WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Punto Roma, S.L. v. Contact Privacy Inc. / Domain Admin, Private Whois
Case No. D2015-0254
1. The Parties
The Complainant is Punt Roma, S.L. of Barcelona, Spain, represented by Sugrañes, S.L., Spain.
The Respondent is Contact Privacy Inc. of Toronto, Ontario, Canada / Domain Admin, Private Whois of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <puntoroma.com> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 17, 2015. On February 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 18, 2015, 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. The Center sent an email communication to the Complainant on February 19, 2015 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 March 24, 2015.
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 February 25, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 18, 2015.
The Center appointed Dietrich Beier as the sole panelist in this matter on April 2, 2015. 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 in this administrative proceeding is Punt Roma, S.L., a leading Spanish company in the women's fashion market with headquarters in Mataró (Barcelona), a location with a long and extended textile tradition. Nowadays, Punt Roma, S.L. has 200 stores throughout Spain and more than 140 shops around the world.
This fashion brand includes a great variety of styles of fashionable, high quality clothing for women.
The Complainant and its brand have become well-known in, at least, the territory of Spain.
The Complainant is the proprietor of several trademarks for PUNT O ROMA, dating back to 1999 among them the Community trademark PUNT O ROMA (+device), CTM 2690949, applied for on May 7, 2002 and registered on October 30, 2003 in class 25.
The disputed domain name was registered on May 19, 2004.
The website under the disputed domain name shows pay-per-click links with information about clothing, some of them relating to competing textile companies.
In addition, the website displays the message "DOMAIN SALE, CLICK HERE TO BY NOW!" The referred page offers the disputed domain name for sale.
The Respondent did not react to several attempts made by the Complainant to contact it. The Respondent also did not reply to this Complaint.
5. Parties' Contentions
A. The Complainant
The Complainant, inter alia, argues that its registered rights are verbally, phonetically and visually identical to the disputed domain name and that accordingly the disputed domain name will cause a likelihood of confusion for consumers and Internet users including a likelihood of association.
The Respondent lacks rights or legitimate interests in the disputed domain name since there is no evidence that the Respondent has been commonly known by the name "Punto Roma". There is also no evidence or a legitimate explanation for the Respondent's acquisition of the disputed domain name. The Respondent has never been authorized by the Complainant to register or use the trademark Punto Roma or the disputed domain name.
Due to the character of the Complainant's trademarks as well-known, the Respondent must have been aware of the trademark. Furthermore, by offering the disputed domain name for sale and the appearance of pay-per-click links in the field of business of the Complainant including links to competitors, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. Accordingly, the disputed domain name has been registered and is being used in bad faith.
B. The Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) The disputed 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 with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established the fact that it has valid trademark rights for PUNT O ROMA in several classes.
The disputed domain name is confusingly similar to the PUNT O ROMA mark of the Complainant.
The Panel therefore considers the disputed domain name to be confusingly similar to the trademarks PUNT O ROMA in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain name, since the Respondent is not a licensee of the Complainant nor has the Complainant granted any permission or consent to the Respondent to use its trademarks. Furthermore, the Respondent has no rights or legitimate interests in the disputed domain name, since there is no indication that the Respondent is commonly known by the name "Punt O Roma" or that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services.
The Panel therefore finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Due to the nature of the PUNT O ROMA mark as well-known, the Respondent must have been aware of the Complainant and its trademarks when registering the disputed domain name. The Complainant has not authorized the Respondent to make use of its mark. This Panel does not see any conceivable legitimate use that could be made by the Respondent of this particular domain name without the Complainant's authorization.
The circumstances of this case, in particular the offer to sell the disputed domain name on the website under the disputed domain name as well as the advertising links to competitors in the field of the Complainant furthermore indicate that the Respondent registered and uses the disputed domain name primarily with the intention of attempting to attract, for commercial gain, Internet users to its potential website or other online locations, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of such website or location, or of a product or service on such website or location. The Panel therefore considers the disputed domain name to have been registered and used in bad faith in accordance with 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 disputed domain name, <puntoroma.com>, be transferred to the Complainant.
Date: April 15, 2015