WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Jess Encinar v. Registrant [1116922], Moniker Privacy Services / Michael Doson

Case No. D2008-0568

 

1. The Parties

The Complainant is Jess Encinar, of Madrid, Spain, represented by Gmez-Acebo & Pombo Abogados, Spain.

The Respondent is Registrant [1116922], Moniker Privacy Services / Michael Doson, of San Francisco, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <jessencinar.com> ACE encoding <xn--jessencinar-6gb.com> is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2008. On April 15, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On April 22, 2008, Moniker Online Services, LLC 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 April 23, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complaint filed an amended Complaint on April 29, 2008. The Center verified that the 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 April 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2008.

The Center appointed Ian Blackshaw as the sole panelist in this matter on May 26, 2008. 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 Complainant sets out, and the Respondent does not dispute, the following factual background.

The Complainant is the founder and Chief Executive Officer of Idealista, Libertad y Contro, S.A. (“IDEALISTA”), a company that operates on the Internet through “www.idealista.com”, a leading website in the real estate sector.

Furthermore, the Complainant is a founding partner of other corporate projects such as “www.11870.com”, “www.FloresFrescas.com” and “www.TopRural.com”.

The Complainant’s successful business career has turned him into a role model, as a young, innovative and enterprising businessman. The Complainant studied at the most prestigious universities and business schools, including Universidad Pontificia de Comillas, Spain, and Harvard, United States of America. After finishing his studies, the Complainant worked in the United States of America for such clients as Amazon and Yahoo, and upon the Complainant’s return to Spain became the European Director of Consultancy and “Naming” for the Consultants Wolff Ollins, leaders in corporate identity.

The Complainant’s recognition as a successful businessman and as a reference point for new entrepreneurs can be appreciated by means of the continuous appearance of his name and image in different media in this field, stressing his experience. The Complainant is also constantly requested to make appearances at events held by associations and company forums in recognition of his success. Evidence of both assertions has been provided to the Panel.

As can be seen in the documents attached to the Complaint, and will become even clearer throughout the present claim, making references to the Complainant’s name Jess Encinar is equivalent to naming IDEALISTA, a company founded by him in the year 2000, success of which is a direct consequence of the personal endeavour of that company’s founder and Chief Executive Officer.

IDEALISTA is a reference point in the real estate market, as can been read in an article published in December, 2006 in the magazine “Actualidad Econmica”, a copy of which has been provided to the Panel. According to that article, IDEALISTA is the market leader (online real estate) with a share of 4.5% of total Internet users. The leadership of IDEALISTA is warranted by the website’s audience data. According to audience data provided by the company “Informacin y Control de Publicaciones, S.A.”, IDEALISTA obtained the following audience ratings in October 2007 (Control Minutes have been provided to the Panel):

- 87.426.065 pages seen (number of requests made to visit the IDEALISTA Internet portal)

- 3.253.789 visits (number of visits that surfed within the IDEALISTA portal, according to the registry of uninterrupted sequences of the portal’s pages).

- 1.109.598 sole users (number of visits from a sole IP address).

The above are, without a doubt, excellent audience data that warrant the leadership of the IDEALISTA Internet portal in the Internet real estate market. Furthermore, it must also be pointed out that 2,000 new offers are published every day on IDEALISTA, and the database of registered users who receive this information amounts to approximately 600,000 different clients.

Likewise, the fact that the IDEALISTA portal should be deemed a point of reference in the real estate market is certified by the fact that the same is constantly mentioned as a prestigious benchmark when any relevant news arises in that market. The Complainant is always the interlocutor with the media, thus, producing an automatic identification of his name and image with IDEALISTA. In this regard, two excerpts from news publications on the real estate market, obtained from well-respected online information sources such as “ABC” and “EL PAS”, have been attached to the Complaint and provided to the Panel.

