WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vértice Trescientos Sesenta Grados, S.A. v. Intero Real Estate Services
Case No. D2011-0497
1. The Parties
Complainant is Vértice Trescientos Sesenta Grados, S.A. of Madrid, Spain, internally represented.
Respondent is Intero Real Estate Services of California, United States of America, internally represented.
2. The Domain Name and Registrar
The disputed domain name <vertice.com> (“the Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2011. On March 17, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On March 17, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on March 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 13, 2011. The Response was filed with the Center on April 13, 2011.
The Center appointed Clive L. Elliott as the sole panelist in this matter on May 3, 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.
4. Factual Background
The Domain Name was created on July 11, 2003.
Complainant is a Spanish company. It is the parent company leading the Vértice Group, including a group of companies operating in the domestic and international audiovisual market. It specialises in content production and post-production for cinema and television, the provision of comprehensive technical support and equipment for audiovisual and advertising production, the broadcasting of channels, the generation of commercial events and live shows and the development of interactive services and contents for delivery through new digital media.
5. Parties’ Contentions
Complainant states that the Vértice Group, whose parent company has been listed on the Madrid and Barcelona (Spain) stock markets since December 19, 2007, consists of a group of companies covering all areas of the audiovisual industry at a domestic and international level, and is one of the main Spanish audiovisual services and contents group.
Complainant claims that Vértice is active in Spain, Europe and America, particularly in Madrid, Catalonia, the Basque Country, the Canary Islands, Andalusia, Brussels, Paris, Berlin, the United States of America and Argentina. Vértice's growth in the USA and Latin America is relatively recent and proceeds through the subsidiary Vértice USA, Inc, a shareholder in the US company Powwow Mediapartners, based in Florida. While the business of Vértice USA is still at an early stage, the Vértice Group anticipates Vértice USA becoming the fundamental tool for Vértice's international growth in Spanish-speaking territories in the medium term.
Complainant states that the Vértice Group's operating activities focus on its subsidiaries. Each subsidiary operates under its own name and/or trademark, and they are recognised in the market as companies specializing in their businesses and closely linked to the Vértice Group..
Complainant advises that it is the group company listed on the stock market and thus the highest representative of all the companies within the Vértice Group. In the course of its activities as a business group since 2007, particularly during the last year, Complainant and even the Group itself have been referred in the media and in the audiovisual industry without distinction by the two trademarks held by Complainant, namely VÉRTICE 360 and VÉRTICE.
Complainant states that it is the registered owner of the following community trademarks: VÉRTICE 360, VÊRTICE, VERTICE and VERTICE 360, which were registered between August 12, 2008 and October 29, 2010 (“Complainant’s trademarks”), and during which time Respondent filed no opposition. The Group is also the lawful holder of the domain name <vertice360.com>, through which Internet users may access a webpage showing products and services offered by the Vértice Group.
Complainant states that according to the information available in the Whols database (GoDaddy.com, Inc), Respondent registered the Domain Name on July 11, 2003 and the registration was last updated on January 25, 2011. From the date of registration to the date on which Complainant first contacted Respondent requesting it to stop using the Domain Name and transfer it to Complainant, the Domain Name did not direct to an Internet site. When an internet user typed the Domain Name on the web browser's address bar, the message "Site not found" was returned. Complainant suggests that the Domain Name had not been used by Respondent since 2003.
Complainant advises that after it had received no response from Respondent to its various communications, on January 25, 2001 it requested the Madrid Public Notary, Mr Ignacio Paz-Ares, to issue a notarial certificate (acta notarial) recording the failure to use the Domain Name. On the same day Respondent updated the registration for the Domain Name with the registrar and, despite failing to show any activity until such time, Respondent also modified the status of the Domain Name, and redirected it to the webpage “www.interorealestate.com”. Complainant advises that from a search of this webpage, it showed no content relating to the "Vértice Financial Services" mark or any similar trademark.
Complainant advises that during the period it has taken Complainant to compile and prepare this complaint, and despite Respondent’s failure to answer Complainant’s correspondence, Respondent has introduced new content on its website, briefly explaining the services offered under the "Vértice Financial Services" brand.
Complainant submits Respondent has no legitimate interest in the Domain Name because the mark was abandoned on June 17, 2008 and that pursuant to the information obtained from the United States Patent and Trademark Office, such status has suffered no change, which Complainant suggests is evidence that Respondent has accepted this situation and has done nothing to remedy this event.
