WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupalia Compra Colectiva, S.L. v. Andrea Santini
Case No. D2010-1979
1. The Parties
The Complainant is Groupalia Compra Colectiva, S.L. of Barcelona, Spain, represented by Ubilibet, Spain.
The Respondent is Andrea Santini of Torino, Italy.
2. The Domain Names and Registrar
The disputed domain names, <groupalia.info>, <groupalia.net>, and <groupalia.org> (the “Domain Names”), are registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2010. On November 19, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 22, 2010, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Names, which differed from the named respondent and contact information in the Complaint. The Respondent had been using a proxy/privacy service.
The Center sent an email communication to the Complainant on November 26, 2010, 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 December 1, 2010.
The Center verified that the Complaint together with the amended 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 December 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2010. The Response was filed with the Center on December 23, 2010.
The Center appointed Tony Willoughby as the sole panelist in this matter on January 12, 2011. 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 December 24, 2010 the Complainant filed a supplemental filing to which the Respondent responded by way of his supplemental filing of the same date. The Panel has read these supplemental submissions and deals with them below.
4. Factual Background
The Complainant claims to have been founded in 2009, but was not incorporated until March 8, 2010. It provides a discount voucher service to online shoppers in the countries in which it operates, namely Spain Italy, Mexico, Chile, Argentina and Brazil.
The Complainant is the applicant for registration of four trade marks featuring the name/word “Groupalia”. Three are for the mark GROUPALIA COMPRA COLECTIVA (a CTM application, a Spanish application and a Chilean application) and one (a CTM application) is for the mark GROUPALIA TRAVEL. All applications are for services in one or more of classes 35, 39, 41, 43 and 44. The earliest of those applications is CTM application No. 9029349 dated April 15, 2010 GROUPALIA COMPRA COLECTIVA (a figurative mark) for services in classes 35, 39, 41, 43 and 44. The other applications all post-date registration of the Domain Names.
The Complainant is the proprietor of the domain names, <groupalia.com> (registered February 3, 2010), <groupalia.it> (registered March 13, 2010), <groupalia.es> (registered March 30, 2010) and <groupalia.pt> (registered August 5, 2010). Given that these domain name registrations were all undertaken in 2010, the Panel is left wondering what online activity the Complainant was undertaking in 2009 when it claims to have been founded.
The Domain Names were registered on April 26, 2010. At the date of the Complaint the Domain Names were connected to parking pages hosted by the Registrar and featuring advertising links.
5. Parties’ Contentions
The Complainant contends that the Domain Names are confusingly similar to the Complainant’s trade marks GROUPALIA COMPRA COLECTIVO and GROUPALIA TRAVEL and, absent the generic ‘.com’ suffixes, identical to the Complainant’s “Groupalia” domain names.
The Complainant contends that the name “Groupalia” is famous as being the trade mark of the Complainant and is a fancy word which can only identify the Complainant. The Complainant contends that the Complainant’s GROUPALIA trade marks are very well-known in Italy, the Respondent’s home country and elsewhere and that the Respondent cannot have registered the Domain Names otherwise than with the Complainant in mind.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names.
Finally, the Complainant contends that the Respondent registered the Domain Names for an abusive purpose, probably with a view to selling them at a profit.
The Respondent asserts that he was unaware of the existence of the Complainant when he registered the Domain Names and that he registered them “to create an international website for Jewish people abroad, organizing events, meetings, dinner and everything that can lead to a better understanding of each-other keeping in mind the Jewish culture.”
His stated reason for having chosen the name “GroupAlia” is given in the Response as follows:
“The idea was suggested by my girlfriend at the beginning of the year, when we were attending a new year’s eve party. She noticed that it was hard for [J]ewish expat[s] to meet together especially with people sharing the same beliefs and interests. I had no difficulty to agree to her idea (I am Catholic) and few months after, talking again about the topic, we decided to buy the domain “GroupAlia” as union of the words “Group” and “Alia”. Alia is a [J]ewish name, contraction of Aliyah, name of my girlfriend’s best friend in Argentina, [a c]ountry that she had to leave to move to Germany when she was a child. This fact, together with the Jewish meaning of the name, made us think that the name GroupAlia was perfect for a website which wanted to unify people, allowing them to fell less lonely being away from their native land.”
