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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

GAMESA Corporación Tecnológica, S.A. v. Contact Privacy Inc. - Customer 0139248734 / Zaki Mohamed

Case No. D2016-0295

1. The Parties

The Complainant is GAMESA Corporación Tecnológica, S.A. of Zamudio, Vizcaya, Spain, represented by Elzaburu, Spain.

The Respondent is Contact Privacy Inc. - Customer 0139248734 of Toronto, Ontario, Canada / Zaki Mohamed of Quebec, Canada.

2. The Domain Name and Registrar

The disputed domain name <gamesa.com> (the "Domain Name") is registered with Tucows Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 12, 2016, naming a privacy service as the Respondent. The Center transmitted its request for registrar verification to the Registrar the same day. The Registrar replied the same day, confirming that the Domain Name was registered with it, and stating that the named Respondent was not the registrant, but a privacy service offered by the Registrar. The Registrar identified the registrant as Zaki Mohamed and provided the full contact details held on its WhoIs database in respect of the Domain Name. The Registrar confirmed that the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP") applies, that the registration agreement is in English and contains a submission to the jurisdiction at the Registrar's principal office, and that the Domain Name was on Registrar Lock and will remain locked during this proceeding. The Registrar also stated that the registration of the Domain Name was transferred to it on January 18, 2015.

The Center invited the Complainant by email of February 16, 2016, to amend the Complaint to identify Zaki Mohamed as the Respondent. The Complainant submitted an amendment to the Complaint on February 19, 2016, naming Zaki Mohamed as second Respondent.

The Center also notified to the Complainant on February 16, 2016, a formal deficiency of the Complaint, in that the size limit of 10 MB for a single file or single email had been exceeded. The Complainant remedied the deficiency on February 17, 2016, by splitting a single file containing all the Annexes into nine separate files and emailing them separately to the Center.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the 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 and 4 of the Rules, the Center formally notified the Respondents of the Complaint and amendment to the Complaint, and the proceedings commenced on February 22, 2016. In accordance with paragraph 5 of the Rules, the due date for Response was March 13, 2016. The Respondents did not submit any Response. Accordingly, the Center notified the Respondents' default on March 14, 2016. The Respondent Mohamed Zaki replied to the notification of default by an email the same day which merely said "I am the current registrant of gamesa.com / Are you need any information for me? please specify". The Center acknowledged receipt by an email on the same day which also noted that the due date for Response was March 13, 2016.

The Center appointed Jonathan Turner as the sole panelist in this matter on March 23, 2016. 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. Having reviewed the file, the Panel is satisfied that the Complaint together with the amendment to the Complaint complied with applicable formal requirements, was duly notified to the Respondents and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.

4. Factual Background

The Complainant is a Spanish company principally involved in the fabrication of wind turbines and the construction of wind farms. It began its operations in 1976 and has now installed more than 10,000 MW of electricity production in four continents, with over 20,000 MW of production in development in Europe, America and Asia. It is also involved in the construction of photovoltaic power stations.

The Complainant has registered a number of European, Spanish and International trademarks consisting of a logo containing the name "Gamesa".

At the time of preparation of the Complaint the Domain Name was directed to a parking page which offered it for sale, describing it as "a great and brandable domain name, easy to spell and easy to remember".

5. Parties' Contentions

A. Complainant

The Complainant refers to its registered trademarks containing the name "Gamesa" and contends that the Domain Name is identical to its mark GAMESA.

The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant states that the Respondent has not used or made demonstrable preparations to use the Domain Name for a bona fide offering of goods or services, but rather has directed it to a parking page which offers it for sale. The Complainant adds that the Respondent is not commonly known as "Gamesa" and does not appear to own any trademark or rights in this term. The Complainant further notes that the Respondent is not making legitimate noncommercial or fair use of the Domain Name.

The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant refers firstly to the fact that the Domain Name is offered for sale. The Complainant stresses that GAMESA does not exist as a word in English or Spanish, but is very well known worldwide in the renewables sector as the Complainant's mark. In these circumstances, the Complainant considers that the registration and offer for sale of this Domain Name indicate a deliberate intention to create confusion with its mark.

The Complainant draws attention, secondly, to the numerous domain names registered in the name of the original respondent, the privacy service, which have been found to be registered and used in bad faith. Thirdly, the Complainant submits that the use of a privacy service is itself an indication of bad faith.

The Complainant requests a decision that the Domain Name be transferred to it.

B. Respondent

As stated above, the Respondents did not reply to the Complainant's contentions.

6. Discussion and Findings

The Panel regards Zaki Mohamed as the real Respondent and will refer to him as "the Respondent" in the following discussion and findings.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn.

In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent's default in failing to file a response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has registered rights in a logo containing the word "Gamesa".

The Panel is also satisfied that the Domain Name is confusingly similar to this mark. The invented word "Gamesa" is a dominant feature of the mark and is reproduced in the Domain Name in its entirety without any addition apart from the generic Top-Level Domain ("gTLD") suffix, which should be discounted since it does not provide any real distinction for Internet users.

The first requirement of the UDRP is satisfied.

B. Rights or Legitimate Interests

The Complainant finds on the evidence that the Respondent has not used or made demonstrable preparations to use the Domain Name for a bona fide offering of goods or services, and that he is not making any legitimate noncommercial or fair use of the Domain Name. On the contrary, as at the time of preparation of the Complaint, the Domain Name was merely directed to a parking page which offered it for sale.

The Respondent is not commonly known by the Domain Name and does not own any trademark rights in a corresponding name.

On the evidence, there is no other basis on which the Respondent could claim any rights or legitimate interests in the Domain Name. The Panel finds that he has none. The second requirement of the UDRP is satisfied.

C. Registered and Used in Bad Faith

The Panel notes the Complainant's evidence that GAMESA does not exist as a word in English or Spanish, and that the Complainant is widely known under this mark. In these circumstances, the Complainant's allegation that the Respondent registered or acquired the Domain Name primarily for the purpose of selling it at a profit to the Complainant or a competitor of the Complainant is plausible. Since it is not disputed and in view of the Respondent's default, the Panel accepts it pursuant to paragraph 14(b) of the Rules.

In accordance with paragraph 4(b)(i) of the UDRP these circumstances constitute evidence of registration and use in bad. This presumption is not displaced by any material to the contrary in the file. The Panel therefore concludes that the Domain Name was registered and is being used in bad faith.

All three requirements of the UDRP are satisfied and it is appropriate to order that the Domain Name be transferred to the Complainant.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <gamesa.com> be transferred to the Complainant.

Jonathan Turner
Sole Panelist
Date: April 6, 2016

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