WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Santana Tesoro, LLC v. PPA Media Services and Fundacion Private Whois
Case No. D2013-1317
1. The Parties
1.1 The Complainant is Santana Tesoro, LLC of Las Vegas, Nevada, United States of America (the “Complainant”) represented by Donahue Gallagher Woods LLP, United States of America.
1.2 The Respondents are PPA Media Services of Santiago, Chile and Fundacion Private Whois of Panama, Panama (collectively, the “Respondent”).
2. The Domain Name and Registrar
2.1 The disputed Domain Name <carlosantana.com> (the “disputed Domain Name”) is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2013. On July 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On July 30, 2013, the Registrar transmitted its verification response to the Center by email disclosing registrant and contact information for the disputed Domain Name that differed from the named Respondent and contact information in the Complaint.
3.2 The Center sent an email communication to the Complainant on July 30, 2013 providing the registrant and contact information disclosed by the Registrar and invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 8, 2013.
3.3 The Center verified that the Complaint with the amended 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”).
3.4 In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 13, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 2, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2013.
3.5 The Center appointed Ike Ehiribe as the sole panelist in this matter on September 10, 2013. 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 paragraph 7 of the Rules.
4. Factual Background
4.1 The Complainant in this administrative proceeding is Santana Tesoro, LLC, a limited liability company based in Nevada in the United States of America. For over four decades it is said that the Complainant and its predecessors have used the SANTANA mark in connection with the Complainant’s commercial offering to the public of musical sound recordings. It is also said, for the last thirteen years, the Complainant has used the CARLOS BY CARLOS SANTANA mark in connection with shoes, musical instruments and accessories and for the last four years, in connection with fashion handbags. The marks are said to be based on Mr. Carlos Santana, the owner of Santana Tesoro and a world-renowned musical performer. Mr. Carlos Santana is said to have sold well over 100 million records and performed for more than 100 million fans at concerts across the world in the last forty years. Mr. Carlos Santana is said to have been awarded 10 Grammy awards, and his musical group was accepted into the Rock and Roll Hall of Fame in 1998.
4.2 The Complainant registered the SANTANA mark at the United States Patent and Trademark Office on September 20, 2005 with trademark registration number 2296432 and the CARLOS BY CARLOS SANTANA mark at the same office on July 13, 2010 with trademark registration numbers 3817056 and 3817053. The Complainant and its predecessors are also said to have registered its trademarks in other jurisdictions around the world, such as in: (i) the European Union on February 19, 2002, where the trademark SANTANA was registered with registration number 002085439; (ii) in Canada on January 17, 2003, where the trademark SANTANA was registered with registration number TMA 573935 and the CARLOS BY CARLOS SANTANA trademark was registered with registration number TMA 686917; and (iii) in Australia on February 12, 2001, where the trademark SANTANA was registered with trademark registration number 865746. Furthermore, it is stated that the Complainant and its predecessors have owned the domain name <carlossantana.com> since 1999.
4.3 The Respondent registered the disputed Domain Name on September 8, 2004.
5. Parties’ Contentions
5.1 The Complainant submits that the disputed Domain Name <carlosantana.com> is identical or confusingly similar to the Complainant’s marks, namely CARLOS BY CARLOS SANTANA and SANTANA, regardless of the addition of a generic top-level domain such as “.com” or any other extension. In support, the Complainant relies on previous UDRP decisions such as Busybody, Inc. v. Fitness Outlet Inc. WIPO Case No. D2000-0127. The Complainant asserts that the Respondent chose the disputed Domain Name to capitalize on and cause confusion in connection with Internet users seeking the official Carlos Santana webpage at “www.carlossantana.com”, accessible through the Complainant’s domain name at <carlossantana.com>. For instance, Internet users who mistakenly forget to type the second “s” between “carlos” and “santana” are unwittingly directed to the Respondent’s website, which features third-party sponsored advertisements. Furthermore, the Complainant asserts that the Respondent chose the disputed Domain Name to improperly trade off the fame of the Complainant’s marks in order to earn click–through revenues and benefits from Internet users who mistakenly click on the sponsored links accessible on the Respondent’s website.
