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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AMV v. Jhon Gómez

Case No. D2015-0088

1. The Parties

The Complainant is AMV of Merignac, France, represented by Maître Gossin, France.

The Respondent is Jhon Gómez of Distrito de Cayo, Belize.

2. The Domain Name and Registrar

The disputed domain name <moto-spot.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2015. On even date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 21, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on the same date providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

On January 21, 2015, the Center informed the Parties that the Complaint had been submitted in French whereas the language of the registration agreement for the disputed domain name was English. The Center requested the Complainant to submit: (1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in French; or (2) the Complaint translated into English; or (3) a request for French to be the language of the administrative proceedings.

The Complainant filed an amended Complaint, translated into English, on January 23, 2015.

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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 27, 2015. In accordance with paragraph 5(a) of the Rules, the due date for the Response was February 16, 2015. The Response was filed with the Center on February 13, 2015.

The Center appointed Brigitte Joppich as the sole panelist in this matter on February 24, 2015. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is an insurance broker specializing in motorcycle insurance. Since 2011, the Complainant has been offering a free social network intended to facilitate relationships between drivers of two-wheeled vehicles by enabling them to exchange information related to motorcycles under the name “motospot”, which is available at “www.motospot.fr”. The domain name <motospot.fr> was registered on September 9, 2011.

The Complainant owns rights in the French trademark registration No. 3859965 MOTOSPOT, filed on September 19, 2011 with regard to services in classes 35, 36, 38, 41 and 45 (“the MOTOSPOT Mark”).

The disputed domain name was first registered on March 15, 2014 in the name of A.Torres, who used a privacy shield with an address in Roubaix, France. On December 16, 2014, the disputed domain name was transferred to the Respondent Jhon Gómez of Distrito de Cayo, Belize.

The disputed domain name is used in connection with an online geo location service enabling motorbike riders to spot their position. On November 1, 2014, A.Torres changed all references on the contested website from “Moto Spot” to “Motorbike Spot Riders” while the service as suchremained the same. On February 1, 2015, the Respondent migrated the website at the disputed domain name to the domain name <spot-riders.com>. Presently, the disputed domain name redirects Internet users to the Respondent’s new website “www.spot-riders.com”.

The Complainant sent a cease and desist letter in French to A.Torres on October 24, 2014. A.T. replied to such letter through his lawyer on November 1, 2014 in Spanish.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.

(1) The disputed domain name is identical to the MOTOSPOT Mark as the additional hyphen between the two words is not enough to differentiate the disputed domain name from the Complainant’s trademark and as the disputed domain name is a clear case of typosquatting.

(2) The Complainant argues that the Respondent was not known by the disputed domain name and that the Respondent must have known the Complainant’s social network when registering the disputed domain name and creating a web platform for motorcycle drivers that is similar to the Complainant's social network. The Complainant argues that, previously, regardless of the spelling used to search for “moto spot”, search engines systematically revealed the Complainant’s social network, which is no longer the case. The Complainant contends that, by imitating the Complainant’s domain name and just adding a hyphen, the Respondent is creating confusion in the minds of Internet users who falsely think they are accessing the English version of the Complainant’s social network.

(3) The Complainant states that the disputed domain name was registered and is being used in bad faith. It argues that the Respondent is using the disputed domain name in connection with an English website that offers the same services as those provided on the Complainant’s site, namely a social network designed for motorcycle drivers, which confuses users and might divert the Complainant's clientele. The Complainant further contends that the Complainant’s social network and the MOTOSPOT Mark have existed long before the Respondent’s domain name and that the Respondent has knowingly tried to attract Internet users for commercial gain to his online social networking site by creating a likelihood of confusion with the Complainant’s trademark and website, and that the Respondent has also taken advantage of the reliability and reputation of the Complainant’s social network. The Complainant states that the Respondent is “stealing traffic” for the Respondent’s benefit and that, as a result, the Complainant has experienced lower traffic on its site. Finally, the Complainant states that the disputed domain name was previously registered in the name of a third party, who was informed of the situation by an email dated October 24, 2014 and who has since transferred the domain name to the present domain name owner, and that the new domain name owner used a privacy shield which demonstrates bad faith.

B. Respondent

The Respondent denies the Complainant’s assertions.

With regard to the facts of this case, the Respondent states that the website available at the disputed domain name is not a social network comparable to the Complainant’s service but provides a geo location system for motorbike riders in trouble offering possibilities to communicate via short message service and email in real time. Furthermore, the Respondent stresses the fact that the previous domain name owner not only received a cease and desist letter but also replied thereto, and that the Complainant concealed this fact. Furthermore, the Respondent states that the previous owner of the disputed domain name was not located in France but used the Registrar’s privacy shield which led to the fact that an address in France was listed in the WhoIs database. In fact, the project for the disputed domain name <moto-spot.com> originated in Spain, and the disputed domain name was registered with the Spanish registrar OVH Spain.

With regard to the elements specified in paragraph 4(a) of the Policy, the Respondent argues as follows:

(1) The Respondent states that “moto” and “spot” are two generic terms very common in Spain which were chosen to create a short and easy to remember name for a website where riders in trouble can get help from other riders all around the world, and not only in France, where the Complainant’s trademark is registered.

(2) The Respondent states that the services provided at the disputed domain name are legitimate, that the services are not comparable to the ones provided by the Complainant at “www.motospot.fr”, that “moto” and “spot” are generic and very common terms used all around the world, and refer to the Respondent’s services related to the location (“spot”) of motorbikes (“moto”). The Respondent also denies that the Respondent’s website has had a negative impact on the Complainant’s website’s ranking in search engines.

