The Complainant is RUSTICAE SELECCIÓN DE CALIDAD S.L., Madrid, Spain, represented by Gómez-Acebo & Pombo Abogados of Spain.
The Respondent is LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, Mumbai, India.
The disputed domain name <rusticae.com> is registered with Lead Networks Domains Pvt. Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2008. The named respondent was Private Whois Escrow Domain Provate Limited 001P17050408. On July 24, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the domain name at issue. On August 6, 2008, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 8, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 11, 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 the Respondent of the Complaint, and the proceedings commenced on August 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 3, 2008.
The Center appointed Torsten Bettinger as the sole panelist in this matter on September 16, 2008. 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 Complainant is a Spanish company that operates on the Internet through the web portal “www.rusticae.es”, which is a portal of reference in the hotel sector.
The Complainant was constituted in 1996 and contends to be the leading quality club for “Small Charming Hotels” in Spain, which has become internationally deemed as a high quality seal in the hotel sector, comprising more than 200 hotels worldwide and having more than 27,000 registered customers.
The Complainant is the registered owner of numerous trademarks including the words RUSTICAE in various jurisdictions, inter alia
- Community trademark No. 002342301 RUSTICAE PEQUEÑOS HOTELES CON CARÁCTER & design (RUSTICAE SMALL CHARMING HOTELS) in intl. classes 35, 39 and 42;
- Community trademark No. 003836749 SUMMUM by Rusticae in intl. classes 3, 18, 25 and 43;
- Community trademark No. 004095147 SUMMUM By Rusticae in intl. classes 20, 35, 37, 41, 42 and 44;
- Community trademark No. 003159662 RUSTICAE METRÓPOLI HOTELES URBANOS CON CARÁCTER & design (RUSTICAE METROPOLIS CHARMING CITY HOTELS) in intl. classes 35, 39 and 43;
- Community trademark No. 004890703 RUSTICAE THE GOODLIFE COMPANY & design in intl. classes 35, 42 and 43; and
- Spanish trademark No. M2600701 RUSTICAE & design in intl. classes 16, 36 and 41
The Complainant is widely known internationally based on articles in numerous papers and magazines in many countries.
The disputed domain name was first registered on August 18, 2005 and is currently used in connection with a domain parking website offering links to third parties' websites including direct competitors of the Complainant.
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant argues that the disputed domain name incorporates the distinctive part of Complainant's trademark RUSTICAE in its entirety and that therefore the domain name is identical or confusingly similar to these trademarks.
In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant contends that none of the situations described in paragraph 4(c) of the Policy can be established in this case. In support of this assertion the Complainant states that
- the Respondent is not using the domain name in a noncommercial or fair way;
- the Respondent is neither an agent nor a licensee of the Complainant and therefore has no right in the use of the Complainant's trademarks;
- the Respondent's use of the domain name for a parking website can not to be considered as a bona fide offering of goods and services;
- there is no evidence that the Respondent has been commonly known by the disputed domain name and the Respondent has not acquired any trademark or service mark rights in the disputed domain name.
In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainant asserts that
- the Complainant's trademarks RUSTICAE are well-known in many jurisdictions in the field of selecting and rating of hotels;
- it is most likely that the Respondent was fully aware of the Complainant's RUSTICAE marks when registering the disputed domain name;
- the Respondent is trying to attract Internet users to its webpage, by creating confusion in respect of the RUSTICAE marks;
- by using the disputed domain name for a parking website Respondent is profiting by Complainant's trademark which is well-known in the hotel sector.
The Respondent did not reply to the Complainant's contentions.
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (see Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327; BWT Brands, Inc. and British American Tobacco (Brands), Inc. v. NABR, WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).
The disputed domain name wholly incorporates the Complainant's trademark RUSTICAE except that the domain name does not comprise the figurative element nor the descriptive terms PEQUEÑOS HOTELES CON CARÁCTER
The Panel notes that it is consensus view among panelists that the assumption of confusing similarity between trademark and domain name is not refuted by the fact that the trademark contains additional figurative elements which cannot be reproduced in a domain name (Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031) or that the domain name contains elements which are purely descriptive in connection with the goods or services for which the trademark is registered.
It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see 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).
The Panel thus finds that the domain name <rusticae.com> is confusingly similar to the RUSTICAE marks in which the Complainant has exclusive rights and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. However, it is consensus view among panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and a respondent fails to show for example one of the three circumstances under paragraph 4(c) of the Policy, then, depending on the circumstances of the case, the respondent may indeed lack a legitimate interest in the domain name.
Complainant asserted that the Respondent has neither a license nor any other permission to use the Complainant‘s RUSTICAE marks and that Respondent's use of the domain name for a parking website is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use. The Panel thus finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name which is identical the Complainant‘s mark.
Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
Respondent is using Complainant‘s trademark to divert Internet users to a parking website with links to commercial websites offering goods and services which directly compete with the those of the Complainant.
Further, nothing in the record suggests that Respondent is making any other legitimate noncommercial use of the domain name or registered the domain name as a descriptive, non-source identifying domain name in order to inform about the Complainant‘s services or related matters.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.
The Panel is also convinced that Respondent registered and has been using the domain name in bad faith.
The Complainant's RUSTICAE marks have been used internationally in the field of advertising and rating of hotels for many years. The Respondent has registered a domain name which consists of the Complainant's trademark RUSTICAE. As the term “rusticae” as such has no inherent connection with the advertising or rating of hotels in this Panel's view it is inconceivable that Respondent registered the disputed domain name without being aware of the Complainant's rights in its RUSTICAE marks.
The Panel finds that the domain name is also being used in bad faith under 4(b)(iv) of the Policy. Screen shots of Respondent's web page at “www.rusticae.com” show that use of the domain name redirects users to a parking website that provides links to third parties which compete with the Complainant. A parking website typically offers domain name holders to earn click-through-revenue for redirecting Internet users to other websites and thus capitalizing on the goodwill of the trademark which corresponds with the domain name.
This qualifies as bad faith under paragraph 4(b)(iv) in that Respondent's use of the domain name attempts to attract for commercial gain Internet users to his website by creating a likelihood of confusion with Complainants' mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website.
Moreover, Respondent's default in this proceeding reinforces an inference of bad faith. If Respondent had arguments that it acquired the domain name in good faith, and had good faith bases for using the domain name, it ostensibly would have asserted them.
Accordingly, the Panel concludes that Respondent registered and used the domain name <rusticae.com> in bad faith and that also the requirement of paragraph 4(a)(iii) of the Policy has been met.
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 <rusticae.com> be transferred to the Complainant.
Dated: September 30, 2008