5.2 The Complainant asserts that the Respondent was never granted any license, franchise or other authorization to incorporate the Complainant’s marks into the disputed Domain Name nor does the Respondent have any authorization to use the Complainant’s marks in connection with distributing any products. In addition, it is said that the Complainant is not affiliated with the Respondent and has never endorsed or sponsored the Respondent’s website. Therefore, as it is put, the Respondent has no basis to argue that it has any right or legitimate interest in the disputed Domain Name. The Complainant further submits that the Respondent had either actual or constructive knowledge of the Complainant’s exclusive rights in its marks when the Respondent chose to register the disputed Domain Name and relies on a number of previous UDRP decisions, such as Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795and The Sportman’s Guide, Inc. v. Modern Ltd., Cayman Islands, WIPO Case No. D2003-0305, to argue that the marketing of third-party products, including products incorporating the Complainant’s marks on the Respondent’s website and the Respondent’s actual or constructive knowledge of the Complainant’s exclusive rights prevents the Respondent from asserting that it has any rights or legitimate interests in the disputed Domain Name.
5.3 The Complainant submits that the registration of a disputed Domain Name incorporating a well-known trademark used to misdirect Internet visitors to websites offering competing products and services with the apparent intention of earning click-through revenue does not in itself give rise to a legitimate interest nor does it constitute a bona fide offering of goods and services under the Policy, following Societer Anonyme des Galeries Lafayette and Galeries Lafayette Voyages v. Domains By Proxy, Inc./ Reinhard Herrman, WIPO Case No. D2009-0904 and Lego Juris A/S v. Privacy Protect.org/SMVS Consultancy Private Limited, WIPO Case No. D2009-1094. In addition, it is submitted that there is no evidence provided by the Respondent suggesting that the Respondent has ever been commonly known by the disputed Domain Name to prove a right or legitimate interest in the disputed Domain Name as held in Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453.
5.4 On the question of bad faith registration and use, the Complainant submits that the registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements, following The Gap, Inc. v. Deng Youquian, WIPO Case No. D2009-0113. The Complainant further submits that the Respondent’s bad faith use and registration is further established by the Respondent engaging in illegitimate diversion of Internet users to the Respondent’s website for commercial gain by creating confusion as to the website’s affiliation with a trademark owner, as held in Lance Armstrong Foundation v. CSA Marketing, WIPO Case No. D2005-0886. The Respondent is said to use a sponsorship scheme on the Respondent’s website to promote third-party businesses through which the Respondent may receive fees for referrals, which again is irrefutable evidence of bad faith use and registration, following Express Scripts Inc., v. Windgather Investments Ltd / Mr Cartwright, WIPO Case No. D2007-0267. The Complainant also submits that the registration of a domain name with a common misspelling of a mark or domain name in which a party has rights, as in this case, known as “typo-squatting”, has often been held to be evidence of bad faith registration, following Paragon Gifts Inc. v. Domain Contact, WIPO Case No. D2004-0107 and the recent decision in Autodesk, Inc.v. MumbaiDomains, WIPO Case No. D2012-0286.
5.5 The Respondent did not reply to this Complaint and is in default. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.
6. Discussion and Findings
6.1 Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings, the Complainant must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name; and (iii) that the disputed Domain Name has been registered and is being used in bad faith.
6.2 As expressly stated in the Policy, the Complainant must establish evidence of each of these three elements.
A. Identical or Confusingly Similar
6.3 The Panel finds from the uncontroverted facts presented by the Complainant that the disputed Domain Name is confusingly similar or identical to the Complainant’s marks, SANTANA and CARLOS BY CARLOS SANTANA. Clearly, the evidence adduced indicates that the Complainant has utilized its marks for commercial purposes since 1969 and 2000 respectively. The Panel accepts that the Complainant is a world-renowned guitarist, once listed by the Rolling Stone magazine at number 20 on the magazine’s “100 Greatest Guitarists of All Time”. It is patently obvious the disputed Domain Name incorporates the Complainant’s marks, except for the missing “s” at the beginning of “santana”. The Panel is satisfied that the mere addition of the suffix “.com” to the disputed Domain Name does not prevent the likelihood of confusion between Complainant’s marks and the disputed Domain Name, and indeed, the Complainant’s domain name at <carlossantana.com> and the disputed Domain Name. See Busy Body, Inc. v. Fitness Outlet Inc., supra.