Complainant states that it has used the domain name <vertice360.com> to offer Internet users information on the Vértice Group's products and services, financial and business information and corporate governance issues, and it is also recognised by the "Vértice" and "Vértice 360" trademarks. Complainant advises that it started formalities to change the domain name to the main and more distinguishing element therein, namely the word "Vértice". Complainant claims that because initially the Domain Name directed to no web page it meant that it was not being used by the registered holder and therefore on November 18, 2010 Complainant sent an e-mail and fax to Respondent requesting the transfer of the idle Domain Name and offering reimbursement of any expenses incurred by Respondent as registration and maintenance fees. Respondent did not respond to this request. Complainant advises that on January 25, 2011 it again sent an email to Respondent and attempted to contact Respondent by several unsuccessful telephone calls. No response was received to this second email.
Complainant further advises that it then sent an email to Mr Christopher Moles who is a legal advisor of Respondent. Complainant notes that before receiving Mr Moles’ response, the Domain Name, which at that time directed to no web page, was then redirected to Respondent's web page. Complainant infers that the Domain Name which had remained idle since the date of registration, was redirected to Respondent's web page only as a reaction to Complainant’s correspondence.
On January 25, 2011 Respondent answered Complainant's request rejecting the transfer of the Domain Name in exchange of reimbursement of out-of-pocket costs and claiming the existence of an alleged right to the Domain Name based on the use of the "Vértice Financial Services" mark through which the Respondent intends to pursue the Project. Respondent further stated that the Project started in 2004 and was advertised under the "Vértice Financial Services" trademark in newspapers and leaflets.
Complainant submits that Respondent failed to provide any supporting documentation to its claim that the alleged mark had become a distinctive identifier associated with Respondent or any other claim showing preparations to use the Domain Name in the future. Complainant acknowledges that Respondent did provide marketing materials but states that they were of limited evidential value inasmuch as they failed to identify any reference dates, include any evidence of publication in any media, and provided no evidence of distribution thereof by way of advertising.
Complainant submits that after multiple requests for the transfer of the Domain Name, Respondent created new content in its website, briefly describing for the first time a series of services designed to combine the financial services associated to real estate transactions, to be offered under the abandoned mark. Complainant contends that the new content is not precise and access to it is not clear for Internet users. The content can only be accessed if the internet user types "vertice.com" and waits for automatic redirection to http://www.interorealestate.com/help/intero/aboutus.php?pg=/pages/intero- content/about-us/Vertice Financial Services, or alternatively through the "About" section in the web page, rather than through the "Get a Loan" section where Complainant suggests such financial information would naturally belong. Respondent's main page includes no reference to the "Vértice Financial Services" which Complainant suggests makes it even more difficult to make an association between the abandoned mark and Respondent.
Complainant contends that Respondent offered Complainant the Domain Name in exchange for Complainant paying the price of the transfer of a different domain name in which Respondent was interested, since this second domain name matched Respondent's corporate name (<intero.com>). This second domain name is held by a third company unrelated to the parties herein, and the price for such transfer amounted, as acknowledged by Respondent's itself, to an "unreasonable figure", which exceeded the price offered by Complainant in Complainant's first notice. The proposal, Complainant states, shows Respondent's bad faith and speculative intent, and was rejected by Complainant in its mail dated February 7, 2011. Respondent has not replied to this February mail.
Complainant submits that the Domain Name consists of a single word “Vertice” which is identical to its registered trademarks and the suffix TLD “.com”, which has no source-indicating significance.
Complainant contends that although the services Respondent intends being offered through its web page, albeit still non-existent, differ from Complainant’s business, it is no obstacle to a finding of identity or confusing similarity between Complainant's trademarks and the Domain Name and neither does the fact that Complainant’s trademarks were registered after registration of the Domain Name.
Complainant submits that the risk of confusion is high because neither Respondent nor Respondent's services are known in the market given that, as of the date of the Complaint, Respondent does not appear to be associated, in the public mind, with any goods or services offered under the abandoned trademark, and the Domain Name is identical to the VÉRTICE trademark and the other Complainant’s trademarks.