The Respondent states that when selecting the Domain Names he checked out websites at other URLs including that connected to the Complainant’s domain name, <groupalia.com>, but found that in the main they were either only operational to the extent of featuring landing pages or were not operational at all. In the case of the website connected to the Complainant’s domain name, <groupalia.com>, the Respondent states: “Since the domain .com was referring to a completely different kind of website, that had nothing to do with our project we thought that it was completely legitimate to use it for our idea.”
The Panel observes that the Respondent’s assertion that he was unaware of the Complainant when registering the Domain Names is puzzling given that he checked out the Complainant’s website when registering the Domain Names.
C. The Parties’ supplemental filings
The Complainant refers to a letter written by the Respondent to one of the Complainant’s shareholders suggesting that the dispute could be resolved by the Complainant paying EUR 6,000 for transfer of the Domain Names. The Complainant contends that this demonstrates the bad faith intentions of the Respondent. The Complainant also contends that the Respondent’s registration of three domain names was inconsistent with his stated intended purpose for the Domain Names, which only required one domain name. Additionally, the Complainant contends that the fact that the Domain Names are connected to a pay-per-click parking page underlines the Respondent’s commercial motives in respect of the Domain Names. Finally, the Complainant asks the Panel to draw adverse inferences against the Respondent from the fact that the Respondent used a proxy service to conceal his identity.
The Respondent has responded with answers to each of these further allegations. He says that his letter to the Complainant’s shareholders offering to sell the Domain Names was an understandable reaction to the lawyer’s letter which he had just received. He could not afford to fight the case and at that time had not appreciated that for him the UDRP process was free. It seemed a sensible way out. He says that he wanted to acquire domain names in all of the most common international domains and would be directing all of them to one website. He denies that he earns anything from the Registrar’s parking pages and points out that this is evident from the page content. They are default pages and any revenue goes to the Registrar. Finally, he states that he used the proxy service not with a view to concealing his identity from the Complainant, but from his employer and his girlfriend’s employer. Both of them were under contractual terms forbidding them to undertake work in the same field as their employers, which is why they have not yet been able to develop their website.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.
B. Identical or Confusingly Similar
The Complainant appears to have no trade mark registrations covering the name “Groupalia”, notwithstanding the assertion in the Complaint that the name “is a well-known fully registered trade mark”. The evidence on that topic in the Complaint is restricted to applications, not registrations and the Panel notes that the first to be cited by the Complainant is an elaborate device mark and the application is under opposition. The Panel ignores the Complainant’s trade mark applications which of themselves do not give rise to trade mark rights.
From the evidence supplied with the Complaint, the Panel is satisfied that over the period since the Complainant commenced trading online (according to the Complainant on a date in 20091) the Complainant is likely to have built up unregistered trade mark rights in respect of its name “Groupalia”. In so finding the Panel is unable to make any finding as to precisely when and where such rights were established save (for the purposes of this decision) that they were in existence as at the filing of the Complaint.
On that basis the Panel finds that the Domain Names (absent their generic domain suffixes) are identical to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Respondent has provided an explanation for his adoption of the Domain Names (quoted verbatim in section 5B above), but has produced no supporting evidence of any kind. The Respondent has not yet commenced his planned use of the Domain Names.
There is nothing before the Panel to demonstrate that the Respondent has any rights or legitimate interests in respect of the Domain Names, but in light of the Panel’s finding under the next heading, it is unnecessary for the Panel to come to a concluded view on this topic.
D. Registered and Used in Bad Faith
The Complainant appreciates that for it to succeed in establishing that the Domain Names were registered and are being used in bad faith it must at the very least satisfy the Panel that when registering the Domain Names the Respondent was targeting the Complainant. To that end the Complainant stresses the fame of the Complainant’s trade mark. The Complainant asserts, as indicated above, that “Groupalia” is a well-known fully-registered2 trade mark, which is “known nationally and internationally by the general public.” In support the Complainant goes on to claim that it has 1 million users, expects to invoice 5 million euros in its first year and has 100 employees. It also produces the results of an Italian Google search conducted on November 17, 2010 showing that a “Groupalia” search on that search engine results in a large number of entries relating to the Complainant. However, none of the evidence attached to the Complaint helps to establish what the position was on April 26, 2010 when the Domain Names were registered.