Proof of the close connection between the Complainant and IDEALISTA, besides the indisputable reputation of success that his online business activity has acquired, is evidenced by virtue of a copy of the results obtained after introducing the term “Jess Encinar” in the well-known search engine ‘Google’. As can be seen from such copy, which has been attached to the Complaint and provided to the Panel, 6 of the 10 initial results exhibited link the Complainant to the commercial initiatives that he carries out, thereby emphasizing him as the true engine and alma mater of his online businesses.

It must be pointed out that the Complainant is also the holder of the domain name <jesusencinar.com>, registered on February 8, 2006, that is, on a date prior to that of the registration of the domain name the subject of the present dispute, namely, October 15, 2006. A copy of the information that is publicly offered by Piensa Solutions regarding the disputed domain name and a copy of the information provided by Arsys with regard to the domain <jesusencinar.com> have been provided to the Panel as attachments to the Complaint.

In the absence of any Response, the Panel is prepared to accept as true reasonable factual assertions by the Complainant.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

A1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The first point that must be analysed concerns when a personal name that has not been registered as a trademark can become an unregistered notorious or well-known trademark, commonly referred to in Anglo-Saxon law as Common Law trademarks. The Arbitration and Mediation Center (the Center) sets out an exhaustive analysis on the suitability of unregistered trademarks within the scope of the Uniform Domain Name Dispute Resolution Policy in the case of Jose Luis Sampdero Saez v. Galileo Asesores S.L., WIPO Case No. D2000-1650. Point 6.1.2 on Controversies regarding Unregistered Trademarks of said Decision and the Cases therein cited must particularly be taken into consideration, as it foresees the protection of the trademark (in a general scope) regardless of whether the same has, in fact, been registered.

In this regard, it is fundamental to once again refer to the Center’s Decisions in this area of expertise, specifically the Decision adopted in Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210, which summarises this doctrine in the following excerpt:

“The initial consideration of the Panel was whether Complainant had sufficiently alleged the existence of common law trademark rights in her Complaint. On page 5 of her Complaint, Complainant alleges that “The Respondent’s use of www.juliaroberts.com infringes upon the name and trademark of Complainant and clearly causes a likelihood of confusion as defined by Section 2(d) of the United States Lanham Act, Section 2(d), 15 U.S.C. Section 1052(d).” From this allegation, the Panel understood that Complainant asserted common law trademark rights in her name. The Panel further decided that registration of her name as a registered trademark or service mark was not necessary and that the name “Julia Roberts” has sufficient secondary association with Complainant that common law trademark rights do exist under United States trademark law. A recent decision citing English law found that common law trademark rights exist in an author’s name. The Policy does not require that the Complainant should have rights in a registered trademark or service mark. It is sufficient that the Complainant should satisfy the Administrative Panel that she has rights in common law trademark or sufficient rights to ground an action for passing off. See Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235, May 22, 2000.”

Continuing with the doctrine set forth in the aforementioned Decision, the Center further specifies its doctrine in the case of Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068, which also refers to the “frequent questions” section on the WIPO’s website and cites relevant cases, thereby establishing the unifying criterion for such cases:

“The consensus view among UDRP panelists is that a complainant may show that his or her personal name has taken on such a cachet that it has become a trademark, but that to succeed in doing so the complainant will have to show that the name has actually been used in trade or commerce. It will instantly be seen that this is a considerable hurdle to vault and that the reason why some cases have failed to establish trademark rights in a personal name is that the evidence has shown only that the name is famous and not that it has been used in trade or commerce”

In this Decision, said Authority sets forth a warning regarding the degree of difficulty that is entailed when proving a personal name’s relevance in the market in the case of businessmen or company owners, when a coincidence does not exist between the corresponding commercial name and personal name. Moreover, said Authority establishes a list of conditions, which if met will imply the protection of the personal name as an unregistered notorious trademark (Common Law trademark). In what follows, we will analyse each one of the proposed conditions in respect of the case object of the present proceeding:

