WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bardón y Rufo 67, S.L. v. Marko Mattila, Auto Katti, S.L.
Case No. D2012-1192
1. The Parties
The Complainant is Bardón y Rufo 67, S.L., of Málaga, Spain, represented by Trebia Abogados, Spain.
The Respondent is Marko Matilla, Auto Katti, S.L., of Málaga, Spain, internally represented.
2. The Domain Name and Registrar
The disputed domain name <malagacarpeople.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2012. On June 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 14, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center dated June 21, 2012, regarding the language of the proceedings, the Complainant submitted on the same date a request that Spanish be the language of the proceedings to which the Respondent objected on June 25, 2012.
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 in both Spanish and English the Respondent of the Complaint, and the proceedings commenced on July 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2012. The response was filed with the Center on July 30, 2012.
The Center appointed Paz Soler Masota as the sole panelist in this matter on August 8, 2012. 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. According to paragraph 10(c) of the Rules, the decision due date was extended to September 17, 2012.
4. Factual Background
The Complainant is a Spanish company offering car rental/services. The Respondent is also a company based in Spain offering similar services. The disputed domain name was registered on August 2009.
As per the language of the proceeding, the Respondent has objected to the Complainant’s request for Spanish be the language of the proceeding, because English has been the language of the Registration Agreement and also the Respondent alleged a poor understanding of Spanish. Despite the fact that the Respondent represents a Spanish company with domicile in Spain and business run in Málaga (Spain), and also despite the fact that Respondent has provided its Response without previous translation of the Complaint filed with the Center by the Complainant, this Panel has taken into consideration the objection from Respondent and decided to render its Decision in English language, without the Complainant having to translate neither of the documentation filed with the Center, pursuant to paragraph 11 of the Rules.
5. Parties’ Contentions
The Complainant has trademark rights for MALAGACAR.COM, under the Spanish trademark No. 2492788, Class 39 (car rental without driver) of the International Classification, granted on November 27, 2003, and no license/permission/authorization or consent was granted to use the trademark MALAGACAR.COM in the disputed domain name. Since 2001, the Complainant is active in the market of car rental without driver in Málaga, Internet being the main channel for the promotion of its services. The Complainant also registered a domain name <malagacar.com> in 2000 and, since then, it owns a long list of domain names to develop its business. The Complainant alleges that the website operated through its domain name <malagacar.com> offers its services in six languages. This website, the Complainant contends, represents its main tool of direct and continuous communication and commercial activity with its customers, both located in Spain and abroad. The Complainant has also a traditional establishment open to the public, adjacent to the premises of the Malaga’s airport.
The Complainant submits that the Respondent does not comply with the requirements of the Spanish Trademark Act (34/2002) as per the due identification of the services provider in the disputed domain name website, which renders its activity, per se, as illegal.
The Complainant sustains its request for transfer of the disputed domain name in its favour in order to protect its trademark rights and avoid the likelihood of confusion to its customers and the evident fraudulent and illegitimate use executed by the Respondent, who, by no means, could not ignore the Complainant’s prior rights, since the Respondent was its employee in the past. And the fact that the Respondent is active on the same target market reinforces this contention.
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s trademark MALAGACAR.COM. The disputed domain name <malagacarpeople.com> contains the entire Complainant’s trademark in its entirety. Moreover, the addition of the descriptive expression “people” is not sufficient to distinguish the disputed domain name from the trademark owned by Complainant. Because of the notorious character of the Complainant’s trademark MALAGACAR.COM, in Spain inevitably causes confusion and, hence, Internet users are induced to believe that the webpage at the disputed domain name is somehow associated or recommended from the Complainant, which is not the case.
Finally, the Complainant alleges that the Respondent has no trademark rights in the disputed domain name. As a matter of fact, the Respondent filed a Spanish trademark application for MALAGACARPEOPLE, which was denied by the Spanish Patent and Trademark Office due to the objection filed, in due date, by the Complainant.