Complainant asserts that as at the date of the Complaint there is still no reference to the "Vértice Financial Services" mark on the main page of Respondent’s website, though Respondent has attempted to provide some content to and an appearance of use of the Domain Name by creating a new hyperlink to a short description of the services available under such mark on March 3, 2011. Complainant suggests that such a reaction by Respondent, reinforces Respondent's speculative and bad faith approach.
Complainant contends that it is unreasonable to consider that the Project, which Respondent claims to have started in 2004, is still under development in 2011 and that, following the notices sent by Complainant, such a Project is presented in Respondent's web page as being in an opening phase (or even in a development phase) as claimed by Respondent. Complainant notes that from other resolutions passed by OMPI panelists the period of preparation does not usually extend beyond one year.
Complainant submits that Respondent is currently using the Domain Name only for the purposes of redirecting Internet users to Respondent's web page, and the Domain Name was not associated to any web page developing the "Vértice Financial Services" mark. Complainant also submits that such mark is only included in a minor section of Respondent's web page and is not mentioned in any visible area in such page. Due to the full identity between Complainant's Trademarks and the Domain Name, the fact that the parties herein are not competing in the same market, Complainant argues that it is not an obstacle to a conclusion that the result of the use of the Domain Name is a diversion of Internet users to Respondent's web page which has commercial content.
Complainant submits that Respondent has no rights or legitimate interests in respect of the Domain Name and that although the general rule assumes that there is no bad faith when the Domain Name is registered prior to the registration of the trademark, since the holder of the Domain Name could not foresee the existence of the trademark, there are certain exceptions to the rule that apply to the case at hand.
Complainant alleges that Respondent’s registration of the Domain Name has been in bad faith because Respondent has not complied with the provisions of Paragraph 2 of the Policy which states that it is (Respondent’s) responsibility to determine whether the Domain Name infringes or violates someone else’s rights. Complainant asserts that a further example of Respondent’s bad faith registration is the failure to use and to passively hold the Domain Name.
Complainant further submits that under the Policy an offer to sell the Domain Name for valuable consideration in excess of the documented out-of-pocket costs directly related to the Domain Name is not only evidence of, but establishes that, the Domain Name is being used in bad faith.
Respondent asserts that it established the trademark VERTICE FINANCIAL SERVICES in 2004 and registered the Domain Name shortly after to protect its trademark. Respondent also asserts that at the time of the Domain Name registration Complainant did not exist and did not have any trademark that resembled that of Respondent.
Respondent states that it has invested millions of dollars into developing a one stop shop for home buyers to conduct all their financial business. Respondent contends that its plan has been to incorporate its popular real estate brokerage with a financial wing to facilitate all the needs of California home buyers. In 2008, Respondent acquired and reorganized "Mortgage Holdings, Inc." — a loan origination service which is now renamed "Western Bancorp, Inc." In October of 2010, Respondent partnered with Costello and Sons Insurance Company to create a one stop venture for homebuyers to shop for homeowner's insurance policies. In January of 2011, Respondent purchased a controlling share of "Orange Coast Title Co." in order to set up an affiliated escrow and title operation. Each of these acquisitions was confidential and required years of planning, fundraising and negotiating. The long term plan has been to incorporate these numerous acquisitions under the "Vertice Financial Services" brand. Respondent states that in order to protect the brand, and as a condition to appease shareholders, it did not wish to launch its Vertice Financial homepage prematurely, and it held the homepage until all businesses were acquired, organized, and launched as a cohesive unit.
Respondent contends that its plans were forced to change in early 2011 when it received an email from Complainant alleging non-use of the Domain Name and requesting that Respondent transfer the Domain Name for out of pocket costs. With the consent of the various shareholders, Respondent launched its website far ahead of schedule in a good faith attempt to demonstrate Respondent's intentions.
Respondent claims that it first published the trademark VERTICE FINANCIAL SERVICES in numerous periodicals and local newspapers dating back to 2004 and supports this claim by the fact that the United States Patent and Trademark Office granted Respondent trademark protection and certifies that the mark was first used in commerce on March 13, 2004.
Respondent states that it has continually used the trademark VERTICE FINANCIAL SERVICES since its inception and from 2004 through to 2009, Vertice Financial Services was a fully functional loan origination service. Respondent refutes Complainant’s argument that Respondent has "abandoned" its trademark and should therefore lose its Domain Name because it failed to timely reply to a United States Patent and Trademark Office (USPTO) office action in June of 2008. Respondent contends that this allegation is untrue and is irrelevant. It agrees that it did neglect to timely respond to a USPTO office action after its former Attorney of Record left amidst the 2008 recession.