(a) The extent to which the commercial community identifies the individual with the company. The Complainant, Jess Encinar, founded IDEALISTA in the year 2000 and turned this company into Spain’s leading real estate portal and the third most important of its class in Europe. Throughout the past 7 years, the Complainant has been invited to the most prestigious forums and has received the admiration of different Spanish economic players, for having been the artificer of one of the country’s biggest enterprise success stories in the past years, besides also being claimed for being a more than authorized voice in the debate regarding the situation of the real estate market. In all the communications with the media, the Complainant appears as the company’s image, revealing the secrets of his success and contributing with the added value of his personal stamp and philosophy. The newspaper article attached to the Complaint as document n 11 clearly reveals how the sensations of innovation, freshness, independence, astuteness, as well as the entrepreneurial spirit that are conveyed by Jess Encinar in his declarations are also the marked values for which his company IDEALISTA is recognized, the name of which is not casual either, as will be explained later.

(b) The extent to which the individual is seen by relevant media and sections of the public as the alter ego and driving force behind the company.

In this regard, once again reference must be made to the association that exists between the Complainant’s personal principles and the values of IDEALISTA as a trademark. As is shown in the two interviews attached to the Complaint as document n 3, the reporters’ main target is discovering the secret of Jesus Encinar’s success, particularly with regard to his innovative proposal and atypical business management. Thus, we must remark on the contents of the interview that was granted to the portal “www.emprendedores.orange.es” (document n 3), in which the interviewer asked the Complainant to reveal the secret behind his success: “how did you do it?” after which Jess Encinar exhibited the strategic keys of his business and concluded with the following declaration of principles:

“This philosophy is not only carried out, it gives the company a name: Idealista (Idealist). A trademark that has nothing to do with its product, or with a marketing theme. We believe that there is a different way of doing things, and of providing a service with honesty. And does all of this work? Once again, the secret resides in finding a balance (.) We are called Idealista, but our surname is Libertad (Freedom) and Control S.A.”

Once again reference will be made to the Complainant’s professional experience, which includes his designation as European Director of Consultancy and “naming” for the consultants Wolff Ollins, leaders in corporate identity. We will also remark on excerpts of the Complainant’s declarations contained in document n 3, as well as take into consideration the newspaper articles attached to the Complaint as documents n 7 and n 13, which are fundamental to prove how the figure of Jess Encinar is looked on and appraised by the relevant media and sections of the public.

(c) The extent of the personal ownership of the company by the individual, and the degree of personal control that the individual exercises over the enterprise.

Jess Encinar is the founding partner and Managing Director of IDEALISTA. The company has five partners, one of whom is his brother. Moreover, Jess Encinar is the company’s Chief Executive Officer and as such, his functions include, but are not limited to, carrying out the legal representation of the company; establishing the latter’s lines of action; proposing the location and administration of the company’s resources; exercising financial operations; subscribing agreements; and so on.

The Complainant is without a doubt the owner of the company, carrying out the control and personally managing the due course of IDEALISTA, as was done, respectively, by Mr. Chung Mong Koo and Mr. Monty Roberts in their companies, as is established in WIPO Cases Nos. D2005-1068 (supra) and Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300.

(d) The extent to which the individual is identified with any major achievements of the enterprise and whether it can be said that the individual and/or the company has a demonstrable interest in protecting the individual’s name for commercial use.

The degree of repercussion of the Complainant’s performance in respect of the achievements of IDEALISTA has been made perfectly clear throughout the development of point “a)” of the present legal grounds. On the other hand, as already mentioned, the Complainant is the holder of the domain name <jesusencinar.com>, which was registered prior to the registration of the domain name the subject of the present dispute, and evidences the Complainant’s will and interest.

Further to laying down the status of Jess Encinar as a common law trademark, determining when the latter is identifiable with the domain name <jessencinar.com>, or when a similarity exists that could cause a confusion is a much less controversial matter. An identity is produced that is not salvaged by the utilization of the suffix gTLD “.com”. In this regard, we must refer to the criterion set forth by the Center included in Decisions Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235, D2000-0210 (supra), Steven Rattner v. BuyThisDomainName (John Pepin), WIPO Case No. D2000-0402, Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248, and, of course, D2005-1068 (supra), amongst others.

