WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carlos Andrea González, Ramón Guiral Broto, José les Viamonte v. Contact Privacy Inc. Customer 011235504 / Hubert Seiwert
Case No. D2016-1468
1. The Parties
The Complainants are Carlos Andrea González, Ramón Guiral Broto and José les Viamonte of Ibiza, Spain, represented by Salvador Ferrandis & Partners, Spain.
The Respondent is Contact Privacy Inc. Customer 011235504 of Toronto, Ontario, Canada / Hubert Seiwert of Bonn, Germany, self-represented.
2. The Domain Name and Registrar
The disputed domain name <cafedelmar.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2016. On July 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 20, 2016, 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 July 21, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 26, 2016. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the amended Complaint on July 28, 2016.
The Center verified that the Complaint together with the amended Complaint and the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2016. An extension of the Response due date was granted until August 26, 2016 under paragraph 5(e) of the Rules. The Response was filed with the Center on August 26, 2016.
The Center appointed Luca Barbero as the sole panelist in this matter on September 6, 2016. 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 Complainants are the founders of a bar in the island of Ibiza called “Café del mar”, which was established in 1980. At the end of the 80s, the Complainants began selling compilations of the music that was played in their cafe.
Since 1994, the Complainants published music albums under the title “Café del Mar”, the first of which was released by the English company React Music, in which songs of artists such as Underworld, A Man Called Adam, Stelle, Tabula Rasa and others were included.
Two other compilations, “CAFE DEL MAR - Volume Two” and “CAFE DEL MAR - Volume Three”, were released in 1995 and 1996. Poligram UK (Universal Music) edited the music albums “CAFE DEL MAR - Volume Four”, “CAFE DEL MAR - Volume Five” and “CAFE DEL MAR - Volume Six” in 1997 and 1999.
On November 2004, the Complainants were awarded by the Spanish newspaper “El Mundo” the second prize in the category of “Performing Arts and Music” for its recording career that led them to sell more than 9 million CDs between 1994 and 2004.
The Complainants are the owners of the following trademark registrations:
- European Union Trademark No. 004067302 for CAFÉ DEL MAR (figurative mark), filed on October 8, 2004 and registered on January 3, 2006 for the products in classes 32 and 33;
- European Union Trademark No. 005798939 for CAFÉ DEL MAR (figurative mark), filed on March 20, 2007, and registered on February 28, 2008, for products in classes 9,15 and 16;
- European Union Trademark No. 001470772 for CAFÉ DEL MAR MUSIC (figurative mark), filed on January 21, 2000 and registered on April 21, 2004 for the products in classes 9, 25 and 42;
- European Union Trademark No. 006741722 for CAFÉ DEL MAR COMMUN ITY(figurative mark), filed on February 29, 2008 and registered on February 6, 2009 for products in classes 9, 25, 35, 38, 41 and 43.
The Complainants are also the owners of the domain name <cafedelmarmusic.com>, registered on August 25, 1999.
The disputed domain name <cafedelmar.com> was registered on February 28, 1999 and is currently pointed to the Complainants’ web site “www.cafedelmarmusic.com”.
5. Parties’ Contentions
The Complainants submit that their unregistered trademarks and registered trademarks Nos. 005798939 and 004067302 mentioned above are identical, from a denominative point of view, to the disputed domain name, since they are all exclusively composed of the terms “cafe del mar”. The Complainants also contends that their registered trademarks Nos. 001470772 and 006741722 coincide with the disputed domain name in the terms “cafe del mar”, while the addition of non-distinctive terms such as the terms “community” and “music” in the Complainants’ marks does not eliminate the existence of a high degree of similarity between the disputed domain name and the Complainants’ trademarks.
