WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Big Cartel, LLC v. Gustavo Kramer Vardacosta

Case No. DTV2011-0013

1. The Parties

The Complainant is Big Cartel, LLC, of Salt Lake City, Utah, United States of America, represented by Stoel Rives, LLP, United States of America (“US”).

The Respondent is Gustavo Kramer Vardacosta, of Barcelona, Spain.

2. The Domain Name and Registrar

The disputed domain name <bigcartel.tv> (the “Disputed Domain Name”) is registered with 1&1 Internet AG.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2011. On the same date, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the Disputed Domain Name. On September 14, 2011, 1&1 Internet AG 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 September 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2011.

On September 27, 2011 the Center received an email communication in Spanish from the Respondent requesting a Spanish copy of the documents sent. On September 28, 2011, the Center acknowledged receipt of said communication informing the Respondent that 1 & 1 Internet AG had confirmed that the language of the registration agreement is English and consequently, the administrative proceeding would be conducted in English.

On September 28, 2011, the Center received an email communication in Spanish from the Respondent stating that he had bought the Disputed Domain Name in Spain, that his mother tongue was Spanish and requesting information in Spanish.

On September 30, 2011, the Center requested 1 & 1 Internet AG to re-confirm the language of the registration agreement, which was re-confirmed by them on the same day. Accordingly, on this date, the Center informed the Respondent that 1 & 1 Internet AG had re-confirmed that the language of the registration agreement is English and consequently, subject to the authority of the independent Panel to determine otherwise on the appointment on due course, the administrative proceeding would be conducted in English, pursuant to UDRP Rule 11. The Center also reminded the Respondent that the last day for submitting any Response was October 17, 2011.

On October 19, 2011, the Center notified the parties that the due date for Response was October 17, 2011 and pursuant to Paragraph 6 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Center would proceed to Panel Appointment.

On October 19, 2011, the Center received an email communication in Spanish from the Respondent indicating that he had not received the information in Spanish and that he had bought the Disputed Domain Name in Spain. On October 25, 2011, the Center acknowledged receipt of said email communication and informed the Respondent, again, that 1 & 1 Internet AG had re-confirmed that the language of the registration agreement is English and consequently, subject to Panel authority to determine otherwise, the administrative proceeding would be conducted in English. Moreover, the Center informed the Respondent that as the specified due date for submission of a Response had passed, and the Rules make no express provision for the filing of materials by either party at that stage of the proceedings except as may be specifically requested by the Panel, the Center would alert the Panel to the receipt of the said communication and that it would then be at the sole discretion of the Panel as to whether it wishes to consider such communication, and further procedural steps that may be required (if any).

On October 25, 2011, the Center received an email communication in Spanish from the Respondent stating that he had legally bought the Disputed Domain Name in Spain, he pays taxes in Spain and requesting a Spanish translation of the documents/communications sent from the Complainant and the Center. On November 4, 2011, the Center informed the Respondent, again, that English was the language of the proceeding, that the Panel would be alerted of the receipt of the said communication and that it would then be at the authority and discretion of the Panel as to whether it wished to consider such communication, and further procedural steps that may be required (if any).

Finally, on November 4, 2011, the Center received an email communication in Spanish from the Respondent requesting the Center not to contact him anymore in the event that there was no interest in buying his Disputed Domain Name. The Center acknowledged receipt of the Respondent's email communication and informed him that it would be brought to the Panel’s attention for consideration.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on November 18, 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. Language of Proceedings

The Respondent has repeatedly insisted in its communications with the Centre (as described above under Procedural History) that copies of the Complaint and other information / documentation relating to these proceedings be provided to the Respondent in the Spanish language. The Panel acknowledges that the language of the registration agreement between the registrar and the Respondent is, as confirmed multiple times by the registrar to the Respondent via the Center, English. Consequently, pursuant to paragraph 11(a) of the Rules, the proper language of the present proceedings is English. The Panel notes that the Respondent is clearly able to comprehend English, as demonstrated in its correspondence with a representative of the Complainant regarding the proposed sale of the Disputed Domain Name prior to the filing of the Complaint (which correspondence is annexed to the Complaint). As such, the Panel finds no basis upon which to exercise its authority under paragraph 11 of the Rules to depart from the proper language of the present proceedings.

5. Factual Background

The Complainant is an American company that provides online, non-downloadable computer e-commerce software and designs, and creates, hosts and maintains internet sites for third parties. The Complainant has traded under the “Big Cartel” name since at least 2006. The Complainant owns a registration for the BIG CARTEL trade mark in the US, dated February 20, 2009. The Complainant has also registered the <bigcartel.com> domain name, which registration is dated December 19, 2005.

