WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Play Club by Cipriani, S.L. / Giuseppe Cipriani v. Identity Protection Service / Amir Zeb / Eyhab Jumean
Case No. D2013-1883
1. The Parties
The Complainants are Play Club by Cipriani, S.L. and Giuseppe Cipriani of Ibiza, Spain, represented by Ashurst, LLP, Spain.
The Respondents are Identity Protection Service of Surrey, United Kingdom of Great Britain and Northern Ireland (the “UK”)/ Amir Zeb of London, UK / and Eyhab Jumean of Ibiza, Spain, represented by Garrigues, Abogados y Asesores Tributarios, Spain.
2. The Domain Names and Registrars
The disputed domain names <bomba-ibiza.biz>, <bombaibiza.biz>, <bomba-ibiza.com>, <bombaibiza.com>, <bomba-ibiza.info>, <bomba-ibiza.net>, <bombaibiza.net>, <bomba-ibiza.org> and <bombaibiza.org> (the “Disputed Domain Names”) are registered with Webfusion Ltd trading as 123-reg (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2013. On November 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On November 6, 2013, the Registrar transmitted by email to the Center its verification response confirming that Amir Zeb, is listed as the Registrant of all the Disputed Domain Names and providing the contact details, which differed from contact information in the Complaint. The Center sent an email communication to the Complainants on November 26, 2013 providing the Registrant and contact information disclosed by the Registrar and inviting the Complainants to submit an amendment to the Complaint. On the same date, the Center sent an email communication informing the Complainants that the Complaint was administratively deficient and inviting the Complainants to cure the deficiencies therein. The Complainants filed an amendment to the Complaint on November 28, 2013.
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” 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 Respondents of the Complaint, and the proceedings commenced on December 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2013. The Response was filed with the Center on December 20, 2013.
The Center appointed John Swinson as the sole panelist in this matter on January 7, 2014. 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 first Complainant is Play Club by Cipriani S.L., a limited liability company in the hospitality industry, which started its commercial activities on December 21, 2012. The second Complainant is Mr. Giuseppe Cipriani, a well-known businessman in the hospitality sector and the main shareholder of the Cipriani Group (to which the first Complainant belongs).
The Complainants claim unregistered rights in the trademarks LA BOMBA IBIZA and BOMBA IBIZAdating from January 2013 when the second Complainant used the phrase “La Bomba Ibiza” in a tweet. The Complainants do not hold any trademark registrations for (or incorporating) BOMBA IBIZA.
The first Respondent is Identity Protection Service of the UK. The first Respondent appears to be a “proxy registration” service that offers a form of domain privacy service.
The second Respondent is Amir Zeb of the UK. The second Respondent is the registrant of the Disputed Domain Names.
The third Respondent is Eyhab Jumean of Spain. The Complainants have submitted that the third Respondent is in a commercial relationship with the second Respondent. Further, the Complainants have submitted that the third Respondent is the true registrant of all of the Disputed Domain Names. The third Respondent owns a company, Vantage Investments Limited, which is the owner of the following registered trademarks:
- Community Trade Mark No. 11571783 for BOMBA IBIZA (word mark), filed on February 13, 2013 and registered on June 4, 2013; and
-Community Trade Mark No. 11666419 for BOMBA IBIZA (figurative mark), filed on March 18, 2013 and registered in July 1, 2013.
The Disputed Domain Names were registered with the Registrar on February 12, 2013.
There is a criminal suit on foot involving the parties to this Complaint in Spain. The parties are in agreement that these proceedings are not of relevance to the present Complaint. As such, the Panel has not set out the factual background that the parties provided in relation to the criminal suit.
5. Parties’ Contentions
The Complainants make the following submissions:
- Multiple Complainants
The second Complainant conceived and developed the project to exploit a nightclub called “Bomba Ibiza” in Spain. The first Complainant is the legal entity that is using the unregistered BOMBA IBIZA trademark.
- Identical or Confusingly Similar>
The Disputed Domain Names are identical to the Complainants’ unregistered BOMBA IBIZA trademark.
The Complainants have used theunregistered trademarks LA BOMBA IBIZA and BOMBA IBIZA as both word andfigurative marks, since at least January 2013 to identify the nightclub that was going toopen in Ibiza in the summer of 2013. The Complainants provided evidence of the second Complainant’s Twitter and Facebook accounts, and of the Complainants’ marketing campaign.