An identity also exists with regard to the disputed domain name and the domain name held by the Complainant, as it is evident that the words “Jess Encinar” and “Jesus Encinar” only differ due to the presence of an accent. The doctrine established in this respect by the WIPO Arbitration and Mediation Center was materialized in Decisions Barcel Corporacin Empresarial, S.A. v. Hello Domain, WIPO Case No. D2007-1380 and Atrpalo, S.L., v. Carlos Martnez, WIPO Case No. D2007-0661. We extract the following excerpt from the latter of the two:

“Obviously, the words “atrapalo” and “atrpalo” are practically identical, as they are only distinguished by the presence or not of an accent. In every other way, in accordance with the orthographic rules of the Spanish language, the trademarks and denomination of the Complainant would be correctly written as “atrpalo”.

Consequent to the foregoing, it may be concluded that the domain name is identical to or confusable with the Complainant’s previously mentioned trademarks.”

A2. The Respondent has no rights or legitimate interests in respect of the domain name;

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

The name “Jess Encinar” currently constitutes an unregistered notorious trademark (Common Law trademark), given the economic importance of such name in the online real estate market, and in the light of its association with the activity carried out by the company IDEALISTA.

The holder of the notorious trademark is evidently protected from the formal and opportunistic holder, as the former possesses a prior legitimate interest that is worthy of better protection than that granted to the latter. Such is the case in the present dispute, as was understood by the WIPO Arbitration and Mediation Center, to mention the most extensive jurisprudence regarding cases in this area of expertise, in previous analogous cases such as the following: Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235; Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210; and Daniel C. Marino Jr. v. Video Images Productions, et al, WIPO Case No. D2000-0598, amongst others, in which the holder of the notorious trademark is, without any exception, systematically protected.

It appears indisputable, therefore, that given the fact that the Complainant is the sole and full holder of the trademark rights over the domain name <jesusencinar.com>, the Respondent should, by definition, lack any prior legitimate rights.

With regard to the Respondent’s legitimate interest, it was impossible for the Complainant’s representatives to verify the identity of the Respondent until the Center proceeded to request the registrar for it. Therefore, we could not know whether the latter has been commonly known in the market by the denomination “jessencinar”, or whether the same is the holder of whichever trademark for goods or services, given that we were unaware of the identity of the holder of the disputed domain name as such information does not appear in the WHOIS database. According to the information that we were able to obtain from the aforementioned database, we were able to determine that a Privacy Service, offered by the same registrar Moniker Online Services LLC (Moniker) is being employed to hide the registrant’s identity. In this regard, two Decisions related to this issue, TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620 (in which Moniker is also involved) and F. Hoffmann-La Roche AG v. PrivacyProtect.org, Domain Admin and Mark Sergijenko, WIPO Case No. D2007-1854, must be considered.

Consequently, we sent requests to the registrar Moniker via email for information on the holder’s identity, attached to the Complaint as document n 12, and failed to receive a reply in this regard from the registrar. The Respondent’s conduct by not revealing the latter’s identity is deemed by the doctrine of the Center as a presumption of a lack of right or of any legitimate interest in respect of the registered domain name. Thus, we literally quote Decision WIPO Case No. D2005-1068 (supra):

“The inference that the Respondent took the First Complainants name for an illegitimate purpose is reinforce by the fact that the Respondent has sought to hide behind a cloak of anonymity in registering the domain name in the name individual`.”

With regard to the possibility of the Respondent utilizing the domain name with regard to a bona fide offering of goods or services, it is convenient to refer to the contents of the website. In this regard, the Respondent has not developed a specific webpage and, rather, has lodged the same in a domain parking and the corresponding website contains a series of links to third parties webpages, thereby allowing the Respondent to obtain profits by simply reaching agreements with other companies for them to advertise themselves on his page. In this respect, it is convenient for us to refer to BEI Industrial Encoders v. Jonathan Phillips, WIPO Case No. D2007-0702 where the expert establishes the following:

“Respondent’s use of the domain name in connection with a “domain parking program” cannot be considered a legitimate use of the name in connection with the bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.”