Were it not for the Response, the Panel would have held that there was nothing before him to establish that the Respondent knew anything of the Complainant when registering the Domain Names.
In the Response (as can be seen from section 5B above), while the Respondent asserts that he knew nothing of the Complainant when registering the Domain Names, he also goes on to say that when registering the Domain Names he checked out the Complainant’s website connected to its <groupalia.com> domain name, but concluded that because it was so different from what he had planned for the Domain Names, there was nothing to stop him using the Domain Names for his planned Jewish cultural website.
Had the Respondent gone ahead and used the Domain Names for his claimed purpose, this dispute would be unlikely to have arisen. Instead, however, pending completion of his claimed plans the Respondent has connected the Domain Names to what appear to be revenue earning parking pages. However, as the Respondent points out in his supplemental submission, it is not the Respondent, but the Registrar who is earning any revenue which is generated3. The Panel accepts this explanation.
While there are aspects of the Respondent’s story, which are unsatisfactory (e.g., the absence of any evidence to support the existence of his plans for the website to be connected to the Domain Names and the inconsistency relating to his knowledge of the Complainant at time of registration of the Domain Names), there are also unsatisfactory aspects of the Complaint.
The Panel has found for the purposes of paragraph 4(a)(i) of the Policy that in the period leading up to the filing of the Complaint, the Complainant is likely to have established unregistered trade mark rights in respect of the name “Groupalia”, but there is nothing before the Panel to establish what the position was as at the date of registration of the Domain Names. Was there anything on the Complainant’s website on April 26, 2010 to indicate that the Complainant then had trade mark rights in respect of the name? Was the Complainant then trading under the name in Italy, the Respondent’s home country? If so, was that fact apparent from looking at the Complainant’s website at that time? If the Respondent’s story is an honest one, was there anything on the Complainant’s website which should have indicated to the Respondent that his planned use of the Domain Names was likely to have violated the Complainant’s trade mark rights? Even if his plan all along was to connect the Domain Names to revenue earning parking pages (unlikely given that he appears to be earning nothing from those pages), was there anything on the Complainant’s website to indicate that for him to do so would constitute violation of the Complainant’s trade mark rights? Nothing in the papers before the Panel answers these questions.
Moreover, it is noteworthy that as at the date of registration of the Domain Names, the only mark for which the Complainant was seeking registered protection was not “Groupalia”, but the mark the subject of CTM application No. 9029349 dated April 15, 2010, namely GROUPALIA COMPRA COLECTIVA in a figurative form and which is the subject of an opposition.
Has the Complainant demonstrated that all along the Respondent was targeting the Complainant?
It is for the Complainant to prove its case under the Policy, not for the Respondent to prove his defence. If the Panel is in doubt, the Complaint must fail. For this Panel there are too many unanswered questions. Additionally, for the Panel to find in the Complainant’s favour, the Panel must make a finding to the effect that the Respondent has been untruthful. The inconsistency in the Response to which the Panel has drawn attention could be an indication of untruthfulness, but it could equally well be a result of the fact that the Respondent is not working in his mother tongue. There is no evidence before the Panel to show that the Respondent has a history of domain name abuse.
In all the circumstances, on balance, the Complainant has failed to persuade the Panel that the Domain Names were registered and are being used in bad faith.
For all the foregoing reasons, the Complaint is denied.
Dated: January 26, 2011
1 Given that the Complainant was not incorporated until March 8, 2010, the Panel assumes that the Complainant was formed to acquire a pre-existing business.
2 As stated in paragraph 6B, the Panel has seen no evidence of any such registration.
3 While the Panel is aware that there have been decisions to the effect that it matters not whether the pay-per-click revenue goes to the respondent, it being enough that there is commercial gain, the Panel is not persuaded that those decisions are necessarily to be followed in cases such as the present UNLESS deception of Internet users and commercial gain were central to the Respondent’s plans along the lines of paragraph 4(b)(iv) of the Policy.