WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mr. Ángel Custodio Dalmau Salmon & Blue Tower, S.L. v. Unitedeurope Consulting
Case No. D2011-0796
1. The Parties
The Complainant is Mr. Ángel Custodio Dalmau Salmon & Blue Tower, S.L., Barcelona, Spain, represented by Ubilibet, Barcelona, Spain.
The Respondent is Unitedeurope Consulting, Gwangju, the Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <custo.com> is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2011. On May 6, 2011, the Center transmitted by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.com a request for registrar verification in connection with the disputed domain name. On May 11, 2011, Korea Information Certificate Authority Inc. d/b/a DomainCa.com transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on May 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2011. The Response was filed with the Center on June 5, 2011.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on June 20, 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 Dalmau brothers, Custo and David, created Custo in the early 80’s. The Complainant is Mr. Ángel Custodio Dalmau Salmon & Blue tower, S.L. The Panel notes that Mr. Dalmau is the owner of the CUSTO trademarks, and Blue Tower, S.L. manages the business of the trademarks. Both Complainants have a common grievance against the Respondent, and it is equitable and procedurally efficient to permit the consolidation. The name “Custo” has mainly been registered together with a range of generic and territorial extensions. CUSTO is a well-known fully-registered trademark which is known nationally and internationally by the general public in the area of fashion clothes. The disputed domain name <custo.com> was registered by the Respondent on March 15, 1999. Some of the Complainant’s trademarks, for example, the CUSTO LINE trademark, were registered prior to March 15, 1999, for instance in the Republic of Korea, Malaysia, Hong Kong, SAR of China, Israel, Greece, New Zealand, Uruguay, Canada, and Cyprus. The Complainant has 80 shops and more than 3,000 retailer locations around the world. The Complainant recorded turnover of 77 million Euro in 2010.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to marks in which the Complainant has rights.
The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name, and confirms that it has not authorized or licensed rights to the Respondent in any respect.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith.
The Respondent responded on June 5, 2011 in Korean. The Respondent claims that the Complainant registered trademarks in Korea for CUSTO LINE and not CUSTO, and that the disputed domain name <custo.com> is not identical or confusingly similar to “www.custo-barcelona.com” which the Complainant mainly uses for the operation of a website after having launched Custo Line. On this point, the Respondent contends that the name “Custo” was not listed or registered as a trademark in the Korea Intellectual Property Office at the time of the Respondent’s registration of the disputed domain name. Furthermore, the Respondent contends that the Complainant rather attempts to deprive the Respondent of the disputed domain name that the Respondent registered prior to the Complainant’s registration of trademarks which occurred three to four years later.
6. Discussion and Findings
A. Language of Proceedings
The Complaint was filed in the English language. It is noted that the language of the registration agreement for the disputed domain name is Korean.
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, although the registration agreement for the disputed domain name was made in the Korean language, it is also apparent from previous UDRP decisions that the Respondent has been named as a respondent in the cases that were conducted in English (See Casa Bahia Comercial Ltda. v. Unitedeurope Consulting, WIPO Case No. D2010-1660, MasterCard International Incorporated v. Unitedeurope Consulting, WIPO Case No. D2007-0830, and Deutsche Telekom AG v. Unitedeurope Consulting, WIPO Case No. D2006-0930), and that accordingly the Respondent would appear to have sufficient ability communicating in the English language. It is also noteworthy that the Center in initially deciding to proceed with acceptance of the Complaint in English nevertheless communicated with the Parties in both English and Korean, indicated that it would accept a Response in either English or Korean and indicated it would (and has) appointed a Panel familiar with both English and Korean.
On the other hand, the Complainant is not able to communicate in Korean and therefore, if the Complainant were to submit all documents in Korean, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of proceeding in this case. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679.
B. Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complaint must prove each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
C. Identical or Confusingly Similar
The Complainant registered the CUSTO and CUSTO LINE trademarks in various jurisdictions around the world. The Complainant has several lines like Custo Barcelona; the highest quality, Custo Line; the most casual and trendy, and Custo Growing; the line for children. When a person enters the word Custo or Custo Line on the popular Internet search engine, a number of results appear concerning various websites that refer to the Complainant. Additionally, Custo and Custo Line appear in the most important on-line and traditional newspapers and magazines worldwide. The Panel views that the disputed domain name comprises a significant part of the Complainant’s registered CUSTO LINE marks and is thus confusingly similar to the Complainant’s marks pursuant to the Policy, paragraph 4(a)(i).
D. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. In connection with the burden of proof, several decisions of UDRP panels have held that “[o]nce a Complainant establishes prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondents to rebut the showing.” See LEGO Juris A/S v. Chung Hong Phil, WIPO Case No. D2009-1288; Ets Leobert, SARL v. Jeonggon Seo, WIPO Case No. D2009-0004; University City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its mark; the Panel further notes that there is nothing in the record to suggest that the Respondent is, or has ever been, commonly known by the disputed domain name. The Panel’s view is that these facts must be taken as proven in the circumstances of this case provided that they have not been denied by the Respondent.
The Respondent failed to invoke any circumstances that could have demonstrated any right or legitimate interest in the disputed domain name under paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Respondent has no right or legitimate interest in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
E. Registered and Used in Bad Faith
Both under past UDRP decisions (see for instance Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806 and Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397) and under the Policy itself (see paragraph 2), a well-established principle is that when someone registers a domain name, it represents and warrants to the registrar that, to its knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s mark is widely known, it is unlikely that the Respondent, at the time of registration of the disputed domain name or thereafter, was not aware of the Complainant’s trademark.
Given the reputation of the Complainant’s marks, the Panel is of the opinion that the Respondent was aware or should have been aware of the Complainant’s mark and claims of rights thereto at the time of the registration of the disputed domain name. Further, any trademark check of the records of the patent and trademark offices of various jurisdictions would have made the Complainant’s registrations known to the Respondent.
The Complainant cites paragraph 4(b)(iv) of the Policy, and notes that the Respondent, in using the domain name, intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or of the products sold on that website.
The Respondent is, in using the domain name, attracting Internet users to the Respondent’s website. The redirection of a domain name reproducing a prior trademark to this kind of referral website is further evidence of bad faith. See Big Dog Holding, Inc. d/b/a/ Big Dog Sportswear v. Frank Day, Red River Farms, Inc., NAF Claim No. FA 93554.
The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly, the Panel concludes on the record before it that the Respondent registered and is using the disputed domain name 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 <custo.com> be transferred to the Complainant.
Thomas P. Pinansky
Dated: July 4, 2011