Consequently, it cannot be argued that the Respondent is carrying out a legitimate and loyal use, or a non-commercial use, of the domain name, as the only purpose of the Respondent’s utilization of the web is precisely to obtain economic profits from lodging the web in a domain parking. Furthermore, the third party links that appear on the disputed website coincide with domains corresponding to companies that carryout activities in areas such as Business and Finance, Real Estate, Internet, among others, which bear a strong resemblance with main topics that are developed by my client’s web portal. Based on the foregoing, the Respondent’s intention to misleadingly divert consumers for commercial gain can be easily inferred.

A3. The domain name was registered and is being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraphs 3(b)(ix)(3))

The Respondent’s bad faith is more than apparent in both the registration and use of the domain name object of the present dispute. Such legal appreciation is manifested by virtue of the following:

As was already pointed out, the Respondent’s bad faith is confirmed by the fact that the website corresponding to the disputed domain contains links to other company’s websites that carryout activities in areas similar to those in which my client is notoriously known and that, furthermore, coincide with the main business areas contained in my client’s web portal.

Further to the above, a great amount of jurisprudence exists evidencing the Respondent’s bad faith in the registration and use of the domain name not only when there is an active conduct, which constitutes the party’s bad faith, but also when such party does not carryout an active development and utilization of the domain name. To this end, the case of Perlier S.p.A. v. Ms. Darryl O’Donnell, WIPO Case No. D2003-0847 is very enlightening:

“With regard to the use in bad faith of the disputed domain name, Complainant’s evidence shows that the default page of “www.perlier.info” consists in a parking place of its Registrar, Register.com, offering various services and searches, inferring that there is no positive action undertaken by Respondent in the use of the domain name <perlier.info> but a mere “passive” holding of that domain name by Respondent”.

As stated in the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and confirmed in subsequent WIPO decisions, “[…] the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith. […]”.

The decision in Telstra Corporation Limited v. Nuclear Marshmallows (supra)was the first time that the non-active utilization of the disputed domain name was deemed proof, which is not appraised in point 4(b) of the Policy, to accredit a domain’s registration and use in bad faith. In the said Decision, the Center points out that the understanding of bad faith will arise subsequent to the analysis of the specific circumstances surrounding each concrete case and, specifically, establishes the following:

“The Administrative Panel has considered whether, in the circumstances of this particular Complaint, the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith. It concludes that it does. The particular circumstances of this case which lead to this conclusion are:

(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,

(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,

(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and

(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law”.

Consequently, the Respondent’s inactivity with respect to the disputed domain name does not suffice to automatically suppose evidence of such domain’s registration and use in bad faith and, thus, the concrete circumstances surrounding each particular case must also be evaluated by the Center. In this regard, the Center set forth several guidelines for orientation purposes, to determine when the non-active utilization of a domain would lead to the consideration of a use carried out in bad faith in its famous Decision WIPO Case No. D2000-0003 (supra).

Accordingly, in what follows we shall proceed to evaluate the aforesaid requirements in respect of the case at hand:

- Jess Encinar has achieved the consideration of a non-registered trademark, of great relevance in the market, as was set forth in epigraph A of the present Claim.

- Up until now, the Respondent has not manifested any signs of good faith regarding the use that said party has carried out of the domain, as the latter does not perform any business related to an offer in good faith of products or services through such domain.

- There was no information available concerning the identity of the Respondent in the WHOIS database, as was shown in section B herein and, furthermore, accredited by virtue of document n 1 attached to the Complaint.

- We sent requests to the registrar Moniker via email for information on the holder’s identity, and failed to receive a reply, as was already set forth in section B of the present claim.

