The Complainant is Anuntis Segundamano España, S.L. of Barcelona, Spain, represented by Cuatrecasas, Gonçalves Pereira, Spain.
The Respondent is Tecfinsa,S.L., Antonio Soria Hernandez of Alicante, Spain.
The disputed domain name <zegundamano.com> the (“Domain name”) is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2010. On January 12, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On January 12, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details of the Respondent. The Complainant filed an amendment to the Complaint on January 15, 2010. 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” or “UDRP”), 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 January 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 5, 2010.
The Center appointed José Carlos Erdozain as the sole panelist in this matter on February 16, 2010. 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.
On March 4, 2010, the Respondent sent an email to the Center in which he filed evidence of having registered the trademark M 2.894.979. Also he informed that he did not understand the Complaint as the latter was drafted in English. The trademark in question reads as follows ZEM “WWW.ZAGUNDAMANO.COM”.
The language of the Registration Agreement is English. The language of the proceedings is therefore English, in accordance with paragraph 11 of the Rules.
The Complainant is a Spanish company pertaining to the classified-advertisements publications. The Complainant has been active for more than 25 years. Its activities and its trademarks are famous in Spain.
The Complainant's activities have increased on the Internet during the last couple of years. Since 2008, the Complainant's services are only disseminated through the Internet. It manages 23 websites, which receive more than 13,000,000 visits per month.
The Complainant owns the portal “www.segundamano.com” and some others, all of them related to the sector of classified-advertisements publications (e.g. with regard to cars, boats, educational services, etc.).
The Complainant owns several trademarks with the word “segundamano” (up to 14). The first application is dated April 15, 1978, but the Complainant continued filing trademarks applications with the word “segundamano” up until January 16, 2001. All of them were registered.
The Complainant has registered four domain names with the word “segundamano”, being the first registered on May 7, 1996 (<segundamano.com>). Special attention is driven to the registration of <segundamano.es> on January 1, 2001.
The Domain Name was registered on November 10, 2006.
The Domain Name refers to post classified advertisements in Spain. The Respondent also owns some other portals related to this kind of advertisements.
The Complainant sent a cease and desist letter to the Respondent on September 10, 2009 alleging its trademark rights in the word “segundamano”. It was responded in September. The Respondent contended that the Domain Name does not create any confusion with the Complainant's activities or trademarks. The Respondent also contends that it operates other portals that pertain to the classified advertisements and publicity sector.
The Complainant contends that the Domain Name is confusingly similar to the trademarks in which the Complainant has rights. The main difference is that for the Domain Name the first letter of the word SEGUNDAMANO (the “s”) has been substituted by the “z” letter. The resulting word is virtually the same.
The Respondent has no rights or legitimate interests in the Domain Name, since none of the circumstances, which the Policy outlines to prove this requirement, takes place. Specifically, the Respondent has not registered the word “zegundamano” or “zegundamano.com” as trademark; there is no evidence that the Respondent has been commonly known by the Domain Name; the Complainant has never licensed or authorized the use of the trademark SEGUNDAMANO to the Respondent.
The Respondent registered the Domain Name in bad faith, which is proved by the fact that the Complainant's trademarks are famous in Spain, and that the Respondent is a competitor. Also the Respondent uses the Domain Name in bad faith, since the Domain Name is linked to a portal that offers the same type of products or services of the Complainant.
The Respondent did not reply to the Complainant's contentions. Nevertheless, the Respondent sent an email to the Center as above said.
The decision has been adopted on the basis of the Policy, and taking into account the Spanish legislation on trademarks and unfair competition. This legal basis is taken into consideration as both parties are Spanish and develop commercial activities in the Spanish territory.
The first element of the Policy is that the Domain Name is identical or confusingly similar to any of the Complainant's trademarks.
The Complainant owns exclusive trademark rights with respect to the word “segundamano” in Spain. The first SEGUNDAMANO trademark was registered on April 15, 1978.
The Complainant has filed full proof of the fact that its trademarks are famous in the Spanish market and that its activities are related to classified advertisements.
All of the Complainant's trademarks consist of the word “segundamano”. On the other hand, the Domain Name consists of the word “zegundamano”. The only difference is the letter “z” at the beginning.