- Rights or Legitimate Interests
The Respondents have no rights or legitimate interests in the Disputed Domain Names for the following reasons:
-the Disputed Domain Names are not being used in connection with a bona fide offering of goods or services. Seven out of nine of the Disputed Domain Names are not being used at all (they redirect to the Registrar’s website). The Disputed Domain Name <bombaibiza.com> (which <bomba-ibiza.com> redirects to) is being used to disclose information which is damaging to the Complainants;
-the Respondents were aware of the Complainants’ unregistered trademark rights, as the third Respondent was in negotiations with the Complainants to potentially invest in the nightclub; and
-the Respondents had no prior rights to the Disputed Domain Names, and cannot invoke the Community Trade Marks as these were registered after the Complainants had established unregistered rights to BOMBA IBIZA.
- Registered and Used in Bad Faith
The Disputed Domain Names were registered in bad faith, to be used as a bargaining chip to force the Complainants to give the third Respondent a stake in the nightclub in exchange for the Community Trade Marks and the Disputed Domain Names.
The Complainants believed that the third Respondent had registered the Disputed Domain Names on behalf of the Complainants and would transfer them to the Complainants at a later stage. The Complainants annexed emails, which they submit evidence this understanding.
The third Respondent sent a cease and desist correspondence to the Complainants, redirected the Disputed Domain Name <bombaibiza.com> to a rival nightclub website for a period of time and is using social media to damage the Complainants’ reputation. Additionally, the third Respondent used a privacy shield (i.e. the first Respondent) to conceal its identity. The Complainants have been forced to rename the nightclub.
The Respondents make the following submissions:
- Background information
The third Respondent was supposed to be a partner in the nightclub, not a mere investor (the Respondents provided evidence of a draft agreement titled “Formal commitment among Partners”). As a partner, the third Respondent registered the Community Trade Marks and the Disputed Domain Names. He intended to license these to the company operating the nightclub (he did not intend to transfer them to the Complainants). The parties never reached an agreement to jointly run the nightclub and the third Respondent became concerned about the Complainants’ legal problems.
- Identical or Confusingly Similar
The Complainants have no rights over the Disputed Domain Names because the Respondents legitimately own both the Disputed Domain Names and the corresponding registered Community Trade Marks.
The Complainants do not have unregistered trademark rights in BOMBA IBIZA. The second Complainant’s tweet, which featured the phrase “La Bomba Ibiza”, does not prove unregistered trademark rights. The Respondents provided evidence (in the form of emails) that following this tweet, the second Complainant was still anxious to find a name for the nightclub. The emails evidence that it was in fact the third Respondent that came up with the name “Bomba Ibiza”.
The Complainants have not shown that BOMBA IBIZA became a distinctive identifier associated with the Complainants’ services in the time between the tweet (January 12, 2013) and the registration of the Disputed Domain Names (February 12, 2013). Additionally, the marketing campaign that the Complainants refer to began after the Disputed Domain Names were registered.
- Rights or Legitimate Interests
The Respondents have a legitimate interest in the Disputed Domain Names.
The third Respondent was unable to exercise his option to purchase the building intended for the nightclub because the Complainants refused to vacate the premises (even though they were not paying rent). The third Respondent submits that his investment of EUR 18,500,000 in a purchase option for the building indicates that he was making serious and demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of services.
The second Complainant filed proceedings against the third Respondent in order to sabotage the nightclub project. These proceedings were dismissed.
The Respondents are also claiming to have registered trademark rights for BOMBA IBIZA which proves that Respondents have a legitimate interest in the Disputed Domain Names.
- Registered and Used in Bad Faith
The third Respondent registered the Disputed Domain Names in good faith. He acquired certain assets to use as part of his partnership with the Complainants. Once the parties decided not to proceed with the nightclub project, he was free to use the Disputed Domain Names as he saw fit.
The use of a privacy service does not in itself indicate bad faith. As a well-known person, the third Respondent uses the service to avoid unwanted junk and spam email.
The third Respondent is very worried about an association arising between the Community Trade Marks and the Disputed Domain Names and the Complainants’ illicit activities. The third Respondent’s current use of the Disputed Domain Names is intended to eliminate all likelihood of confusion and to put the Complainants’ debtors on notice of the third Respondent’s lack of involvement in the Complainants’ current business activities.
6. Discussion and Findings
- Preliminary procedural issues: Multiple Respondent
This Panel notes that the Complaint has been filed against three Respondents. This Panel is satisfied that the Disputed Domain Names are subject to common control and that the second and third Respondent are in a commercial relationship. Therefore, in this case it is fair and equitable to all parties to permit the consolidation.
To succeed, the Complainants must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
The Panel notes the following, which is relevant to this dispute See The Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470:
“This Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting. To invoke the Policy, a Complainant must show that the domain name at issue is identical or confusingly similar to a mark in which the Complainant has rights, that the Respondent lacks rights or a legitimate interest in the domain name, and that the Respondent registered and used the name in bad faith. Policy ¶ 4(a). To attempt to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy. Latent Technology Group, Inc. v. Bryan Fitchie, File No. FA0007000095285 (NAF Sept. 1, 2000) (dispute concerning employee’s registration of domain name in his own name and subsequent refusal to transfer it to employer raises issues of breach of contract and breach of fiduciary duty that are more appropriately decided in court, not before a UDRP panel).”