The Complainants state that the Respondent has no rights or legitimate interests in the disputed domain name since:
- The disputed domain name is not being used to make any bona fide offering of goods or services, as it is pointed to the Complainants’ web site “www.cafedelmarmusic.com”;
- Over the last 17 years, the Respondent has not used the disputed domain name in connection with any content, but has just used it to approximate to the original business of the Complainants;
- The Respondent has never been commonly known by the disputed domain name within any field/aspect whatsoever;
- The Respondent is neither making a legitimate noncommercial or fair use of the disputed domain name since the Respondent has not used it at all (except to redirect to Complainant’s website);
The Complainants also submit that the Respondent registered and used the disputed domain name in bad faith because:
- The Respondent does not conduct any legitimate commercial or noncommercial business activity associated to the disputed domain name and this has been so for the last 17 years;
- The Respondent has taken deliberate steps to ensure that its true identity cannot be determined by using a privacy contact service. It has only been after the filing of the original Complaint that the contact data have been made public;
- The existence of the disputed domain name is merely speculative and obstructive. It was just registered in order to prevent the Complainants from using a domain name that matched their well-known trademarks and business identifier;
- The CAFÉ DEL MAR trademarks were reputed all over the world at the time of registration of the disputed domain name (on the said date the CAFÉ DEL MAR venue had already been operative for almost 20 years, having received millions of customers from all over the world and eight CAFÉ DEL MAR music compilations were in the marketplace whose sales amounted to millions of units). Given that, it is clear that the Respondent sought to register the disputed domain name because of their association with the Complainants’ rights, reputation and business;
- The Respondent now redirects the disputed domain name to the Complainants’ website and uses robots.txt to prevent access to historical screenshots thereto.
The Respondent contends that “Café Del Mar” is a generic name consisting of the three common Spanish dictionary words “café”, “del” and “mar”, which have a combined meaning of “Café By The Sea” or “Café Of The Sea”, and submits that there exist a large number of unrelated cafes, restaurants and other hospitality businesses in many countries worldwide using an identical or similar name.
The Respondent submits a list of 124 currently operating cafes and restaurants collected from the web site “www.tripadvisor.com” database whose names are either “Café Del Mar” exactly, or whose names contain the term with minor additions, including the Complainants’ pub and a small number of businesses which the Respondent understands are officially licensed venues using the same logo which are affiliated with the Complainants. Therefore, the Respondent concludes that significantly more than 100 unaffiliated, separate businesses exist worldwide which have no relation to the Complainants and who chose the name “café del mar” independently, without seeking to copy or profit from the Complainants’ name or reputation. Amongst said independent businesses, the Respondent cites pubs named “Café del Mar” located in Panama, United Kingdom of Great Britain and Northern Ireland, Portugal, France and Italy.
The Respondent has also provided an extract from the Hoovers.com business database showing 54 registered business names in Italy, the United States of America, Brazil, France and other countries which contain the exact term “cafe del mar”. In addition, the Respondent submitted an extract from a travel guide published in 1985 which mentions a venue called “Cafe Del Mar” in Camino Del Mar, California, United States of America which is the earliest reference to any “café del mar” (including the Complainant’s) that can be found using a Google Books search.
The Respondent submits that its registration of the disputed domain name significantly predates the registration date of all the above trademarks by more than 5 years, having been created on February 28, 1999, and that, as such, the registered trademarks should carry little weight in deciding whether the Complainants have a claim on the domain name under the UDRP. The Respondent also alleges that attempting to use trademarks registered after a disputed domain registration as part of UDRP proceedings is a common element in attempts of “reverse domain name hijacking”.
The Respondent concludes that, because the disputed domain name consists solely of common dictionary words with the combined meaning of “café by the sea”, and because this name is used independently by hundreds of businesses around the world, the name must be considered generic in nature, and cannot be considered to specifically target or infringeon the rights of the Complainants.
The Respondent contends to have rights and legitimate interests in the disputed domain name because of the generic nature of the name and states that it the intent of its registration was not to resell it, although previous WIPO decisions support that a legitimate interest can exist for generic names even if reselling had been the intention.
The Respondent claims that it used the disputed domain name to host private web content wholly unrelated to the Complainants’ business in the early 2000s and that, as this is now more than 15 years ago, no public record and no private backup of this content still exists.
