reproduce the trademark LA VARZEA. These Domain Names can be easily confused with the registered trademark that has become known among consumers, who instantly identify and associate it as belonging to Complainant.
2. It further argues that Respondent has no rights or legitimate interest in respect of the Domain Names.
Complainant has prior rights in the trademark LA VARZEA that was registered before Respondent registered the disputed Domain Names. The registration of a trademark confers on its owner the right of ownership thereof and exclusive rights to its use. Thus, the registration of the Domain Names <lavarzea.com> and <lavarzea.net> constitutes an infringement of the Complaint’s exclusive rights in the trademark LA VARZEA.
The expression “La Varzea” does not form part of Respondent’s company name, nor has it been used to designate Respondent on the market. Furthermore, there are no contents on the websites corresponding to the disputed Domain Names, which in any case are unavailable. Hence, there is no real use of this sites and it is obvious that the index which it contains is simply intended to occupy them, without actually offering any goods or services.
This means that there are no valid grounds for a legitimate interest on the part of Respondent in respect of the Domain Names <lavarzea.com> and <lavarzea.net>.
3. Finally, Respondent registered (and uses) the Domain Names in bad faith.
Complainant contends that consumers would access the websites linked to the disputed Domain Names in the belief that they could access information about Complainant or about the goods and services provided by Complainant. Respondent is creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement by Complainant.
Furthermore, the fact that the use of the concerned websites simply consists of an index and information which is not available demonstrates that this use is merely intended for the occupation of the Domain Names in order to stop them being used by the holder of the exclusive right in respect of the trademark LA VARZEA.
Non-use can be included within the concept of use in bad faith if this non-use in itself can be considered as an act of bad faith. The restricted use, consisting of the mere posting of an index in order to occupy a website corresponding to a well known trademark, constitutes an act of bad faith.
It must be concluded that the registration of the Domain Names could be made with the objective of making an illegitimate profit since the restricted use of the websites is intended to prevent the legitimate owner of the exclusive rights – Complainant – from occupying the sites and thereby damaging his activity.
Respondent did not reply to Complainant’s contentions when invited to do so by the Center but he submitted an e-mail to Complainant with copy to the Center on June 2, 2008, one day prior to the formal Notification of Complaint and Commencement of Administrative Proceeding. This email outlines Respondent’s position and shall be considered as his answer in this proceeding.
In the e-mail, Respondent mentioned that in January 2007 he got a “misleading brief” by Mr. Hornung, La Varzea’s Project Manager, to develop an IT & marketing strategy for the new La Varzea property & leisure complex. After allegedly completing around 200 hours work on that project, his presentation to Complainant was cancelled and Respondent’s involvement was terminated without compensation by e-mail from Mr. Hornung that Complainant “firmly and absolutely ruled against any meeting taking place and to any possible conduct of business”. Respondent has not been contacted by Complainant again.
Respondent, by not responding to the Center’s invitation and failing to submit a Response with supporting evidence, missed the chance of replying to Complainant’s contentions. Anyway, Respondent’s allegations shall be taken into consideration to the extent possible.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that Complainant must prove each of the following three elements in order to succeed in an administrative proceeding. Thus, if Complainant fails to prove any one of the three elements it fails in its application under the Policy.
(i) Respondent’s Domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) Respondent’s Domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
As stated above, Complainant has registered the trademark LA VARZEA as a Community Trademark and in Brazil and Argentina. The Domain Names <lavarzea.com> and <lavarzea.net> include Complainant’s trademark entirely. No distinctive elements are added to the trademark.
Having a domain name which is identical to a registered trademark is sufficient to meet the test established by paragraph 4(a)(i) of the Policy. Therefore, the Panel finds that the Domain Names in dispute are identical to Complainant’s trademark.
B. Rights or Legitimate Interests
Complainant asserts that Respondent has no right or legitimate interest in the Domain Names. According to paragraph 4(c) of the Policy, the following circumstances can demonstrate rights to and legitimate interests of a respondent in a domain name:
(i) before any notice was given to Respondent of the dispute, Respondent used, or demonstrably made 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even though it has not acquired any trademark or service mark rights; or
(iii) Respondent is making a legitimate non-commercial or fair use of the domain name.
There is no evidence, before any notice to Respondent of the dispute, of use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services.
It is not substantiated that Respondent is commonly known by the Domain Names even though no trademark or service mark rights is required. The expression “La Varzea” does not form part of Respondent’s company name, nor has it been used to designate Respondent on the market. Furthermore, there are no contents on the websites corresponding to the disputed Domain Names which in any case are unavailable.
Lastly, there is no real use of these sites and the index which they – according to Complainant’s allegation and not contested by Respondent – used to contain was intended to occupy them without actually offering any goods or services.
Considering Respondent’s e-mail of June 2, 2008, any possibly existing legitimate interests to register the Domain Names in January 2007 ceased to exist after termination of any business relations.
Therefore, Respondent lacks rights and legitimate interests in respect of the Domain Names under the Policy and the Panel concludes that the prerequisites of paragraph 4(a)(ii) of the Policy have been proven by Complainant.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, a domain name has been used and registered in bad faith if:
(i) circumstances indicating that Respondent has registered and has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to 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; or
(ii) 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, 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 Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
Prior knowledge by Respondent of Complainant’s trademarks is obvious and indirectly also admitted in Respondent’s e-mail of June 2, 2008.
Respondent knew the business of Complainant well. He even wanted to become involved in it. And while the Panel can not express any opinion on the content of the contractual negotiations between the parties, it is clear from Respondent’s own email that he was not instructed to and had no mandate to register the disputed Domain Names. Respondent noted in his e-mail that he “considered [the URL La Varzea.com] to be the most attractive domain name” for Complainant’s business, and that he (Respondent) registered the Domain Names in the hope to persuade Complainant later of his idea “to integrate all [of Complainant’s] activities under this single URL”. But Respondent also stated in his E-mail that he knew that Respondent “had not bothered” to register the Domain Names. So, when registering <lavarzea.com> and <lavarzea.net>, Respondent may have acted in what he perceived to be in the best interest of Complainant, but he obviously was acting against Complainant’s explicit instructions. Thus, the Panel finds that Respondent acted in bad faith when registering the Domain Names.
As to the element of “use”, Complainant asserts that Respondent is today engaged in the passive holding of the Domain Names. This, under certain circumstances, may support an inference of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). This is particularly so when no plausible actual or contemplated active use of the disputed Domain Names is conceivable. Since Respondent has neither any personal rights in the trademark LA VARZEA nor uses the websites for any commercial or non-commercial purposes, and since it is clear that he is not involved in Complainant’s project, the passive holding of the Domain Names constitutes bad faith use. Also Respondent’s disregard of the present proceeding (except for the informal e-mail mentioned above), is an indication of bad faith use under the Policy and Rules.
In light of these circumstances, the Panel concludes that the Respondent’s registration and passive holding of the Domain Names meets the requirements of paragraph 4(a)(iii) of the Policy and that the Domain Names have been registered and are being used by Respondent in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy an 15 of the Rules, the Panel orders that the Domain Names <lavarzea.com> and <lavarzea.net> be transferred to Complainant.
Dated: July 23, 2008