There is a significant number of UDRP WIPO decisions regarding the requirement of identity or confusingly similarity. In the Panel's opinion, following the doctrine settled by the European Court of Justice, and in accordance with the above mentioned UDRP WIPO decisions, a mark used by a respondent is identical with a complainant's mark if the former reproduces without any modification or addition all the elements constituting the trade mark or, where, viewed as a whole, it contains differences so insignificant that they go unnoticed by an average consumer (see Viacom International Inc. v. Mo-Team, WIPO Case No. D2009-1420).
Taking into consideration this well-established concept, the Panel concludes that, in view of the factual background of this case, and being the only difference between the Domain Name and the Complainant's trademarks the letter “z”, the Domain Name is confusingly similar with the trademarks of the Complainant. Furthermore, this slight change is actually insignificant, and it makes no difference for a medium type of consumer of the products and services offered by the Complainant, who could be easily confused as to the source of the same. The Panel finds that the Complainant has established the first element of the Policy.
Paragraph 4(c) of the Policy provides that respondent may establish rights or legitimate interests in the disputed domain names by proof of any of the following non-exclusive list of circumstances: (i) before any notice to respondent of the dispute, respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the disputed 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 disputed domain name, even if respondent has not acquired trademark or service mark rights; or (iii) respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. If the circumstances are sufficient to constitute a prima facie showing by the complainant of absence of rights or legitimate interests on the part of the respondent, the evidentiary burden shifts to the respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest.
In this case, the Respondent has not filed any response to the Complaint, which means that no proof of any right or legitimate interest in the Domain Name that has been filed by the Respondent. Moreover, the Complainant alleges that it has never licensed the use of its trademarks to the Respondent. Also to be taken into account is the fact that the Respondent has never been known by the Domain Name, and that the use of the same is strictly commercial.
In this regard, and in connection with the email sent on March 4, 2010 by the Respondent, the Panel considers that it does not establish the requisite of having a right or legitimate interest in the Domain Name. To begin with, the Respondent's trademark is not exactly “zegundamano”, but “ZEM WWW.ZAGUNDAMANO.COM. Thus, there are differences between both expressions. And in addition, the fact that the Respondent owns this trademark does not mean that the Respondent has a right on the Domain Name, since the significant question here is whether the Respondent meets the burden of proof in relation to any of the circumstances listed above as i), ii) and iii). And, in this regard, the Panel concludes that the Respondent has not (see Casa Tarradellas, S.A. / D. José Tarradellas Arcarons v. Indices de Gestión, S.L., Caso OMPI No. D2001-0151; Compaigne Gervais Danone. v. Danup.com, Caso OMPI No. D2008-0076).
Finally, the Respondent's answer to the cease and desist letter of the Complainant (dated September 10, 2009) clearly demonstrates that Respondent and Complainant are dedicated to the same sector of business.
These circumstances lead the Panel to the conclusion that the Respondent does not have any rights or legitimate interests in the Domain Name (see Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055, and Bayer Akiengesellschaft v. K Dango, WIPO Case No. D2002-0138).
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
In this case, the Complainant has evidenced that the trademarks “segundamano” were already famous when the Domain Name was registered. The Respondent had to be aware of the Complainant's activities.
The Complainant has also filed convincing proof that the Respondent has commercial activity in the same area of business, that is, classified advertisements. Consequently, both of them are competitors.
Therefore, it may be reasonably concluded that by registering the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users, specifically, by creating a likelihood of confusion with the Complainant's trademarks. The Panel comes to this conclusion since the difference between the Domain Name and the Complainant's trademarks is slight, just the letter “z”, whereas the confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website is real. This conclusion is reasonable in view of the evidence in the case (see also Guardant, Inc. v. youngcho kim, WIPO Case No. D2001-0043 and Pfizer Inc. v. Phillip Pizzurro, WIPO Case No. D2004-0600).
Therefore, the Panel concludes that the Domain Name was registered and is being used in bad faith.
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 <zegundamano.com> be transferred to the Complainant.
Dr. José Carlos Erdozain
Dated: March 2, 2010