The Respondent also informs the Panel that it registered several other generic domain names around the same time in 1999 which it still owns, such as <skyscraper.net> (registered on March 9, 1999), <coolcomputers.com> (on March 9, 1999) and <theexhibition.com> (on November 5, 1999), which have also been used to host private web content or as vanity domain names for Internet relay chat (IRC) and email, and were also not registered with the intention of resale.
The Respondent asserts that its registration and use of the disputed domain name have not been in bad faith at any point in time because:
- It did not register the disputed domain name to prevent the Complainants from using it, and did not specifically target the Complainant in any way;
- It never attempted to sell the disputed domain name to the Complainants. The Respondent submits that this is strongly evidenced by the fact that it chose not to respond to emails from the Complainants and other third parties seeking to buy it. The Respondent also indicates to have received many inquiries and unsolicited offers up to USD 8,000 from parties unrelated to the Complainants over the 17 years it has owned the domain, but chose not to accept these offers;
- It never hosted any content on the disputed domain name which presented itself as endorsed by the Complainants (or any other company), and never sought to profit from the Complainants’ reputation in any way;
- It primarily used the disputed domain name for private purposes, i.e. as a memorable URL for private content and communications, and not for the purposes of hosting any web content for public consumption.
The Respondent asserts that the Complainants have not shown any evidence of bad faith use, conduct or content in relation to the disputed domain name, and that the Respondent set up redirection of traffic from “www.cafedelmar.com” to “www.cafedelmarmusic.com” after receiving an email from a representative of the Complainants, on February 26, 2015, which threatened UDRP action.
The Respondent further submits that redirecting traffic to “www.cafedelmarmusic.com” without asking for any compensation represents an action in good faith, allowing the Complainants free use of the disputed domain name for their business while maintaining legitimate and long-established ownership of the disputed domain name.
As to its use of a WhoIs privacy service, the Respondent alleges that millions of domain name owners legitimately choose to enable WhoIs privacy to protect their home address details and avoid spam, and that this does not constitute bad faith.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainants have provided evidence of ownership of European Union trademark registrations consisting of CAFÉ DEL MAR in association with figurative elements and/or other dictionary words. Two of the registered trademarks on which the Complainants rely are constituted of the terms “Café del Mar” with the addition of device elements and dictionary terms (“music” and “community”).
As stated in paragraph 1.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), ownership of a trademark generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration, and the goods and/or services for which it is registered, is irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.
In addition, as indicated in paragraph 1.11 of the WIPO Overview 2.0, figurative, stylized or design elements in a trademark are typically disregarded for the purpose of assessing identity or confusing similarity, being generally incapable of representation in a domain name.
The Panel notes that the disputed domain name incorporates the core of the Complainants’ trademarks CAFÉ DEL MAR in its entirety, with the mere addition of the generic Top-Level Domain suffix “.com”, which can be disregarded, being a mere technical requirement of registration without any particular relevance to the trademark in this matter.
Therefore, the Panel finds that the Complainants have proven that the disputed domain name is confusingly similar to the trademarks in which the Complainants have established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel acknowledges that the terms “cafe del mar” encompassed in the disputed domain name may correspond to the expressions “cafe by the sea” or “cafe of the sea”. The Panel also appreciates that, as submitted by the Respondent, also third parties providing bar or pub services use the same expression to identify their business.
With reference nevertheless to the issue whether a respondent automatically has rights or legitimate interests in a domain name comprised of dictionary terms, paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states the following:
“if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the UDRP, or any other basis for rights or legitimate interests, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a dictionary word or phrase. Factors a panel tends to look for when assessing whether there may be rights or legitimate interests would include the status and fame of the trademark, whether the respondent has registered other domain names containing dictionary words or phrases, and whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning (…). Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase)”.
In the case at hand, there is no relation between the Respondent and the Complainants and the Respondent has not obtained any authorization to use the Complainants’ trademarks or to register and use the disputed domain name. In addition, there is also no indication before the Panel that the Respondent might be commonly known by the disputed domain name.