The Respondent replied to the Complainant’s contentions by stating that the disputed domain name is neither identical nor confusingly similar to a trademark in which the Complainant has rights. The Respondent states that nature of the domain name system allows to register key words as domain names. . In fact, a basic online research shows, the Respondent alleges, a wide variety of other legitimate car hire businesses using the term “malagacar” as part of a domain name, none of them owned by Complainant who should not reasonably intend to use key word rich strategies in its own domain names, banning other competitors from pursuing a similar commercial strategy.
The Respondent also alleges that it is a company incorporated in 2004, with an important investment in its fleet of cars, targeted its customers operating through the channel of Internet. Initially, this commercial activity was performed through the website “www.autokatti.com”, and several other domain names in the last years. The disputed domain name was registered in 2009, and it has been operating to exclusively develop the commercial activity of the Respondent, with neither confusingly connection nor association with the Complainant. As a matter of fact, the Respondent states that a simple research on Internet by typing the Complainant’s trademark directs customers to the Complainant’s website and not to the website operated by the Respondent. The Respondent alleges that the disputed domain name was not registered with the intention to resell it to the Complainant.
Finally, the Respondent contends that it is highly questionable that the Complainant holds rights in a trademark which is clearly composed by generic terms.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles to use in rendering its decision: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy sets out the three elements which must be present for the proceeding to be brought against the Respondent, and which the Complainant must prove to obtain a remedy. It provides as follows:
“You [the respondent] are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
In the administrative proceeding, the complainant must prove that each of these three elements are present.
A. Identical or Confusingly Similar
The Complainant has evidenced that it has registered trademark rights in MALAGACAR.COM. The disputed domain name is not ad pedem litterae identical to the trademarks owned by the Complainant. The issue herein is therefore whether there is confusing similarity between the trademark and the disputed domain name or not.
The question is to be answered positively. In fact, the disputed domain name <malagacarpeople.com> wholly incorporates the Complainant’s registered trademark MALAGACAR.COM. The Panel finds that the disputed domain name is confusingly similarity to the Complainant’s trademark according to the Policy, and this despite the addition of the word “people” to the disputed domain name. The addition of generic or descriptive terms to the trademark does not eliminate or avoid the likelihood of confusion between the disputed domain name and the trademark. Indeed, the main part of the disputed domain name is the Complainant’s trademark. The addition of the generic term “people” does not dispel confusion (see Nintendo of America Inc. v. Fernando Sasha Gutierrez, WIPO Case No. D2009-0434, and more in particular, Bardon y Rufo 67, S.L. v. Peter Nilsson, Peter Nilsson, S.L., WIPO Case No. D2011-1298).
Thus, and according to paragraph 4(a)(i) of the Policy, the Panel concludes that the disputed domain name <malagacarpeople.com> is confusingly similar to the Complainant’s trademark MALAGACAR.COM.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) reads:
“When you [the Respondent] receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(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.”
It is generally difficult for the Complainant to prove that the Respondent does not have any rights or legitimate interests in the disputed domain name and, on the other hand, it would be fairly simple for the Respondent to demonstrate that it has any rights or legitimate interests pursuant to paragraph 4(c) of the Policy. In the present case, the Respondent has failed to demonstrate its rights and legitimate interests in the disputed domain name as per paragraph 4(c) of the Policy.
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests.
The Complainant has owned and used the trademark MALAGACAR.COM since, at least, its granting in 2003 and, beforehand, under the domain name <malagacar.com>, since 2001. The Complainant has not licensed, authorized nor permitted or however consented the Respondent to use of the trademark at any moment.
