WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BARBET 99, S.L. v. Unknown / P1e Soft, P1eSoft.com (domain for sale)
Case No. D2013-1820
1. The Parties
The Complainant is BARBET 99, S.L. of Girona, Spain, represented by Sugrañes, S.L., Spain.
The Respondent is Unknown / P1e Soft, P1eSoft.com (domain for sale), of Miami, Florida, United States of America.
2. The Domain Name And Registrar
The disputed domain name, <privata.com> (the “Domain Name”), 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 October 24, 2013. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 25, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 30, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 31, 2013.
The Center verified that the Complaint together 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”).
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 November 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2013.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 28, 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 the Rules, paragraph 7.
On December 2, 2013 the Panel issued an Administrative Panel Procedural Order (“Procedural Order”) disclosing the results of a Google search conducted by the Panel and seeking further information from the Complainant in relation thereto. The Complainant responded to the Procedural Order on December 4, 2013. Despite having been given an opportunity to do so, the Respondent elected not to file any further submission.
4. Factual Background
The Complainant is a Spanish clothing company, which is engaged in the design, manufacture and sale of clothing (and accessories) under the “Privata” name. The Complainant is the proprietor of a number of trade mark registrations of or including the name “Privata”, the earliest of which is Spanish registration No. 980325 PRIVATA filed on July 14, 1981 in class 25 for clothing and granted on July 20, 1982.
The Complainant acquired the rights to the “Privata” clothing brand from its predecessor in late 2000.
The Complainant operates a website connected to its domain name <privata.es>, which it registered on August 6, 2001.
The domain name was registered on September 12, 1999. It is not connected to an active website. According to the complainant’s evidence, the domain name is connected to an internet explorer page headed “internet explorer no puede mostrar la página web”. The panel (situated in the united kingdom of great britain and northern ireland (“uk”)) has visited the website and the page appearing is a bt page (bt being the panel’s internet service provider) headed “sorry, the website “www.privata.com” cannot be found”. The page visible to the panel in the uk features a number of links, 3 of which relate to the word/name “privata”, namely (i) produzione privata, an italian architect’s practice, (ii) a wikipedia encyclopedia entry referring to the missa privata and (iii) a swedish website for privata affärer.
On June 20, 2013, nominalia, the registrar for the complainant’s domain name <privata.es>, sent an email to the respondent stating that it was interested in purchasing the domain name.
On July 3, 2013 a company named namecase.com claiming to be a specialist in buying and selling domain names, emailed nominalia stating that it had been approached by the respondent and informing nominalia that the price for the domain name was usd 40,000.
The correspondence appears to have culminated in an offer by nominalia on July 12, 2013 to pay usd 3,000 for the domain name, an offer which was not acceptable to the respondent.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical to the Complainant’s PRIVATA registered trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions and to the Procedural Order.
6. Discussion And Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights:
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s trade mark PRIVATA and the generic Top-Level Domain (“gTLD”) “.com” identifier. For the purposes of assessing identity and confusing similarity under this element of the Policy, it is permissible for UDRP panels to ignore the gTLD identifier.
Therefore, the Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights, for the purposes of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The unchallenged evidence of the Complainant is that “privata” is not a dictionary word in the English or Spanish languages and that it is appropriate to focus on Spanish because the Respondent has a track record of registering domain names with Spanish connections. The Complainant refers to 4 previous WIPO cases, namely: Juve & Camps, S.A. v. P1esoft.Com, WIPO Case No. 2004-0472 <juvecamps.com>; ATLL Aigües Ter Liobregat v. P1eSoft.com, WIPO Case No. D2004-0556 <atll.com> and <atll.net>; Certamen Miss España, S.L. v. P1ESOFT.COM, WIPO Case No. D2006-0679 <missespana.com>; Caixa d’Estalvis de Catalunya and Tarragona I Manresa, Catalunya Banc, S.A. v. P1ESOFT.COM, WIPO Case No. D2012-0070 <catalunyabanc.com> and <catalunyabanc.net>. All these cited cases involved Spanish complainants and Spanish trade marks and in each case the domain names in dispute were ordered to be transferred.
The Complainant has established that the Domain Name (absent the gTLD “.com” identifier) is identical to the Complainant’s trade mark and the Panel is satisfied that the Respondent has no connection with the Complainant and has received no permission from the Complainant to use the Complainant’s trade mark in this or in any other way.
