WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Computec S.A. v. Jose Luis Rivolta
Case No. D2013-0395
1. The Parties
Complainant is Computec S.A. of Bogotá D.C., Colombia, represented by Gómez-Pinzón Zuleta Abogados S.A., Colombia.
Respondent is Jose Luis Rivolta of Rosario, Santa Fe, Argentina.
2. The Domain Names and Registrar
The disputed domain names are <datacreditobogota.co>, <datacreditocolombia.com> and <datacreditoconsultagratis.com> which are registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2013. On February 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 27, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 6, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 7, 2013.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on March 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 2, 2013.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on April 10, 2013. This Panel finds that it was properly constituted. This 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 April 19, 2013, the Center communicated to the parties Procedural Panel Order No. 1. On April 23, 2013, Complainant filed with the Center its reply to Procedural Panel Order No. 1. Respondent did not file any reply to such Procedural Panel Order. In such Procedural Panel Order this Panel set forth April 29, 2013, as the deadline to forward its decision to the Center.
4. Factual Background
Complainant is a company incorporated under the laws of Colombia, domiciled at Bogota, Colombia.
Complainant has rights in the DATACREDITO mark, for which it holds several registrations, such as: registration No. 203438 in class 36, application date February 10, 1997, registered in November 1997, with the Colombian Office of Industry and Commerce; and registration No. 2883495 in class 38, application date December 19, 1998, registered in June 2011, with the National Institute of Industrial Property of Argentina.
Further, Complainant has rights in the DATACRÉDITO* and design mark, for which it holds several registrations, such as registration No. 214799 in class 36, application date May 27, 1998, registered in December 1998, with the Colombian Office of Industry and Commerce.
Complainant also has rights in the MI DATACREDITO mark, for which it holds several registrations, such as registration No. 420193 in class 36, application date June 1, 2010, registered in February 2011, with the Colombian Office of Industry and Commerce.
Complainant is the registrant of the domain names <datacredito.com> which was created on April 14, 2000, and <midatacredito.com> which was created on April 20, 2010.
The disputed domain names were created as follows: <datacreditoconsultagratis.com> on October 7, 2011, <datacreditocolombia.com> on January 24, 2012, and <datacreditobogota.co> on February 8, 2012.
5. Parties’ Contentions
Complainant’s contentions may be summarized as follows:
Complainant is a corporation established in Colombia in 1972, engaged in the processing, storage, management, transformation and communication of financial data in all its forms. DATACRÉDITO is the trade name and mark identifying one of Complainant’s business divisions, which has over 40 years of experience in the information solutions market and is the leading credit information head office in the Colombian, Peruvian and Venezuelan markets, and as a provider of informatics solutions for the taking of decisions based on the credit and loan granting cycles.
Additionally, under the marks DATACREDITO and MI DATACREDITO, and the domain names <datacredito.com> and <midatacredito.com> Complainant offers individuals an online service for them to check and monitor the status of their credit information, so that they can prevent risks of identity theft and preserve the possibility of obtaining from third parties loans and credits.
The disputed domain names are identical and confusingly similar to Complainant’s DATACREDITO and MI DATACREDITO marks. The suffix “consultagratis” (which translates to “free consultation”) is descriptive of the manner in which services are rendered, while the suffixes “Colombia” and “Bogota” are geographical names relating to Colombia and its capital city Bogotá. Consequently, those suffixes are irrelevant for avoiding likelihood of confusion between the disputed domain names and Complainant’s registered marks.
Since their creation, the disputed domain names have not been used by Respondents in connection with the offering in good faith of goods or services. Respondents are not holders or licensees of the DATACREDITO or MI DATACREDITO marks in any country, nor have Respondents registered the disputed domain names with authorization from any owner of trademarks. Respondents’ have never been commonly known by the words “datacredito” or “mi datacredito”.
Respondents use the disputed domain names for providing credit information services and advice, that is, for competing with Complainant in the market of financial information services. However, such competition is unfair and unjustified, since such use is made by reproducing, without authorization, Complainant’s marks and logos, giving the impression that Respondents’ websites are Complainant’s official “www.datacredito.com” and “www.midatacredito.com” websites.
Additionally, Respondents’ websites display links and advertisements that divert users to third parties’ advertising and websites. This circumstance makes evident that Respondents’ intention and practice is to use Complainant’s marks to draw Internet users to the disputed domain names for generating income for themselves or for third parties by displaying advertisements and links to advertising websites of third parties.
The registration of the disputed domain names was made in bad faith, because they incorporate the registered mark DATACREDITO of Complainant. That and the fact that the contents of Respondents’ webpages reproduce Complainant’s marks and provide information relating to services offered by Complainant’s business division named DATACREDITO, indicate that Respondents were fully aware of the existence of Complainant’s registered marks prior to registering the disputed domain names. These facts also point out that the choosing of the disputed domain names by Respondents was based on the value of Complainant’s marks MI DATACREDITO and DATACREDITO used in Colombia and other Latin-American countries, and with the intention of misleadingly diverting Internet users - in need of legitimate DATACREDITO or MI DATACREDITO information or services - to Respondents’ websites which operate as pay-per click pages or third parties advertising platforms.
Both the choosing and the use of the disputed domain names demonstrate that Respondents intentionally attempted to attract - and actually at present attracts – Internet users to the webpages where Respondents display advertising and numerous links to third parties advertising ads and web pages, by generating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement, between the disputed domain names and Complainant’s marks DATACREDITO and MI DATACREDITO.