Respondent asserts that as such, it did not learn of the office action until Complainant filed this claim in an attempt to hijack Respondent's Domain Name. Respondent has since appealed the USPTO decision and reapplied to the USPTO for protection based on the facts that the abandonment was not intentional and that the mark has continuously been used in commerce since 2004. Respondent asserts that as at the date of its Response it has taken all steps required by law to reinstate its trademark protection and the USPTO considers the mark VERTICE FINANCIAL SERVICES "live". Respondent states that it has not consciously or intentionally abandoned its trademark and rather it has continued to use its mark in commerce without break, and is entitled to the goodwill and value of its mark and the corresponding Domain Name.
Respondent states that it has since launched a holding page which briefly describes the expanded role of "Vertice Financial Services" and Respondent has linked its affiliated businesses to the page although the page is premature, since the various business have been purchased but they have not been rebranded and launched under the Vertice Financial Services brand. Respondent claims that it has plans to incorporate Vertice Financial Services and make its numerous acquisitions corporate affiliates. Respondent asserts that it currently uses the Domain Name and the corresponding trademark in commerce and the Domain Name is vital to its current and future business.
Respondent states that Complainant is a visual arts business located in Madrid, Spain that purports to concentrate its business activities in Spanish speaking countries and that Complainant did not establish its brand or trademark until 2008 — approximately five years after Respondent established the Vertice Financial Services trademark and registered the corresponding Domain Name. Complainant did not register its trademark VERTICE in the European Community Registry until October 2010. Respondent suggests that Complainant has virtually no name recognition within the San Francisco Bay Area housing market and Respondent did not know that Complainant existed until Complainant first contacted Respondent in January of 2011.
Respondent reiterates that it can demonstrate substantial preparations to use the domain vertice,com by its acquisition of Mortgage Holdings, Inc (now Western Bancorp), in an attempt to establish its Financial Services sector.
Respondent submits that the Domain Name is not identical or confusingly similar to Complainant's mark because Complainant does not offer services that are similar to that of Respondent and Complainant does not have any reasonable presence in Respondent's target community.
Respondent acknowledges that the name "Vertice360", the trademark VERTICE FINANCIAL SERVICES and the domain name <vertice.com> all use the word "vertice", and agrees that there are basic similarities. However Respondent suggests that the similarity stops at the word "vertice". The word "vertice" is very common in numerous languages; it is the English plural of vertex — meaning points of a triangle where all lines intersect and in Spanish and Italian, it is very common and means pinnacle or crown. Respondent asserts that according to the USPTO, there are numerous businesses, including its own business Vertice Financial Services, that make use of the word "vertice" in one or more of their valid trademarks. As such Respondent suggests, it is disingenuous to contend that the Domain Name is so confusingly similar to Complainant’s individual mark that Complainant is entitled to Respondent's Domain Name. Respondent submits that any number of active domains use the common word "vertice," and those domains are no more or less confusing with Complainant's mark than Respondent's Domain Name.
Respondent argues that the Domain Name is not used in any way that would lead web traffic to confuse the Domain Name with Complainant's trademark and there is no confusingly similar content or markings on Respondent’s webpage that would lead a reasonable person to believe that the Domain Name is affiliated with Complainant. Respondent also argues that Complainant's trade name "Vertice360" is different from the name "vertice," so that a reasonable consumer searching for Complainant's business would not type the domain “www.vertice.com” in hopes of finding "vertice360."
Respondent contends that Complainant cannot demonstrate that Respondent acquired and is using the Domain Name in bad faith primarily because Respondent acquired the Domain Name and corresponding trademark in 2004, approximately 5 years before Complainant first established its trademark for a dissimilar business in another country. Respondent submits that it did not obtain the Domain Name for the purpose of selling, renting, or otherwise transferring the Domain Name to Complainant because Complainant did not exist at the time that Respondent acquired the Domain Name and started trading as "Vertice Financial Services". Respondent further contends that the use of the Domain Name is not an attempt to cyber squat or otherwise infringe on Complainant's trademark because the businesses and services of Complainant and Respondent are wholly dissimilar, and Complainant has virtually no trademark recognition or professional presence in the San Francisco Bay Area real estate market where Vertice Financial Services primarily offers mortgage products and homeowners insurance.