The Respondent is an individual residing in Spain. The Respondent registered the Disputed Domain Name on May 5, 2011. The website to which the Disputed Domain Name resolved (the "Website") at or before the date of the filing of the Complaint (September 13, 2011), displayed a blank video screen, several short messages in Spanish, and a sponsored link to the video-content host, Netflix. As at the date of this Decision, the Disputed Domain Name resolves to a landing page displaying a message stating that the Website is "under re-construction" and containing links to pages featuring sponsored links and advertisements.

6. Parties’ Contentions

A. Complainant

The Complainant's contentions can be summarised as follows:

(a) The Disputed Domain Name is confusingly similar to the Complainant’s BIG CARTEL trade mark, in which the Complainant has rights:

(i) through continuous and extensive use of the BIG CARTEL trade mark since at least as early as 2006, the Complainant has established (common law) rights in such trade mark around the world;

(ii) the BIG CARTEL trade mark has also been registered by the Complainant in the United States since February 2009;

(iii) the BIG CARTEL trade mark is used in connection with the Complainant’s website located at “www.bigcartel.com” where the Complainant provides an online platform for third parties throughout the world to sell goods to others;

(iv) the Disputed Domain Name registered by the Respondent is confusingly similar to the Complainant’s BIG CARTEL trade mark and the sight, sound and meaning of the Complainant’s BIG CARTEL trade mark and the Disputed Domain Name are identical; and

(v) the use of the <.tv> country-code top level domain (“ccTLD”) [sic.] should not be considered when comparing the Complainant’s trade mark and the Disputed Domain Name (the Panel notes that whereas the <.tv> extension can be used as a ccTLD (as observed by the Complainant) for Tuvalu, an alternative use of the <.tv> extension (as recognized by the Center’s publication relating to domain name dispute resolution services for <.tv> domain names, available at https://www.wipo.int/amc/en/domains/cctld/tv/index.html) is in relation to websites offering television, media and entertainment content, and it is this alternative use that is applicable to the facts of the present proceedings).

(b) The Respondent does not have legitimate rights or interests in the Disputed Domain Name:

(i) the Respondent registered the Disputed Domain Name over five years after the Complainant began using the BIG CARTEL trade mark and more than two years after its registration at the United States Patent and Trademark Office (“USPTO”);

(ii) the Complainant has no relationship with the Respondent and has never authorised the Respondent to use the Disputed Domain Name;

(iii) nowhere in the record does it indicate that the Respondent is or ever has been commonly known by the “Big Cartel” name or any derivation thereof;

(iv) on August 26, 2011, the Complainant searched the records of the Spanish Patent and Trademark Office and the Trade Marks and Designs Registration Office of the European Union for evidence of the Respondent’s ownership of the BIG CARTEL trade mark in either Spain or the European Union, and found no results;

(v) the Disputed Domain Name resolves to the Website, which claims to be a streaming video service. It appears that all of the six videos are produced by third parties and the Respondent has either simply embedded the videos that are actually hosted and/or displayed by third party providers such as “www.youtube.com” and “www.ebaumsworld.com”. The Website’s design is crude and unfinished, with little thought given toward increasing traffic and encouraging visitors to return. A rudimentary website created with minimal time and effort is not proof of legitimate interest in a domain name;

(vi) the Website features a number of advertising links, which the Respondent likely uses to generate revenue with a pay-per-click (“PPC”) system and using a domain name to direct users to a site primarily intended to generate PPC advertisement revenue is not a bona fide offering of goods and services;

(vii) the Respondent’s intent to operate a website primarily devoted to PPC advertising revenue generation is evidenced by the minimal amount of effort expended in creating the Website, the limited availability of streaming video on the Website, the lack of original content and the provision of content that is freely available elsewhere on the Internet on better-known websites that provide superior service and user interfaces;

(viii) the Website directly competes with the Complainant’s services, which include offering a space to display and distribute videos and related goods and services. Offering competitive goods or services on a domain name that is confusingly similar to a trade mark does not create a legitimate right or interest in a domain name;

(ix) there is no apparent connection between the Complainant’s BIG CARTEL trade mark and the services offered on the Website and the BIG CARTEL trade mark is not suggestive or descriptive of the services the Respondent purports to offer on the Website, and there is no apparent justification for the Respondent’s use of the Complainant’s trade mark;

(x) the use of the Disputed Domain Name is not a non-commercial or fair use of the BIG CARTEL trade mark as proved by the Respondent’s use of PPC and banner advertisements on the Website; and

(xi) because the Respondent does not identify the Complainant or the BIG CARTEL trade mark on the Website, the Respondent’s use is not a nominative or fair use of the trade mark.