On what basis could the Respondent be said to have any rights or legitimate interests in respect of the Domain Name? Self-evidently, “Privata” is not the Respondent’s name. Moreover, the Respondent is not making any active use of the name “Privata” save for the fact that the advertising links on the webpage to which the Domain Name is connected refer to various “Privata” entities (see section 4 above).
In the view of the Panel, the Complainant has made out a prima facie case requiring an answer from the Respondent.
In the absence of any explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered the Domain Name in 1999 knowing of the existence of the Complainant’s predecessor’s trade mark PRIVATA and with intent to sell the Domain Name at a profit to the owner of the brand (or one of the owner’s competitors) within the meaning of paragraph 4(b)(i) of the Policy. The Complainant places emphasis on the fact that the Respondent’s name (as identified on the Registrar’s WhoIs database) ends “domain for sale”. However, the fact that a domain name registrant registers a domain name solely for the purpose of selling it at a profit is, of itself, of no significance.
The Respondent is clearly a domain name trader. Trading in domain names, as such, is not an objectionable activity within the terms of the UDRP. For it to be objectionable under the UDRP, the registration has to have been made with a view to exploiting the Complainant’s trade mark, whether for commercial gain or in order to cause damage to the Complainant.
The Panel is satisfied on the unchallenged evidence of the Complainant that the Respondent registered the Domain Name with knowledge of the PRIVATA trade mark, the rights to which were acquired by the Complainant in 2000, and with the intent of exploiting the value of the trade mark. The annexes attached to the Complaint were inadequate, but the material produced in response to the Procedural Order is persuasive and in particular the evidence of the previous UDRP decisions going against the Respondent (see section 6C above). Each of those cases involved Spanish complainants whose trade marks had been adopted by the Respondent for the domain names in dispute in those cases. Moreover, one of the domain names in question, <atll.com>, was registered in 1999 only a few months after the Domain Name was registered. It is this fact, which has swung the Panel in favour of the Complainant in this case.
It is possible, of course, that the Respondent has thousands of domain names of which the Spanish group only constitutes an insignificant minority and that the Respondent registered the Domain Name for its significance as a Latin word and for no other reason. While the Panel recognizes that as a possibility, the evidence suggests to the Panel the probability that the Respondent has a penchant for Spanish trade marks and had the Spanish PRIVATA trade mark in mind at time of registration. Were it otherwise the Respondent could so easily have come forward with an explanation, but has instead decided not to participate in this administrative proceeding.
That deals with registration in bad faith, but what about use in bad faith? To succeed, the Complainant needs to demonstrate on the balance of probabilities, not only bad faith registration, but also bad faith use.
The Complainant contends that the Respondent’s intention was to sell the Domain Name to the owner of the trade mark. If that were so, the Respondent has been extraordinarily patient waiting 14 years before naming a price and even then only after having been approached by the Complainant (see section 4 above).
Nonetheless, if the Respondent had succeeded in obtaining the price of USD 40,000 (or the reduced price demanded of USD 37,500), the wait would have been well worthwhile, so the Panel does not discount the idea altogether. Alternatively, it may be that the webpage to which the Domain Name is connected is deriving revenue for the Respondent. However, having found that the Respondent registered the Domain Name with the Complainant’s trade mark in mind and with intent to exploit the trade mark value of the Domain Name as contended for by the Complainant, the Panel finds that at the very least the Domain Name constitutes an abusive threat hanging over the head of the Complainant and therefore a continuing abusive use.
One matter that has caused the Panel some concern is that in the Procedural Order the Panel asked the Complainant why it had left it so long before raising complaint about the Domain Name. The Complainant did not respond to that question, merely referring to some email exchanges in 2011/2012, which were in Spanish and not translated and the action it has taken in 2013 (see section 4 above). If the Panel had thought that the failure to answer the question demonstrated a weakness in the Complainant’s case, the Panel would have dismissed the Complaint. However, the Respondent’s track record in relation to Spanish trade marks, as evidenced in the response to the Procedural Order, combined with the failure of the Respondent to come forward with anything in answer has persuaded the Panel that the delay is not a material factor insofar as the merits of this case are concerned.
In light of the above, the Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <privata.com>, be transferred to the Complainant.
Date: December 8, 2013