The Panel notes that, at the time of the drafting of this decision, the disputed domain name is pointed to the Complainants’ web site “www.cafedelmarmusic.com”. The Respondent stated that it set up said redirection upon receiving a communication from the Complainants’ representative which “threatened UDRP action” and claimed to have registered the disputed domain name to host “private web content wholly unrelated to the Complainant’s business in the early 2000s”. The Respondent also pointed out that since “this is now more than 15 years ago, no public record and no private backup of this content still exists”.
Based on the documents and statements submitted by the parties, there is no evidence that the disputed domain name has been used by the Respondent in connection with a bona fide offering of goods or services prior to receiving notice of the dispute. In addition, also in light of the outcome of the Panel’s verifications as detailed under the following section, the Panel finds that the Respondent’s mere assertion that it registered the disputed domain name to use it in connection with private content is not sufficient to demonstrate that the disputed domain name was used for a legitimate noncommercial purpose relating to the generic or descriptive meaning of the disputed domain name itself.
In view of the above, the Panel finds that the requirement prescribed by paragraph 4(a)(ii) of the Policy has been met.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainants prove that the disputed domain name was registered and is being used by the Respondent in bad faith.
To prove the Respondent’s bad faith registration, the Complainants must demonstrate that the Respondent was or could have been aware of the Complainants’ trademark rights at the time of registration of the disputed domain name and that it registered the disputed domain name to target the Complainants’ trademark.
In the case at hand, the disputed domain name <cafedelmar.com> was registered on February 28, 1999 while the Complainants’ earliest European Union trademark registration for CAFÉ DEL MAR (figurative mark) was filed in January 21, 2000 and registered on April 21, 2004. The Complainants’ domain name <cafedelmarmusic.com> was registered on August 25, 1999.
The Complainants have demonstrated that they founded their bar named Café del Mar in Ibiza in 1980 and that their business acquired notoriety at least in Spain in the 90s in light of the Complainant’s music compilations commercialized under the title CAFÉ DEL MAR.
Although the Respondent did not acknowledge nor deny its knowledge of the Complainants and their business under the trademark CAFÉ DEL MAR, the Panel finds that, in view of the notoriety of the mark demonstrated by the Complainants in connection with its music compilations prior to the registration of the disputed domain name, the Respondent could have been aware of the Complainant’s rights in CAFÉ DEL MAR.
According to the documents and statements submitted by the Complainants, the disputed domain name is currently pointed to the Complainants’ web site and historical screenshots for the disputed domain name are not available on the “Archive.org” way-back machine due to the Respondent’s use of robots.txt. However, the Panel verified that historical screenshots for the disputed domain name are publicly available on “www.screenshots.com”. 1 A review of these screenshots shows that the disputed domain name was pointed, on May 3, 2005, to a web page where the disputed domain name was offered for sale and, on June 20, 2007, to a web site promoting the sale of CAFÉ DEL MAR music compilations, including the first editions released on 1995 and 1996. Subsequent screenshots of the Respondent’s web site at the disputed domain name (dated November 22, 2009, February 2, 2010, November 28, 2010 and March 11, 2011) show that it was used to display several sponsored links mostly related to music compilations.
The Panel infers from the Respondent’s previous use of the disputed domain name to promote the resale of the first CAFÉ DEL MAR music compilations released by the Complainants that the Respondent was therefore aware of the Complainants and very likely registered the disputed domain name with the intention to target the Complainants and their business.
The Respondent’s statements as to its use of the disputed domain name to host personal private content, which are not in line with the actual use shown by the historical screenshots, the Respondent’s use of robots.txt, the adoption of a privacy service to shield its contact details in the WhoIs records, as well as the current redirection of the disputed domain name to the Complainants’ web site, support the finding that the Respondent did not register and use the disputed domain name in bona fide without intention to trade upon a third party mark. To the contrary, the circumstances highlighted above indicate that the Respondent, on balance of probabilities, registered and used the disputed domain name with the Complainants and their trademark rights in mind, in order to derive profit from the likelihood of association with the Complainants and their products. See also in this regard Pixers Ltd. v. Whois Privacy Corp., WIPO Case No. D2015-1171.
Therefore, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <cafedelmar.com> be transferred to the Complainant.
Date: September 21, 2016