WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Vanguardia Ediciones, S.L. v. Lavan.inc / denver aposs
Case No. D2003-0539
1. The Parties
The Complainant is La Vanguardia Ediciones, S.L., Barcelona, Spain, represented by J. Isern Patentes y Marcas, S.L., Spain.
The Respondent is Lavan.inc / denver aposs, Reseda, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <lavanguardia.com> is currently registered with Domainname, Inc. (after a former registration, that expired on August 12, 2003, was registered with Gandi SARL).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 9, 2003.
On July 9, 2003, the Center transmitted by email to Gandi SARL a request for registrar verification in connection with the domain name at issue.
On July 10, 2003, Gandi SARL transmitted by email to the Center its verification response that the domain name was no longer registered with them. It further indicated that this domain name was in "REDEMPTION PERIOD". The Center duly considered this answer and concluded that, according to legal terms, the domain name had no Holder nor Registry associated, thus the Complaint could not be attended to, due to the lack of parties in litigation.
On July 11, 2003, the Center requested an amendment of the Complaint, namely an identification of the holder of the domain or the person that reserved it, as well as the identification of the Registrar. The Center also suggested that the Complainant contact Snapnames, the company that offered the back order service, to supply the data regarding the name of the person that signed for the back order service and later file the Complaint against the new owner. However, Snapnames informed the Complainant that due to the delicate nature of the information it would be necessary for WIPO to ask directly for said information.
Given the unusual situation the Center agreed with the Complainant to suspend the procedure until the domain name in question expired and the new Holder and Registrar could be properly identified.
On August 4, 2003, the suspension of the proceedings was requested and accepted for a period of 30 days.
On August 12, 2003, the domain name <lavanguardia.com> expired and was later registered in the name of Lavan.inc.
An amended Complaint was filed with the Center on September 3, 2003, by email and on September 5, 2003, by hard copy.
On September 3, 2003, the Center transmitted by email to Domainname, Inc. a request for registrar verification in connection with the domain name <lavanguardia.com>.
The Center verified that the initial Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 9, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2003.
The Center appointed António L. De Sampaio as the sole panelist in this matter on October 7, 2003. 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.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English
4. Factual Background
The Complainant, the Spanish company La Vanguardia Ediciones, S.L. started its operations on November 28, 1997. This company is part of a large company group called Grupo Godó established in 1881, which is leader in the communication and media sector both in audio and visual display, writing and acting worldwide.
The Complainant is the holder of several mark registrations for "LA VANGUARDIA" , namely:
- Spanish registration numbers:
1294156 / 57 / 58 / 59 / 60 / 62 / 63 / 64 / 67 / 68 / 69 / 70 / 71 / 72 / 73 / 74 / 75 / 76 / 77 / 78 / 79 / 80 / 81 / 82 / 83 / 84 / 85 / 86 / 87, all applied for in 1989;
No. 971275 / 76 / 77 / 78 / 79, all applied for in 1982.
- European Union Community Mark Registration No. 1.697.408, applied for in June 2000;
- International Mark Registration ("Madrid System") No. 731.075, registered in March 2000.
Grupo Godó, to which the Complainant La Vanguardia Ediciones, S.L. forms part of, is the holder of several domain names related to the mark "LA VANGUARDIA", namely, <lavanguardia.es>, <lavanguardia.biz>, <lavanguardia.net>, <vanguardia.biz>, <lavanguardiaviajes.com>, <la-vanguardia.com>.
5. Parties’ Contentions
The Complainant states that the domain name <lavanguardia.com> is identical to the marks registered by the Complainant.
The Complainant correctly identifies the marks "LA VANGUARDIA" registered in Spain, in the European Union and Internationally ("Madrid System").
The Complainant invokes that the marks "LA VANGUARDIA" are well-known marks thus deserving a special treatment.
The Complainant also alleges that the Respondent has no rights or legitimate interest in respect of the domain name in question. In fact, the Complainant states that there is no evidence of commercial activity by the Respondent (for instance, on the Internet). Also, the Complainant states that the Respondent has not been commonly known as "La Vanguardia" either outside or within the Internet.
Furthermore, there is no licence/permission or any other right enabling the Respondent to own or use the Complainant’s famous mark.
Lastly, the Complainant states that the actual inactivity of the web page may lead the clients of the newspaper La Vanguardia, one of the commercial faces of the Complainant, to be wrongly informed about the real economic activity of the Complainant.