Further to analysing these four points, along with the support of numerous jurisprudence in this regard, Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075; Association of British Travel Agents Ltd .v. Sterling Hotel Group Ltd, WIPO Case No. D2000-0086; Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515; Teledesic LLC v. McDougal Design, WIPO Case No. D2000-0620; VEDA GmbH v. Mr. Nicholas Silverstone, WIPO Case No. D2002-1040; McDonald’s Corporation v. Easy Property, WIPO Case No. D2006-1142, we deem that point 4.b) required by the Policy has been duly proven and, accordingly, that the registration and use of the disputed domain name <jessencinar.com> by the Respondent was carried out in bad faith.

In addition to the arguments set forth above, we would like to draw attention to another point that reveals how the respondent’s acts have been carried out in bad faith. There is a new activity, which according to WIPO Case No. D2000-0402 is well known by the Center, which consists of the registration of names that appear in the news, and are highlighted by the media.

“…a practice which has developed recently of registering names and events in the news, literally moments after they become news…”

2005 was the year in which IDEALISTA and, consequently, my client obtained an overall recognition and become the leader of the online real estate market. Documents n 7 and n 13 attached to the Complaint reveal that in the year 2007 the media still refer to the success that was achieved by the company in 2005, when IDEALISTA invoiced 5 million Euros and had a net profit of 1.6 million Euros. My client registered the website under his own name on February 8, 2006, thereby increasing his popularity and inevitably connecting his image with IDEALISTA. The registration of the disputed domain name was carried out later on October 15, 2006, and taking into consideration the use that it is being given by the Respondent, as was previously mentioned, the latter’s bad faith in both the registration and the use of the disputed domain name <jessencinar.com> seem clear.

B. Respondent

The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in them.

 

6. Discussion and Findings

To qualify for cancellation or transfer of the domain names at issue, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous WIPO cases in which the respondent failed to file a response, the Panel’s decisions were based upon the complainant’s assertions of fact and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel S.A. v. Miguel Garca Quintas, WIPO Case No. D2000-0140. The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

In this case, given inter alia, the apparently timely disclosure by the registrar of “Michael Doson” as the underlying registrant of the disputed domain name, the Panel elects to treat Mr. Doson as the proper party respondent for porpuse of its analysis, as set out below. See The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438.

A. Identical or Confusingly Similar

It is well established in previous WIPO cases that, where a disputed domain name incorporates a complainant’s trademark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr, WIPO Case No. D2000-1525.

In the present case, the disputed domain name incorporates identically the Complainant’s name “Jess Encinar”. However, as the Complainant appears to possess no registered trademark for that name, the question is whether the Complainant has succeeded in establishing unregistered (or common law) trademark rights in that name for the purpose of the Policy? In order to do in this case, the Complainant would need to demonstrate to the Panel’s satisfaction that his name, “Jess Encinar”, has itself acquired a degree of distinctiveness or secondary meaning in connection with the Complainant’s business activities. The Panel has taken note in this regard of the uncontested arguments and reasons advanced by the Complainant above, of the previous WIPO UDRP Decisions cited above by the Complainant, and of the various supporting materials provided in the Complaint. These latter include a number of media reports referring to Mr. Encinar by name in connection with his involvement in various business and commercial activities in Spain and elsewhere, including what would appear to be quite substantial involvement in the real estate business. On balance, the Panel finds, on the particular facts and circumstances of this case, and especially because, in the view of the Panel, the Complainant has shown that his name is bound up, synonymous and associated with his business and commercial activities, that the Complainant has succeeded in establishing unregistered trademark rights in JESS ENCINAR for the purpose of the present proceedings under the Policy. See Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235, and, in particular, the remarks of the sole panelist in para. 6.12 of this decision.

