WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Encuesta Facil, S.L. v. XL Marketing Europe Ltd / Registrant , Net Admin
Case No. D2014-0390
1. The Parties
The Complainant is Encuesta Facil, S.L. of Madrid, Spain, represented by Javier Calzada Santos, Spain.
The Respondent is XL Marketing Europe Ltd of London, United Kingdom of Great Britain and Northern Ireland / Registrant , Net Admin of Boulder, Colorado, United States of America (“US”).
2. The Domain Name and Registrar
The disputed domain name <encuesta-facil.com> is registered with Moniker Online Services, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2014. On March 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 13, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 20, 2014.
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 March 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2014.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on April 22, 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 Complainant is Encuesta Facil, S.L., the entity owner of the domain name <encuestafacil.com> and the owner of the trademark ENCUESTAFACIL.COM (and design) registered in Spain on April 10, 2006 (reg. no. 2.677.210) in class 42. The Complainant provides an online tool for creating and administering surveys. The Complainant operates in Europe and Latin America. The service provided by the Complainant allows Internet users to quickly and easily create internal and external surveys for different purposes.
A visit to the disputed domain name allowed the Panel to determine that the website is used in Spain for a service consisting of an independent rewards program for consumers. The website was registered by Registrant , Net Admin with an email indicating the <intela.com> domain name. The Panel also visited the Intela domain name. Intela is a marketing company that was recently acquired by XL Marketing Europe Ltd., another marketing company (as indicated in one of the Annexes to the Complaint).)1
The disputed domain name was registered on July 13, 2012.
5. Parties’ Contentions
The Complainant states that it uses the domain name <encuestafacil.com>, registered since December 9, 2004 and that the ENCUESTAFACIL.COM trademark is registered since April 10, 2006.
The Complainant adds also that Encuesta Facil, S.L. is using the registered domain name and trademark for an online surveys site since the year 2004.
According to the Complainant, the disputed domain name is causing confusion to users.
With respect to the existence of rights or legitimate interests, the Complainant mentions in the Complaint the disputed domain name. There is no explanation of whether Respondent lacks rights or legitimate interests over the disputed domain name.
With respect to bad faith registration and use, the Complainant stated that “The domain is confusing the users and they report SPAM related campaings”.
The Complaint also reiterates the registration of the trademark and adds “that It is obvious that XL Marketing Europe Ltd. uses the domain www.encuesta-facil.com to take advantage of the reputation of ENCUESTA FACIL, S.L.”.
The Complainant requests that the language of proceedings be Spanish.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 19 and March 20, 2014.
The Complainant requests the transfer of the disputed domain name. It also demands that the Respondent never create or use any domain name or sign that may constitute a breach of the Complainant’s industrial property rights.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under Policy, paragraph 4(a), a complainant must make out its case that:
(i) the 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 the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Complainant requests that the language of the proceedings be Spanish and provides as supporting argument the fact that the website at the disputed domain name is using Spanish as default language.
The Rules, paragraph 11(a), provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. The Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding.
The language of the Registration Agreements is English according to what was reported by the Registrar. Prima facie, the Rules, paragraph 11(a), require that the language of the proceeding be English. It is not suggested that the parties have agreed otherwise nor that the Registration Agreements specify otherwise. The Complaint was filed in English so presumably the Complainant is able to understand English.
Therefore, the Panel decides that the language of the proceedings shall be English.
B. Identical or Confusingly Similar
The Complainant has shown that it owns a trademark registration in Spain for the trademark ENCUESTAFACIL.COM (& design).
The Panel finds that Respondent’s domain name <encuesta-facil.com> is confusingly similar to the Complainant’s mark ENCUESTAFACIL.COM (& design). The addition of a hyphen and the generic Top-Level Domain (“gTLD”) designation “.com” is not sufficient to avoid the conclusion that the domain name and mark are confusingly similar.
The Complainant has thus satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The following are examples of circumstances where a respondent may have rights or legitimate interests in a contested 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.” (Policy, paragraph 4(c)).
Once a prima facie case has been made, it is the Respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the Complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Respondent is in default. Therefore, the Respondent has not submitted any evidence showing that the Respondent has been commonly known as the disputed domain name. However, the Panel has carefully examined the record of the case and the evidence available in public records including the Respondent’s website.
Where the goods or services offered on a website specifically relate to the generic or descriptive meaning of the domain name, the registrant is making the very kind of bona fide offering that is sufficient to establish legitimate interests under the Policy. See, e.g., EAuto, L.L.C. v, EAuto Parts, WIPO Case No. D2000-0096 (finding domain name <eautoparts.com> to be legitimate for a website that sells auto parts).
Clearly, the Respondent’s use of the “encuesta facil” term in its descriptive or generic sense is not illegitimate. The term “encuesta” means “survey” and the word “facil” means “easy” in English. “Encuesta Facil” thus means in effect an “easy way to do a survey”. Therefore, the term “encuesta-facil”, as used in the disputed domain name, is an apt descriptive choice for the Respondent’s business consisting of an independent rewards program for consumers. The purpose of the survey seems to gather data from consumers, by asking them questions and obtaining personal data for certain brands in exchange of monetary prizes.
In addition the Complainant has not provided any evidence that Respondent registered the disputed domain name for the purpose of profiting from the goodwill of the Complainant’s business.
Because offering services by using the corresponding descriptive or generic term as here is a legitimate use of the term, the Panel concludes that the Complainant has failed to prove the second element of the Policy.
D. Registered and Used in Bad Faith
Since Complainant failed to establish the Respondent’s lack of rights or legitimate interests in the disputed domain name, the Panel need not deal with the bad faith element. See Bidmania Co. v. Dale Cumming / Euro PC, WIPO Case No. D2012-0632 (“Given the Panel’s findings in relation to the second element of paragraph 4(a) of the UDRP Policy, consideration of the third element is not necessary as the elements are conjunctive.”)
For the foregoing reasons, the Complaint is denied.
Pablo A. Palazzi
Date: May 6, 2014
1 See http://intela.com/press/2013/10/09/xl-marketing-corporation-xlm-corp-a-leading-big-data-driven-marketing-crm-company-is-acquiring-the-assets-of-london-based-intela-an-international-data-and-email-services-business/ and http://xlmeurope.com/