The Complainant argues that there is bad faith in the registration of the domain name <lavanguardia.com> since the Respondent should have been aware of the previous existence of the well-known marks "La Vanguardia", before registering this domain name.
The Complainant also argues that there is bad faith in the use of the domain name <lavanguardia.com>, and gives examples of similar situations and the corresponding decisions, as well as evidence of cybersquatting.
The Respondent did not file a response within the deadline given. At the date this decision is being taken, the Panelist has not received any belated response or any other kind of reaction from the Respondent.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), aims to resolve disputes concerning allegations of abusive domain name registrations. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that the Respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that the Respondent is given adequate notice of proceedings commenced against him, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).
In the present case all the requirements were fully met. The brief of the Complainant was filed according to the Rules, following the suspension and the amendments requested. The Panel acknowledges that the Respondent was duly notified as foreseen in the Rules. However, NO response was filed and the respective Notification of Respondent default was also correctly issued.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain the requested relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a Trademark or Service Mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a Complainant to warrant relief.
Let us consider the applicability, in detail, of what is stated in paragraph 4 (a) of the Policy.
A. Identical or Confusingly Similar
The domain name in question <lavanguardia.com> is identical to all the marks registered in the name of the Complainant. In fact, the Panel considers that between LA VANGUARDIA (marks) and <lavanguardia.com> (domain name in dispute) there is a graphic and phonetic coincidence. They are identical.
On the other hand, the evidence of ownership by the Complainant of all the several mark registrations invoked is duly acknowledged.
B. Rights or Legitimate Interests
The Complainant has persuasively asserted that the Respondent has no rights or legitimate interests in the domain name. The Respondent has failed to file any evidence rebutting those assertions.
The silence of the Respondent leads the Panel to consider that the Respondent has no rights or legitimate interest in respect of the domain name <lavanguardia.com>.
The Panel, lacking of other information, also considers that the corporate name of the Respondent – Lavan.inc – does not establish any right or any legitimate interest, whatsoever, in respect of the expression lavanguardia and, consequently, in respect of the domain name <lavanguardia.com>
C. Registered and Used in Bad Faith
Finally, we must address the delicate issue of bad faith. The Panel is perfectly aware that this is certainly an important aspect to base the decision.
The mark LA VANGUARDIA is an unquestionable well-known mark in a broad international perspective. The Complainant has well demonstrated the implementation of said mark in commerce in many jurisdictions. The Panel acknowledges under a personal viewpoint the accuracy of these legal and factual realities.
As it is currently established, well-known marks deserve an even more special protection since they usually represent a very tempting target for those who do not pursue a correct behaviour in their economic activity.
The factual circumstances developed and proved in the Complaint render evident that the Respondent registered the domain name while being fully conscious of damaging the rights of the Complainant as well as trying to wrongly confuse the Internet users regarding the true holder of the domain name.
The Respondent SHOULD know of the existence of a well-known mark prior to registering the domain name.
Therefore, the Panel concludes that there was bad faith on registering the domain name <lavanguardia.com>.
Furthermore, there are previous decisions rendered by UDRP Panel establishing the principle that someone who has registered a domain name with bad faith and without any legitimate interest will, most probably, sooner or later use it also with bad faith.
Those who register a domain name with bad faith will use it with bad faith because said behaviour is associated with the idea that at the moment of registering the domain name there is awareness of injuring, without any legitimacy, the rights of a third party.
On the same way, it was also previously decided in other cases that the combination of the two elements (well-known Mark on one side and, on the other side, no evidence of rights or legitimate interests of the Respondent) produces, normally, the final result of bad faith.
Still in the context of use in bad faith it is also important to mention that the domain name <lavanguardia.com> was registered in the name of a Korean national, before being registered in the name of Lavan.inc. This previous holder has in the past used the same strategy of changing the holder of a domain name to a company against which successful Complaints were subsequently filed (WIPO Case No. D2001-0136 and WIPO Case No. D2001-1495).
Based on its findings that the Respondent, Lavan.inc, has engaged in abusive registration and use of the domain name <lavanguardia.com> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name <lavanguardia.com> be transferred to the Complainant, La Lavanguardia Ediciones, S.L., in accordance with the remedies set forth on paragraph 4(i) of the Policy.
António L. De Sampaio
Dated: October 21, 2003