6.4 The Panel, in addition to the confusing similarity finding, is satisfied that the Complainant has also established a clear case of “typo-squatting” against the Respondent. As made out by the Complainant, Internet users searching for the Complainant’s official Carlos Santana webpage, who understandably forget or omit to type the second “s” between “carlos” and “santana”, are re-directed to the Respondent’s website featuring third-party sponsored advertisements. Thus, the Panel finds the Respondent’s act of “ typo-squatting” as further evidence of confusing similarity, which the Respondent seeks to exploit for commercial gain. The Panel in support relies on the reasoning in Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, where the panel found the disputed domain name <guiness.com> confusing similar with the complainant’s GUINNESS name and mark based on the respondent’s close misspelling of the disputed domain name by omitting the letter “n”. In this regard, the Panel draws support from the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition at paragraph 1.10, where it is stated that “a domain name which contains a common or obvious misspelling of trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name.”
6.5 Accordingly, the Panel is satisfied that the Complainant has established the requirement of confusing similarity in accordance with paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
6.6 In the Panel’s assessment, the Respondent has also failed to provide any evidence of circumstances required to establish that there exists any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. As held in Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, the Respondent bears the burden of production of such evidence in this regard once the Complainant established its prima facie case. The Panel is therefore satisfied that there is no evidence of any rights or legitimate interests. There is no relationship between the Respondent and the Complainant, and there is no evidence of consent, license, franchise, or authorization given to the Respondent permitting registration of the disputed Domain Name incorporating the marks of the Complainant. Furthermore, the Panel is satisfied that the Respondent registered the disputed Domain Name with the sole intention of misleading Internet visitors and Complainant’s potential customers by creating a likelihood of confusion with the Complainant’s trademarks as to source affiliation or endorsement of the Respondent’s website; such usage by the Respondent cannot remotely be described as a bona fide offering of goods and services nor a legitimate noncommercial or fair use of the disputed Domain Name as propounded in Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903. The Panel is satisfied that as the Complainant alleges, the Respondent’s use of the disputed Domain Name has been for commercial purposes, since the Respondent’s websites features sponsored links to third-party websites, for which the Respondent collects click-through revenues. Furthermore, as held in Bridgestone Corporation v. Horoshiy, Inc., supra, the use of a domain name which is identical and confusingly similar to a complainant’s trademark with the intention of deriving undue commercial advantage from the likelihood of confusion and diverting Internet users to other commercial websites does not confer any legitimate interest to the Respondent nor can it considered to be a bona fide offering of goods and services. See also Lego Juris A/S v. Privacy Protect.org/SMVS Consultancy Private Limited, supra.
6.7 Therefore the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.8 On the question of bad faith registration and use, the Panel is equally satisfied that the Respondent registered the disputed Domain Name in bad faith and has continued to engage in bad faith use since September 8, 2004. The Panel has taken into consideration a number of irrefutable factors. In the first instance, the Panel finds that the Respondent must have known or is deemed to have known of the registration and use of the Complainant’s trademarks prior to registering the disputed Domain Name. Evidently, the Respondent’s registration of the disputed Domain Name occurred well after the Complainant’s registration of its own domain name <carlossantana.com> in 1999 and its trademark registrations, as early as 2001. The Respondent’s registration of the disputed Domain Name with constructive and or actual knowledge of the Complainant’s established rights is sufficient to establish the bad faith requirement. See The Gap, Inc. v. Deng Youqian, supra; see also GOOGLE Inc. v. Abercrombie 1, NAF Claim No. 101579 where the panel held that for a well-known mark such as GOOGLE, constructive notice is sufficient to fix the respondent with notice of the complainant’s trademark rights. Secondly, the Respondent’s predisposition to exploit the confusion created in the minds of Internet users by the registration of the disputed Domain Name for commercial gain or for purposes of creating a likelihood of confusion as to source, sponsorship or endorsement of the Respondent’s website is further proof of bad faith use under the Policy. See Lance Armstrong Foundation v. CSA Marketing, supra.
6.9 Thirdly, the Panel again considers the deliberate “typo-squatting” act of the Respondent, first considered in section 6.4 above, and finds that the practice of “typo-squatting” as in this case, is further evidence of bad faith registration as held by the panel in Autodesk, Inc. v. MumbaiDomains supra when considering the disputed domain names <wwwautocad.com> and <wwwautodesk.com> and the addition of the letters “www” to the disputed domain names. Fourthly, as earlier indicated at section 5.5 above, the Panel has drawn adverse inferences from the Respondent’s failure to or refusal to respond to the allegations, evidence and submissions provided by the Complainant in this proceeding.
6.10 Accordingly the Panel finds that the Respondent registered and continued to engage in bad faith use of the disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy.
7.1 For 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 <carlosantana.com> be transferred to the Complainant forthwith.
Date: September 26, 2013