It is also relevant that the Complainant has alleged, and the Responded has not contested to it, that Respondent was its former employee. Therefore, the Respondent could not ignore the prior rights of Complainant over its sign MALAGACAR.COM. This circumstance leads the Panel also to conclude that the attempt of the Respondent to obtain a Spanish trademark on the expression “malagacarpeople” was not in bona fide. And the fact that the Spanish Patent and Trademark Office rejected this application based on the opposition of Complainant on September 5, 2011, should not be herein disregarded. The Respondent has not been granted any rights over the expression “malagacarpeople”. The Respondent has also failed to provide any evidence of legitimate non commercial or fair use the disputed domain name nor any attempt to avoid its lack of association with the Complainant’s trademark.
In this Panel’s view, the Respondent’s use of the disputed domain name cannot be considered to be in accordance with a bona fide offering of goods or services.
In accordance with paragraph 4(a)(iii) of the Policy, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name <malagacarpeople.com>.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a disputed domain name in bad faith. Paragraph 4(b) is reproduced below:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you [the Respondent] have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an example of “registration and use of a domain name in bad faith”. In this Panel’s view, circumstances (i), (ii), and (iii) are more related to the intention or purpose of the registration of the disputed domain name, and circumstance (iv) concerns the use of the disputed domain name.
The Complainant is required to prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith because in paragraph 4(a)(iii) of the Policy, the provision contains the conjunction “and” rather than “or” and it refers to both the past tense (“has been registered”) and the present tense (“is being used”) hence circumstances at the time of registration and thereafter have to be considered by the Panel. The Complainant is required to prove that the registration of the disputed domain name was undertaken in bad faith and that the circumstances of the case are such that the Respondent is continuing to act in bad faith.
The Panel has considered that the Complainant’s assertions and evidence with regard to the Respondent’s registration and use of the disputed domain name have been in bad faith. And the Respondent has failed to invoke any circumstances that could demonstrate that the Respondent did not register and is using the disputed domain names in bad faith.
The Respondent’s true purpose in registering the disputed domain name <malagacarpeople.com>, which incorporates the Complainant’s trademark, appears to have been done to capitalize on the reputation of the well-known trademark of the Complainant by diverting Internet users seeking the Complainant’s websites to the Respondent’s own website. According to previous UDRP decisions, the registration of a domain name should avoid confusion with a prior trademark, in particular when that trademark is obviously notorious through the use of Internet search tools such as Google or Yahoo (see Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, WIPO Case No. D2009-0776; BzzAgent, Inc. v. bzzagent. Com c/o Nameview Inc. Whois Identity Shield and Vertical Axis, WIPO Case No. D2010-1187). And it should be noted that Respondent has precisely recognized this fact in its allegations. It should be further noted that both parties are located in Spain where the Complainant’s trademark is registered. As set out above, the Panel notes that the Respondent was a former employee of Complainant. Therefore, at the time the Respondent registered the disputed domain name it knew about the Complainant’s trademark. In this Panel’s view, the disputed domain name was registered in bad faith.
The Respondent, by using the disputed domain name, is misleading consumers and confusing them by making them believe that the website behind that link is associated, fostered or recommended by the Complainant. And the Respondent’s website has no legitimate business connection with the Complainant or its trademark. The Complainant has not granted the Respondent neither permission nor license of any kind to use its trademarks. Such unauthorized use of the Complainant’s trademark by the Respondent implies opportunistic bad faith. The Respondent’s obvious knowledge of the Complainant’s prior rights on the expression “malagacar” should have prevented him to register a domain name embedding it, and thereafter use it to compete directly with the Complainant, a circumstance that should be deemed as opportunistic (see Bardon y Rufo 67, S.L. v. Peter Nilsson, Peter Nilsson, S.L., Supra).
In the Panel’s view, the present case is covered by paragraph 4(b)(iv) of the Policy.
According to paragraph 4(a)(iii) and (b) of the Policy, the Panel finds that the disputed domain name <malagacarpeople.com> has been registered and is being used by the Respondent 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 disputed domain name <malagacarpeople.com> be transferred to the Complainant.
Paz Soler Masota
Dated: September 17, 2012