WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gomaespuma Producciones, S.L. v. Mr. Gerhard Huesler
Case No. DTV2001-0028
1. The Parties
Complainant is Gomaespuma Producciones, S.L. ("Complainant"). Respondent is Mr. Gerhard Huesler ("Respondent").
2. The Domain Name and Registrar
The domain name, the subject of this Complaint is <gomaespuma.tv>.
The Registrar is The .tv Corporation. The remedy sought by Complainant is transfer of the domain name <gomaespuma.tv> to Complainant.
3. Procedural History
On November 2, 2001, (by e-mail) and December 7, 2001 (in hard copy), Complainant submitted to the WIPO Center a Complaint under the Uniform Domain Name Dispute Resolution Policy and the Rules for Uniform Domain Name Dispute Resolution Policy. The Panel agrees that payment was properly made, that the Center rightly assessed the Complaintís compliance with the formal requirements; that Complaint was properly notified in accordance with paragraph 2 (a) of the Rules. Respondent was declared in default. The Panel agrees that it was properly constituted and that Panelist submitted a Statement of Acceptance and Declaration of Impartiality. The Panel also acknowledges that no other proceedings are pending before any Justice Court.
4. Factual Background
Complainant is the owner of the trademark GOMAESPUMA, registered in Spain for entertainment services. The trademark identifies a journalist-comedy duo well-known in Spain.
Respondent, Mr. Gerhard Huesler of Zurich (Switzerland) registered the domain name <gomaespuma.tv>. The registration of the domain name <gomaespuma.tv>, occurred, without dispute, well after trademark rights from the name GOMAESPUMA were acquired by Complainant, and has no known connection with any activity or trade carried out under the trade name or trademark GOMAESPUMA. There is no Web site operating at <gomaespuma.tv>.
5. Partiesí Contentions
a. Complainant claims that it is owner of the well-known and largely used GOMAESPUMA trademark for entertainment services.
b. Complainant claims that the domain name <gomaespuma.tv> has been registered by Respondent in bad faith. Respondent could not ignore Complainantís trademark rights, nor has Respondent any rights or legitimate interests in respect of the domain name.
c. Complainant claims that the domain name <gomaespuma.tv> has been, or is being used by Respondent in bad faith through passive holding.
a. Respondent is in default and, accordingly, has not challenged the conclusions of Complainant.
6. Discussion and Findings
A. General Principles
Under paragraph 4 (a) of the Policy, the Panel should be satisfied that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name;
(iii) the domain name has been registered in bad faith;
(iv) the domain name is being used in bad faith.
B. Confusion with Complainantís Trademark
The Panel finds that Complainant has established that it is the owner of the trademark GOMAESPUMA for entertainment services. The validity of its trademarks is beyond dispute. Respondentís domain name is identical to Complainantís Trademark. The combination with .tv, if anything, enhances the likelihood of confusion with the trademark GOMAESPUMA as used for entertainment services rendered, inter alia, through television programs.
C. Respondentís Absence of Rights or Legitimate Interests in the Domain Name
There is no evidence that Respondent has any right or legitimate interest whatsoever in respect of a domain name including the well-known trademark GOMAESPUMA, or any association between the trademark GOMAESPUMA and its activity. There is no evidence that Respondent intends to use the domain name through any fair or legitimate use. On this point also, Complainant prevails.
D. Registration in Bad Faith
The trademark GOMAESPUMA is well-known enough that it is presumable that Respondent knew it when registering the domain name (see Banca Sella S.p.A. v. Mr. Paolo Parente, case No. D2000-1157; Expedia, Inc. v. European Travel Network, case No. D2000-0137). It also appears that Respondent is familiar with the Spanish language, as evidenced by its choice of a fictitious name and non-existing address, which both make sense in idiomatic Spanish. The choice of a fictitious name and non-existing address also, in itself, hints at Respondentís bad faith. No argument have been submitted by the defaulting Respondent in order to counter these findings.
The Panel concludes that the domain name has been registered in bad faith.
E. Use in Bad Faith
Complainant states that the domain name is being used in bad faith although through passive holding only. "Passive holding" has been recognised as sufficient in a number of cases (Telstra Corporation Limited v. Nuclear Marshmallows, case No. D2000-0003; Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, case No. D2000-0021; Compaq Computer Corporation v. Boris Beric, case No. D2000-0042; InfoSpace.com, Inc. v. Tenenbaum Ofer, case No. D2000-0075; Association of British Travel Agents Ltd. .v. Sterling Hotel Group Ltd., case No. D2000-0086; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., case No. D2000-0090; Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau, case No. D2000-0172; J. García Carrión, S.A. v. M™ José Catalán Frías, case No. D2000-0239; Advanced Micro Devices, Inc. v. [No Name], case No. D2000-0515; Teledesic LLC v. McDougal Design, case No. D2000-0620; Clinica Corachan, S.A. v. Fc Team Car, S.L., case No. D2000-0723; Red Bull GmbH v. Harold Gutch, case No. D2000-0766), this Panel sees no reason to challenge this prevailing opinion.
The Panel concludes that the domain name <gomaespuma.tv> is used by Respondent, and is used in bad faith.
Pursuant to Paragraph 4(i) of the Policy and Rule 15 of the Uniform Rules, this Panel orders that the domain name <gomaespuma.tv> be transferred to Complainant.
Dr. Massimo Introvigne
Dated: January 15, 2002