(i) at the time the Respondent registered the Disputed Domain Name, the Complainant had registered the BIG CARTEL trade mark with the USPTO and had been using this trade mark throughout the world in connection with its services on “www.bigcartel.com” for over five years;

(ii) “www.bigcartel.com” receives around 150 million page views each month. Internet users from around the world visit “www.bigcartel.com” with approximately 15 percent of traffic to this website coming from Europe and 2.5 percent of traffic coming from Spain. In the least, the Respondent had constructive knowledge of the BIG CARTEL trade mark (at the time of registering the Disputed Domain Name) based on the Complainant’s trade mark registration;

(iii) it is also likely that the Respondent had actual knowledge of the BIG CARTEL trade mark (at the time of registering the Disputed Domain Name) because of the Complainant’s substantial use of this trade mark throughout the world;

(iv) the Respondent has shown bad faith by offering the Website, which links to third party advertisers;

(v) the Respondent is likely generating revenue with a PPC system. The BIG CARTEL trade mark does not describe or suggest any services the Respondent offers or claims to offer in connection with the Disputed Domain Name. The Respondent uses the BIG CARTEL trade mark (as incorporated into the Disputed Domain Name) to attract users to the Website for the purpose of realizing commercial gain based on customer confusion as to the Complainant’s sponsorship, affiliation, or endorsement of the Website, which constitutes bad faith;

(vi) the Respondent has offered to sell the Disputed Domain Name to the Complainant through “www.sedo.com” for an asking price of EUR 9,000. This amount is considerably higher than the Respondent’s estimated costs for the Disputed Domain Name, including the cost of registering a domain name in the <.tv> ccTLD [sic.], as the registrar’s website currently advertises the price of a <.tv> domain name registration at USD 29,99 per year, and the minimal amount of effort involved in creating a basic website with only a handful of embedded videos from other sources surrounded by PPC advertisements; and

(vii) the offer to sell is evidence that the Respondent’s primary purpose for acquiring the Disputed Domain Name was to transfer it to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the Disputed Domain Name. Such intent is proof of bad faith registration and use of the Disputed Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

7. Discussion and Findings

Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:

(a) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in respect of the BIG CARTEL trade mark on the basis of its registration for such trade mark in the United States dated February 10, 2009.

It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case <.tv>, should be disregarded (Rohde & Schwartz GmbH & Co. KG v Pertshire Marketing Ltd, WIPO Case No. D2006-0762).

The Disputed Domain Name incorporates the BIG CARTEL trade mark in its entirety and in terms of both visual and aural characteristics, is an identical reproduction of the Complainant’s trade mark.

The Panel accordingly finds that the Disputed Domain Name is identical to the BIG CARTEL mark in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (Second Edition) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the onus shifts to the respondent who must discharge the burden of proving that it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainant contends that the Respondent is not connected or associated with the Complainant’s business and is not on any other basis licensed or authorised to use its BIG CARTEL trade mark. Further, the Complainant submits that the Respondent does not own any registrations for trade marks incorporating the “Big Cartel” name and has never been commonly known by the “Big Cartel” name (or variations thereof). Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and the Respondent has the burden of proving that it does possess such rights or legitimate interests. As no Response has been submitted by the Respondent, the Panel will base its findings in this respect, on inferences that can be reasonably drawn from the Complainant's evidence.

As the Panel accepts that the Complainant has not licensed or otherwise authorised the Respondent to use the BIG CARTEL trade mark, the Respondent needs to demonstrate that it acquired rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy through use of the Disputed Domain Name in connection with a bona fide offering of goods or services, becoming commonly known by the Disputed Domain Name, or through legitimate, non-commercial or fair use of the Disputed Domain Name.

The Panel observes from a printout of the Website (contained in the case file) dated September 27, 2011, that the content on the Website as at that date was minimal, being limited to a handful of links to miscellaneous videos and an introductory message displayed in Spanish, describing the Website as an online multi-media channel in which website content (reproduced from elsewhere on the Internet) can be re-viewed by users, and links to pages featuring sponsored links and advertisements in English, to various video-content hosts. An undated printout of the Website annexed to the Complaint shows that the Website content as at a point in time on or before September 13, 2011 (the filing date of the Complaint) was likewise minimal, being limited to a blank video screen, several short messages in Spanish, and a sponsored link to the video-content host, Netflix. As at the date of this Decision, the Website contains no content, save for a statement that the Website is “under re-construction” and various pages featuring sponsored links and advertisements, including sponsored links to video-content hosts. In each instance, the Panel notes that the “Big Cartel” name (in English) is referenced at least once on the Website, irrespective of the fact that the remaining text on the Website is in Spanish. Given that the Website has been found to be consistently bare in terms of content in each of the above three instances, the Panel considers it reasonable to infer that such use of the Website is representative of the general usage of the Website by the Respondent (that is, minimal), and notes that the fact that a website is rudimentary in nature can indicate a lack of rights or legitimate interest in a related domain name by a respondent (see Portland Titles Limited v. Martin Baker, WIPO Case No. DTV2000-0003). It can further be assumed, given the minimal content on the Website, its predominant use to host PPC sponsored links, and the Respondent's offer to sell the Disputed Domain Name to the Complainant at a significant premium over cost, that the Respondent's purported use of the Disputed Domain Name is a mere attempt to disguise the real purpose of the Website, which is to generate revenue from sponsored links or alternatively, from selling the Disputed to the Complainant or its competitor. The Panel thus finds insufficient evidence that the Respondent has used the Disputed Domain Name in connection with an offering of goods or services, bona fide or otherwise, such that no rights or legitimate interest can be conferred from such use.