(3) The Respondent states that the previous domain name owner did not know about the existence of the Complainant and its website in France. It further contends that a search for “moto spot” or “motospot” in Google Spain from a browser in Spanish language and from a Spanish location does not lead to any websites related to the Complainant. The Respondent states that none of the services provided by the website available at the disputed domain name are in competition with the Complainant’s services, that the overall impression of the Respondent’s website is completely different from that of the Complainant's website, that the latter is far from being popular on the Internet, that anyone intending to steal traffic from another website would surely have chosen another target, and that any loss on the Complainant’s web traffic is not caused by the Respondent. With regard to the domain name transfer, the Respondent argues that such transfer was made as the previous owner did not have enough time to dedicate to the site. Furthermore, it states that the use of a privacy service is completely legitimate and a common protection from spam. The Respondent requests a finding of Reverse Domain Name Hijacking.

6. Discussion and Findings

The first point to be dealt with is the transfer of the disputed domain name from A. Torres to the Respondent. The Panel is aware that paragraph 8(a) of the Policy prohibits the transfer of a domain name “during a pending administrative proceeding and that the disputed domain name was transferred to the Respondent after the previous domain name holder received the cease and desist letter and therefore with knowledge of the dispute leading to the present proceedings. However, the excerpts from the WhoIs database provided by the Complainant reveal that the disputed domain name was still registered by the previous domain name holder on December 11, 2014 (Annex 3 to the Complaint) and was already registered in the name of the Respondent’s privacy shield on January 19, 2015 (Annex 6 to the Complaint). Therefore, as the Complaint was filed on January 20, 2015, and the transfer occurred on December 16, 2014, the Panel finds that the transfer did not occur during a pending administrative proceeding and that the Respondent did not engage in a cyberflight.

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name fully incorporates the Complainant's MOTOSPOT Mark and is confusingly similar to such mark. The mere addition of the hyphen between the two words “moto” and “spot” does not hinter a finding of confusing similarity.

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests / Registered and Used in Bad Faith

The Panel finds that the Complainant has not fulfilled its burden of proof with regard to the Respondent’s rights or legitimate interests and bad faith registration and use.

The Complainant asserted that the disputed domain name is used in connection with a service competing with the Complainant’s service and that the Respondent lacks rights or legitimate interests in the disputed domain name. However, the Complainant provided no evidence whatsoever related to the Respondent’s alleged use of the disputed domain name.

With regard to a respondent’s rights or legitimate interests, it is well established, that, although it is sufficient that a complainant shows a prima facie evidence in order to shift the burden of production on a respondent, a complainant’s mere allegation without supporting evidence is not sufficient in this regard (cf. Phoenix Polska Sp. Z o.o. v. Miroslaw Buldo, WIPO Case No. D2011-2225). In the present case, the Complainant merely alleges that the Respondent is not known by the disputed domain name, that the Respondent provides a social network at the disputed domain name, and that he must have been aware of the Complainant. The Complainant did not provide a screenshot of the Respondent’s website or mention the fact that the disputed domain name is made up of generic words, which are commonly used by third parties. As a result, the Panel finds that the Complainant has not met its burden of proof in this regard. Furthermore, the evidence provided by the Respondent shows that the website at the disputed domain name provides in fact services that enable motorbike riders to get in contact with other motorbike riders near them if they need help or advice, i.e., for a specific purpose. The services offered by the Respondent are used in connection with a purpose relating to the generic and descriptive meaning of “moto” and “spot”. In this regard, the Respondent’s service differs substantially from the Complainant’s social network and therefore might even be considered as bona fide under the Policy.

With regard to the Respondent’s bad faith registration and use of the disputed domain name, the Panel finds that the Complainant has not met his burden of proof in this regard either. With regard to bad faith registration, the Complainant failed to provide evidence that the Respondent must have been aware of the Complainant’s services, which are provided in French only. In this context, the Complainant only relies on the fact that the Complainant’s services predate the offer by the Respondent but not on any additional circumstances which would support a finding that the Complainant’s website and services enjoy international renown or are known at least in France. Given that the disputed domain name is comprised of dictionary word and that the Respondent’s service relates to their meaning, the Complainant’s allegations are not sufficient for a finding of bad faith registration. With regard to bad faith use, once more, the Complainant did not provide any documents evidencing the Respondent’s use of the disputed domain name in bad faith under paragraphs 4(a)(iii) and 4(b) of the Policy.

In addition, the Complainant deliberately concealed facts from the Panel, namely the content of the Respondent’s website and the fact that the Respondent replied in substance to the Complainant’s cease and desist letter.

As a result, the Panel finds that the Complainant has not satisfied the requirements of paragraph 4(a)(ii) and (iii) of the Policy and that the Complaint must be denied.

7. Reverse Domain Name Hijacking

The Respondent requests a finding of Reverse Domain Name Hijacking. Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. In addition, Reverse Domain Name Hijacking is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.

The onus is on the Respondent to prove that the Complainant filed its Complaint in bad faith for the purposes of Reverse Domain Name Hijacking. A decision of Reverse Domain Name Hijacking is reserved for clear cut cases that are clearly brought with the intent to harass the Respondent, without there being any possibility of the Complainant reasonably believing that it had at least an arguable case. The failure of the Complainant to succeed in these proceedings is not in itself sufficient to result in a finding of Reverse Domain Name Hijacking.

The Panel is of the opinion that the Complainant had reasonable grounds to believe that it had a legitimate case at the time of filing the Complaint. However, where the Complainant fell short was in providing evidence to establish the second and third element of the Policy. As such, the Panel finds that the Complaint was not brought in bad faith and therefore rejects the Respondent’s request for a finding of Reverse Domain Name Hijacking.

8. Decision

For the foregoing reasons, the Complaint is denied.

Brigitte Joppich
Sole Panelist
Date: March 9, 2015

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