WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Procter & Gamble Company v. Gamulin Nikita
Case No. D2011-0078
1. The Parties
The Complainant is The Procter & Gamble Company of Cincinnati, United States of America, represented by Antequera Parilli & Rodríguez, The Bolivarian Republic of Venezuela.
The Respondent is Gamulin Nikita of Klintsy, the Russian Federation.
2. The Domain Name and Registrar
The Disputed Domain Name <sra-robles.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2011. On January 14, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On January 14, 2011, GoDaddy.com, Inc. 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 January 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2011. The Respondent did not submit any formal response.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on March 1, 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. Factual Background
The Complainant is one of the largest corporations in the world by market capitalization.
The Complainant is owner of the following services marks in the Bolivarian Republic of Venezuela:
SEÑORA ROBLES, registered under the Registration number S029937, on December 19, 2005 for the class 41.
SEÑORA ROBLES PG and device, registered under the Registration number S031553, on June 19, 2006 for the class 41.
The Complainant uses the trademark to identify a calling center service offered to the consumers of all products made by the Complainant. With this service, consumers may obtain information about the correct use of the Complainant´s products, make suggestions or report any defect of the products they have bought.
The Disputed Domain Name was registered on February 29, 2000 by the Complainant. Apparently the registration lapsed and the Disputed Domain Name was registered by the Respondent in late 2010.
5. Parties’ Contentions
The Disputed Domain Name is identical to the registered trademark SEÑORA ROBLES in which the Complainant has rights. The first word, “sra” is the abbreviation of the Spanish word “Señora”. The Disputed Domain Name and the trademarks are well-known in the Bolivarian Republic of Venezuela.
There is no way that Mr. Nikita Gamulin could claim that he has any interest in the Disputed Domain Name.
The Respondent has registered the mark as domain name to obtain fraudulent benefit from the reputation of the mark by attracting visitors to other web sites advertised through the website identified with the mark of the Complainant. The Respondent is not commonly known by the Disputed Domain Name as an individual, business or other organization. The Respondent has registered another 74 domain names. The Respondent’s conduct of abuse in registering domain names has already been established by the National Arbitration Forum in the case Children’s Hospital Central California v. Nikita, Gamulin, NAF Claim No. 1007001337796, with respect to the domain name <valleychildrens.org>.
The Respondent by registering the Disputed Domain Name is preventing the owner of the service mark from reflecting the mark SEÑORA ROBLES in a corresponding domain name. The Complainant had peacefully used the domain name subject of this complaint since February 2000 until the date of its last renewal, registered by the Respondent without any permission of Complainant as the legitimate owner of the SEÑORA ROBLES mark. Respondent benefits from the recognition of the SEÑORA ROBLES trademark, to use it as a conducting wire from bringing attention to his own commercial interests. The fact that the Respondent has registered other domain names where Respondent displays the same information about downloadable products that direct visitors to another web site namely “www.thefiletreasury.com” from a downloading service provider is evidence of bad faith.
Complainant requests the transfer of the Disputed Domain Name.
The Respondent did not formally reply to the Complainant’s contentions. However, he did engage in brief email exchanges with the Center and the Complainant after becoming aware of the commencement of these proceedings on January 24, 2011, January 26, 2011 and January 27, 2011. In this communications the Respondent requested the release of the Disputed Domain Name.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the disputed domain name is 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 such domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in SEÑORA ROBLES as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.
The Panel is also prepared to find that the domain name <sra-robles.com> is confusingly similar to the Complainants' trademark SEÑORA ROBLES. The name ROBLES is clearly the dominant element of the domain name and the term “sra” means “Señora” in Spanish. The Panel has had little difficulty in finding that the Disputed Domain Name is confusingly similar to the trademark SEÑORA ROBLES, as the additional element of the domain name, in this case “-“ is irrelevant.
It is a consensus view that if the complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights. The location of the registered trademark is irrelevant when finding rights in a mark (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, question 1.1).
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademarks. The Complainant has prior rights in the trademarks which precede the Respondent's registration of the Disputed Domain Name by several years. In addition, the Disputed Domain Name was previously in use by the Complainant, as stated in the Complaint.
The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Disputed Domain Name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 2.1; and Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that the Disputed Domain Name is used in connection with a bona fide offering of goods or services, or that any of the other circumstances listed in paragraph 4(c) of the Policy apply in this case.
Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith.
The Complainant's allegations with regard to the Respondent's registration and use of the Disputed Domain Name in bad faith have been considered by the Panel. These allegations have not been contested by the Respondent.
The Complainant registered and used the Disputed Domain Name for more than a decade. As stated in the Complaint, the Disputed Domain Name is still listed in the DMOZ Directory with the description provided by the Complainant. A quick look at the records of the previous content of the Disputed Domain Name available at “http://waybackmachine.org/*/http://sra-robles.com”, shows evidence of use by the Complainant during all the registered period1. The snapshots of the Disputed Domain Name available at Wayback Machine contain the Complainant’s trademarks and the information referred to in the Complaint.
The Complainant contends that the Respondent is using the Disputed Domain Name to benefit from the recognition of the SEÑORA ROBLES trademark for his own commercial interests. At the date of this Decision, the Disputed Domain Name contains what seems to be an index to download “free software, movies, games, music, wallpaper and pictures”. Such use accordingly suggests an attempt by the Respondent to profit from the Internet traffic from Internet users seeking the Complainant’s official website by the incorporation of the mark in the Disputed Domain Name. Based upon such findings and evidence, the Panel therefore finds that the Respondent has intentionally attempted to attract Internet users to his own site and to other online location by creating a likelihood of confusion with the Complainant’s mark, as to the source, sponsorship, affiliation or endorsement of his site or of the products and services offered on his website (paragraph 4(b)(iv) of the Policy).
Likewise, in view of the Panel, the NAF case referred by the Complainant is further evidence of bad faith on the part of the Respondent.
Therefore, taking all the 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.
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 <sra-robles.com> be transferred to the Complainant.
Pablo A. Palazzi
Dated: March 12, 2011
1 A panel may undertake limited factual research into matters of public record (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 4.5). Several cases admit the use of Wayback Machine (Archive.org): Lan Airlines S.A. v. Joan F. Casas, Ks@s Intl, WIPO Case No. D2010-0008; La Francaise des Jeux v. Domain Drop S.A., WIPO Case No. D2007-1157 and G.U.C. S.A. v. Roberto Petralia, WIPO Case No. D2010-1865. The Internet Wayback Machine allows an Internet user to view the number of times the disputed domain name was crawled by the Wayback Machine, not how many times the site was actually updated. However in this case this is enough to corroborate the previous use by the Complainant of the disputed domain name.