The consistent presence of sponsored links (or links thereto) on the Website also precludes a finding that the Disputed Domain Name was put to noncommercial or fair use, as the Respondent would presumably receive click-through revenue from each such link that is activated by Internet users. Further, there is no evidence to suggest that the Respondent would be commonly known by the English name “Big Cartel”, which is especially true considering that the Respondent’s Website is predominantly operated in Spanish, and neither is there any evidence that the name "Big Cartel" is descriptive of or otherwise connected to the services purportedly offered on or through the Website, such that no rights or legitimate interests in the Disputed Domain Name can be found to be attributable to the Respondent.

The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the disputed Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that the Respondent registered and used the Disputed Domain Name in bad faith.

Evidence of bad faith includes constructive notice of a trade mark at the time of registration of a domain name by a respondent (see Caesar World, Inc. v. Forum LLC, WIPO Case No. D2005-0517 and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113, in support of a finding of bad faith registration based on constructive knowledge of the complainant’s mark(s) on the part of the respondent). The Panel notes that a cursory search for “big cartel” on each of the search engines Google and Yahoo! reveals the Complainant and its website (at www.bigcartel.com) as the top search result, with ensuing hits also largely related to various pages concerning the Complainant and its website. The Panel further notes that the same is true for searches conducted on the Spanish versions of both search engines. Given that the Disputed Domain Name was only registered about six months previously, the Panel considers it reasonable to infer that similar search results relating to the Complainant would have been available as at the date of the Disputed Domain Name's registration. This fact, considered together with the Respondent’s choice of the English expression “Big Cartel” despite the fact that the bulk of the Website content is in Spanish and despite the Respondent’s apparent aversion to communicating in the English language (as demonstrated in his communications with the Centre), renders it more likely than not that the Respondent had notice of the Complainant’s BIG CARTEL trade mark at the time of registering the Disputed Domain Name. This presumption is further supported by the fact that “Big Cartel” is not a common description of video-related content (which is the apparent subject matter of the Website) and the fame of the Complainant's “www.bigcartel.com” website, which is in receipt of monthly page views of around 150 million (assuming the veracity of the Complainant's contention in this regard, which the Panel is prepared to assume in light of the circumstances of this case). On these cumulative facts, bad faith registration can thus be inferred on the part of the Respondent.

Bad faith use is also evidenced by the Respondent’s offer to sell the Disputed Domain Name to the Complainant for valuable consideration in excess of the out-of-pocket costs directly related to its acquisition. In the course of the Respondent’s correspondence with a representative of the Complainant, the Respondent offered to sell the Disputed Domain Name for EUR 9,000, which significantly exceeds the USD 29,99 cost required to acquire such a domain name from the registrar. Further evidence of the Respondent’s bad faith use of the Disputed Domain Name is indicated by the use of PPC sponsored links on the Website. Previous UDRP Panels have found it proper to infer from the existence of such “link farms” that the relevant website operator collects financial remuneration for every sponsored link that is activated by Internet users, and such Panels have established that such practice constitutes bad faith (see Novartis AG v. Jordan Smith / Stanley Pace, WIPO Case No. D2009-1738 and Viacom International Inc. v. Stanley Pace / M Smurth Waite, WIPO Case No. D2010-1149). The Panel concurs with such inferences in finding bad faith on the part of the Respondent, whose minimal use of the Website beyond hosting links to pages featuring sponsored links suggests that the Respondent has primarily used the Disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the Website, by creating a likelihood of confusion with the Complainant's BIG CARTEL trade mark as to source, sponsorship, affiliation, or endorsement of the Website and/or the services purportedly offered therein.

In these circumstances, the Panel finds that it is clear that the Respondent has registered and is using the Disputed Domain Name in bad faith, and element 4(a)(iii) of the Policy has been satisfied.

8. Decision

For all 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, <bigcartel.tv>, be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Dated: December 1, 2011