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainants must establish that the Disputed Domain Names are identical or confusingly similar to one of the Complainants’ trademarks.
On their own admission, the Complainants do not own any registered trademarks for BOMBA IBIZA. The Complainants allege that they have unregistered trademark rights in BOMBA IBIZA. In order to establish unregistered trademark rights, a complainant must show that an alleged trademark has become a distinctive identifier associated with the complainant or its goods or services (i.e. that the trademark has acquired a “secondary meaning”). In order to establish this, the Complainants have provided evidence of a tweet on January 12, 2013 which included the phrase “La Bomba Ibiza”. The Panel accepts the Respondents’ evidence that “Bomba Ibiza” had not been chosen as the nightclub’s name at the time of the tweet. The Panel considers it highly unlikely that “Bomba Ibiza” became a distinctive identifier associated with the Complainants’ services in the time between the tweet (January 12, 2013) and the registration of the Disputed Domain Names (February 12, 2013). As such, the tweet alone is insufficient evidence of unregistered trademark rights to satisfy the first element of the Policy.
The Complainants have also provided evidence of marketing activities conducted under the alleged BOMBA IBIZA unregistered trademark and press coverage featuring the alleged trademark. This evidence postdates the registration of the Disputed Domain Names, however, this does not prevent a finding of that a trademark is identical or confusing similar under the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, WIPO Overview 2.0, at paragraph 1.4). The Panel is of the view on the balance of probabilities that the marketing activities and press coverage conducted by the Complainants in this case were sufficient to establish unregistered trademark rights in BOMBA IBIZA for the purpose of the first element of the Policy.
The Disputed Domain Names are identical to the BOMBA IBIZA unregistered trademark. The hyphen in some of the Disputed Domain Names does not alter this finding. Additionally, in this case, the generic Top-Level Domain (gTLDs) at the end of the Disputed Domain Names (i.e. “.com”, “.biz”, “.net” and “.org”) are irrelevant in assessing confusing similarity under the Policy and may be ignored (see e.g. Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698).
In light of the above, the Complainants succeed on the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainants must establish that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names. The Complainants are required to make out a prima facie case showing that the Respondents lack rights or legitimate interests.
The Panel finds that the Complainants have failed to make out a prime facie case and that the Respondents have rights or legitimate interests in the Disputed Domain Names for the following reasons:
- the third Respondent has a connection to the BOMBA IBIZA trademark, as his company registered the Community Trade Marks;
- before any notice to the Respondents of the dispute, the third Respondent was making demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services. The evidence provided by both parties clearly shows that the third Respondent was in fact a partner in the nightclub project and not an investor (as was submitted by the Complainants). At the time the Disputed Domain Names were registered, the third Respondent had an option to purchase the proposed site of the nightclub for a substantial sum. He intended to use the Disputed Domain Names to promote the “Bomba Ibiza” nightclub and to eventually license both the Disputed Domain Names and the Community Trade Marks to the company operating the nightclub.
It also appears that the Complainants have renamed the nightclub from “Bomba Ibiza” to “BOOOM!”, possibly in view of the Respondents’ registered trademarks. There is no evidence that the Complainants opposed or have challenged the bona fide, validity or registerability of the Respondents’ registered trademarks.
In light of the above, the Complainant has failed to establish that the Respondents have no rights or legitimate interests in the Disputed Domain Names.
C. Registered and Used in Bad Faith
In the light of the Panel's finding regarding “Rights or Legitimate Interests” (subsection B. above), it is not necessary for the Panel to fully address this element.
A number of prior WIPO UDRP decisions have reached the conclusion that using a domain name as leverage for the purpose of extracting a favourable business arrangement from a complainant is evidence of bad faith See The Glorya Kaufman Dance Foundation and Glorya Kaufman v. Carolyn B. Baker & Associates and “Glorya Kaufman Dance Foundation,” formerly Domains By Proxy, Inc., WIPO Case No. D2010-0034. That does not appear to be the situation here. The Respondents are using Disputed Domain Names that are similar to their registered trademarks. In such circumstances, the Respondents may use such domain names to criticise the Complainants, without such conduct necessarily giving rise to bad faith use by the Respondents.
As stated above, it appears that this dispute over the Disputed Domain Names is part of a larger dispute between the parties and that such conflict should take place in another forum. The Policy is not designed to deal with larger disputes merely because a domain name happens to fit somewhere in the picture. See Axiom Global Inc. v. Michael Flanagan, WIPO Case No. D2013-1673.
For the foregoing reasons, the Complaint is denied.
Date: January 21, 2014