Respondent asserts that it has never acted in bad faith and submits that as Complainant has failed to present an argument of bad faith the Complaint should be dismissed. Respondent requests that, given the lack of merit to Complainant's claim, the Panel consider a finding of reverse domain hijacking.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant asserts that it is the registered owner of the following community trademarks: VÉRTICE 360, VÊRTICE, VERTICE and VERTICE 360, and that these trademarks were registered between 2008 and 2010 (“Complainant’s Trademarks”). Complainant also relies on use of Complainant’s Trademarks in the course of trade.
Respondent in turn argues that its registration of the Domain Name predates Complainant’s alleged rights in Complainant’s Trademarks by a number of years. This however is not determinative as pursuant to the Policy 4(a)(i) the only relevant question at this point is whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, WIPO Case No. D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy 4(a)(i) but may prevent a finding of bad faith under Policy 4(a)(iii)). The latter part of the above quote is important, for the reasons which follow below.
Given the above the Panel concludes that the first element of the policy is satisfied.
B. Rights or Legitimate Interests
In seeking to answer the question whether Respondent has some rights or legitimate interests in registering and using the Domain Name it is appropriate to take into account Respondent’s assertion that it has invested significant sums in and established the trademark VERTICE FINANCIAL SERVICES in 2004 and registered the Domain Name shortly after that to protect its trademark. It is equally relevant to note that it is common ground that at the time the Domain Name was registered Complainant did not exist and did not have any trademark that resembled that of Respondent.
As much of the argument between the parties falls to be determined under the ground of bad faith the Panel is prepared to accept that Respondent is able to establish a prima facie right and interest in the Domain Name for the reasons set out immediately above. Reference is also made to the reasons that follow below.
Accordingly, Complainant fails to establish this element.
C. Registered and Used in Bad Faith
At the heart of Complainant’s objection is the argument that Respondent is passively holding the Domain Name, thereby preventing Complainant, which has certain rights over the Domain Name, from using it for its own business development. This argument is largely based on the assertion that Respondent has failed to use the Domain Name in a timely and adequate manner and that the Domain Name has only been used to redirect users to Respondent's web page. Complainant is also critical of the fact that Respondent appears to have made more active use of the Domain Name only once put on notice by Complainant.
In particular, Complainant argues that the mark VERTICE FINANCIAL SERVICES and its corresponding Domain Name were not mentioned on Respondent's residential real estate webpage until after Complainant’s threatened action and that bad faith can be inferred when a registrant makes greater use of a Domain Name after being threatened by a complainant. Respondent in turn responds by saying that its investment and preparations to use the Domain Name are apparent, as are its demonstrated uses for purposes of this dispute.
It appears from the record that Respondent is a legitimate business operating in the financial services and real estate area in California. Complainant does not seem to dispute this and for good reason. As mentioned above, Respondent notes that it held the Domain Name long before Complainant was founded and that Respondent’s brand, Vertice Financial Services, was used by its home mortgage originators from 2004 through the present. Perhaps Respondent could have used the Domain Name more actively and even been more assiduous in its commercial efforts under the Domain Name. However, that is not the point.
A registrant is entitled to use a domain name as it sees fit and according to its own commercial imperatives and circumstances, provided it has a legitimate interest in doing so and is not acting in bad faith.
In the present circumstances, the fact that Respondent held the Domain Name a number of years before Complainant was even founded and that Respondent’s brand, Vertice Financial Services, was used by it from 2004 onwards is a highly relevant factor. It suggests that the Domain Name was not and could not have been registered in bad faith and that the efforts that have made since registration to use the Domain Name are reasonable and there is nothing to lead to an inference, let alone a reliable finding, of bad faith use subsequently.
Finally, Respondent argues that Complainant’s actions amount to reverse hijacking. There is some basis for this assertion. However, on balance the Panel considers that Complainant legitimately believes that it has rights which have been trampled on. However, the Panel is of the view that even though Complainant has done too little too late, in the present situation, this does not amount to reverse hijacking.
For all the foregoing reasons, the Complaint is denied.
Clive L. Elliott
Dated: May 17, 2011