The Panel also agrees with the Complainant’s contention that the addition of the suffix “.com” to the disputed domain name is for Internet registration purposes only, being a requirement of the domain naming system, and does not serve as a distinguishing feature for trademark purposes under the Policy and may, therefore, be disregarded. See The Bank of the Pacific v. Digi Real Estate Foundation, WIPO Case No. D2006-1112; Columbia Insurance Company v. G Design, WIPO Case No. D2006-1617; and Alliant Credit Union v. Mark Andreev, WIPO Case No. D2007-1085.

The Panel would add that the selection by the Respondent of the Complainant’s name as the basis of the disputed domain name, in the absence of any explanation to the contrary, of which none is forthcoming on the part of the Respondent, must represent some commercial value to the Respondent and, because of the Complainant’s notoriety in business circles, would not appear to have been chosen by chance. This also reinforces the claim that the Complainant has acquired and enjoys unregistered trademark rights in his name recognised and protected at Common Law.

In view of all this, the Panel finds that the disputed domain name registered by the Respondent is identical to the Complainant’s trademark comprising his name Jess Encinar, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has unregistered trademark rights at Common Law established through use in commerce for several years prior to the registration of the disputed domain name by the Respondent.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

– whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

– whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

– whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. Indeed, as was pointed out in Singapore Airlines Limited v. Robert Nielson (trading as Pacific International Distributors), WIPO Case No. D2000-0644, “it strains credibility” that the Respondent was oblivious of the existence of the Complainant’s widely known name and unregistered trademark JESS ENCINAR when registering the disputed domain name. Apart from that, if the Respondent had any such rights and interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to this Complaint. See 1-800-Flowers.com, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc. v. G Design, WIPO Case No. D2006-0977.

Nor has the Respondent been authorized or licensed by the Complainant to use the Complainant’s trademark Jess Encinar in the disputed domain name. Indeed, the adoption by the Respondent of a domain name identical and confusingly similar to the Complainant’s well-known and widely-used trademark inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and his products and services (see further on this point below) and may also adversely affect the valuable goodwill that the Complainant has established in his name and trademark through investment and commercial use over several years.

Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate non-commercial or fair use of the disputed domain name.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, [the respondent] has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on its web site or location.”

Based on the record in the case file, the Panel agrees with the Complainant’s contention that the Respondent, by registering the disputed domain name, is likely trading on the Complainant’s valuable goodwill established in his widely known name and trademark JESS ENCINAR. In the particular circumstances of the present case, the Panel takes the view that it was unlikely that the registration of the disputed domain name by the Respondent was coincidental, but rather more likely to have been intentionally made with the Complainant’s widely know name and trademark specifically in mind.

Again, by registering and using the disputed domain name incorporating the Complainant’s widely known name and trademark JESS ENCINAR, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and his business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file is, in fact, the situation. Such misleading consequences, in the view of the Panel, constitute bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.

Furthermore, the fact that the disputed domain name includes the widely known name and trademark JESS ENCINAR of the Complainant, used by the Complainant in connection with his various business activities for several years before the Respondent registered the disputed domain name, is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman, WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. The Respondent has also not sought to deny the Complainant’s contentions that the domain name has been used to post third party links to Companies that carry out activities in areas similar to the Complainant, such as real estate.

Also, the fact that the disputed domain name does not currently resolve to a website but merely provides links to other websites – in other words, a case of so-called ‘passive holding’ of a domain name by the Respondent – is in the circumstances of this case indicative of bad faith use and registration of the disputed domain name on the part of the Respondent. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See also Perlier S.p.A. v. Ms. Darryl O’Donnell, WIPO Case No. D2003-0847; and BEI Industrial Encoders v. Jonathan Phillips, WIPO Case No. D2007-0847.

Finally, the failure of the Respondent to answer the Complainant’s Complaint or take any part in the present proceedings is, in the view of the Panel, only reinforces a finding of bad faith on the part of the Respondent in this case. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

Therefore, taking all these facts and circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

 

7. 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 domain name <jessencinar.com> ACE encoding <xn--jessencinar-6gb.com> be transferred to the Complainant.


Ian Blackshaw
Sole Panelist

Dated: June 5, 2008