Complainant requests the transfer of the disputed domain names.
Respondents did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
As regards who is the proper respondent in this case, pursuant to paragraph 1 of the Rules “Respondent means the holder of a domain-name registration against which a complaint is initiated”. The Complaint filed with the Center on February 26, 2013, named Whois Privacy Protection Service, Inc. as Respondent, since it appeared as the registrant of the disputed domain names as per the printouts of the corresponding WhoIs attached to the Complaint. At the Center’s request, the Registrar sent its registrar verification on February 27, 2013, disclosing Jose Luis Rivolta as the registrant of the disputed domain names and clarifying that the latter had been using a WhoIs privacy protection service. The amended Complaint filed with the Center on March 7, 2013, named as Respondents both Whois Privacy Protection Service, Inc. and Jose Luis Rivolta. Since the concerned Registrar confirmed in due course the name of the holder of the disputed domain names, in this case, this Panel decides to have only the named Respondent Jose Luis Rivolta as the proper respondent and thus further references to Respondent herein should be understood just to Jose Luis Rivolta1.
The lack of response from Respondent does not automatically result in a favorable decision for Complainant.2 The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that each disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of each disputed domain name; and (iii) each disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights in the DATACREDITO and MI DATACREDITO marks and the DATACRÉDITO* and design mark.
All the disputed domain names entirely incorporate the DATACREDITO mark, albeit with other words. The addition of such other words is not enough to avoid confusing similarity, nor does it add anything to avoid confusion with the DATACREDITO mark, which appears to be the central element in the disputed domain names. Prior UDRP panel decisions support this Panel’s view (see Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768).
Therefore, this Panel finds that each disputed domain name is confusingly similar to Complainant’s DATACREDITO mark.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Complainant asserts that it has not authorized Respondent neither to register a domain name incorporating the DATACREDITO mark nor to make any use of Complainant’s marks. Further, Complainant states that Respondent is not commonly known by such mark.
Complainant contends that Respondent is not using the website associated with the disputed domain names to offer its own products or services, but rather to refer to Complainant’s services along with Complainant’s marks and with advertisements and links featuring products and brands competing with those of Complainant. Such use of Complainant’s marks by Respondent does not establish rights or legitimate interests of Respondent in the disputed domain names.
This Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain names.3 In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to a possible right or legitimate interest in the disputed domain names by Respondent. In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using domain names which entirely incorporate Complainant’s DATACREDITO mark, this Panel considers that Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain names is in bad faith, which Respondent chose not to rebut.
Complainant has evidenced that the DATACREDITO mark was registered in 1997, that is, long before Respondent registered the disputed domain names in 2011-2012. This Panel notes that Complainant also holds the registration for such a mark in Argentina, the country where Respondent is domiciled pursuant to the Registrar’s report.
Taking into consideration that Complainant’s registration and use of the DATACREDITO and DATACRÉDITO* (and design) marks and the <datacredito.com> domain name preceded by several years the creation of the disputed domain names, Complainant’s Internet presence and the content of the websites associated with the disputed domain names, this Panel is of the view that Respondent should have been aware of the existence of Complainant and Complainant’s websites and marks at the time Respondent registered each of the disputed domain names.
Respondent is using Complainant’s marks at the disputed domain names without Complainant’s authorization. Further, the use of the disputed domain names for websites that display content generically similar to that featured in Complainant’s “www.datacredito.com” and “www.midatacredito.com” websites along with links to and advertisements of services offered by third parties constitutes an improper use of Complainant’s marks.4
Further, this Panel considers that in using the disputed domain names, Respondent has sought to create a likelihood of confusion with Complainant and Complainant’s marks as to the sponsorship or source or affiliation or endorsement of the websites associated to the disputed domain names, when in fact there is no such connection.
In light of all the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain names <datacreditobogota.co>, <datacreditocolombia.com>, and <datacreditoconsultagratis.com> be transferred to Complainant.
Date: April 29, 2013
1 The use of privacy service providers, the disclosure of underlying registrants and the determination of the proper respondent have been dealt with in several UDRP panel decisions. For instance, see The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services , WIPO Case No. D2007-1438; Costco Wholesale Corporation and Costco Wholesale Membership, Inc., v. Yezican Industries and Domains By Proxy, Inc., WIPO Case No. D2007-0638; and PRL USA Holdings, Inc. v. vivienne westwood / Contact Privacy Inc. Customer 0126347680, WIPO Case No. D2011-1292.
2 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, where it is established: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
3 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given [...] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.
4 See Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598: “A second factor found to support a finding of bad faith is Respondent’s knowledge of the Complainant’s mark. Respondent registered the “nikesportstravel.com” and “niketravelcom” Domain Names on May 14, 1999, long after Nike registered the NIKE mark. Respondent had substantial constructive notice of the NIKE mark”; Micro Electronics, Inc. v. J Lee, WIPO Case No. D2005-0170: “the sole use of the disputed domain name to divert traffic to a site providing sponsored links of various commercial companies is indicative of bad faith”; Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101: “registration of a domain name in order to utilize another’s well-known trademark by attracting Internet users to a website for commercial gain constitutes a form of bad faith”. See also Cine Craft Limited v. Team Cinipac Hosting Whois Protection, WIPO Case No. D2009-1560.