WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Editorial Planeta, S.A. v. Domain Admin, Whois Privacy Corp.
Case No. D2016-1841
1. The Parties
The Complainant is Editorial Planeta, S.A. of Barcelona, Spain, represented by Herrero & Asociados, Spain.
The Respondent is Domain Admin, Whois Privacy Corp., of Nassau, New Providence, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <planetabooks.com> is registered with Internet Domain Service BS Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 12, 2016. On September 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2016, 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 parties on September 13, 2016, regarding the language of the proceeding, as the Complaint has been submitted in Spanish and the language of the registration agreement for the disputed domain name is English. The Complainant submitted a request for Spanish to be the language of the proceeding on September 14, 2016. The Respondent did not submit any communication regarding the language of the proceeding.
The Center sent an email communication to the Complainant on September 14, 2016 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 September 14, 2016.
The Center verified that the Complaint together with the amended Complaint (hereinafter referred both together as 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2016. The Center received an email communication from a third party on September 19, 2016. The Center requested to the third party to identify itself and to disclose its interest in the case and/or relationship with the Respondent if any. The third party did not answer to the Center's request. The Respondent did not submit any response. Accordingly, the Center notified the Parties the commencement of the Panel appointment process on October 13, 2016.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on October 27, 2016. 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 based in Spain and is part of the Grupo Planeta, a leading publishing and communications conglomerate in Spain and Latin America. It is the owner of several trademark registrations amongst which are the following:
- Spanish Trademark Registration No. 1041840 for PLANETA, registered on August 16, 1984 and successively renewed, in class 41;
- European Union Trademark Registration No. 000269043 for EDITORIAL PLANETA, registered on July 23, 2002 in classes 16 and 41, and
- International Trademark Registration No. 567609 for EDITORIAL PLANETA, registered on March 15, 1991 in class 16.
The disputed domain name <planetabooks.com> was registered on February 3, 2016. According to the evidence in the Complaint the disputed domain name resolved to a webpage displaying information on books, manuals, and other publications in Spanish. Currently no active webpage resolves from the disputed domain name.
5. Parties' Contentions
The Complainant asserts that it is part of the Spanish-based Grupo Planeta, the market leader in the publishing business in Spain and Latin America, ranking amongst the top ten publishing companies in the world and counting with more than 100 labels in the Spanish, Portuguese, French and Catalan languages.
Its PLANETA trademark has been recognized by the Chamber of Commerce of Barcelona and by the Spanish Trademarks Office as a well-known trademark in the edition, publishing and book retail businesses (Annexes 7a and 7c to the Complaint).
In the past few years it created an online platform called "Planeta de Libros" ("Planet of Books" in a free translation) depicting the catalogue of its publications in Spain. Said platform is available through different domain names but specially through the domain name <planetadelibros.com> which it registered on March 25, 2015.
In the Complainant's point of view the disputed domain name is confusingly similar to its PLANETA trademark merely adding the word "books" a descriptive term related to its business and products, thus creating an overall impression of association with the Complainant.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent is not the owner of a registered trademark for "Planeta Books" in Spanish speaking countries (Annex 8 to the Complaint);
(ii) the Respondent has not been commonly known by the disputed domain name;
(ii) the Respondent has not been authorized by the Complainant to use the PLANETA trademark as a domain name or in any other manner; and
(iii) the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services and is therefore not making a legitimate noncommercial or fair use of the disputed domain name.
As to the registration of the disputed domain name in bad faith the Complainant contends that it was done clearly in bad faith given that its PLANETA trademark is well-known and the use made by the Respondent of the disputed domain displaying information on books, manuals and publications in the Spanish language shows a clear attempt to take advantage of its fame and mislead Internet users.
Furthermore, also according to the Complainant, the use of a privacy protection service so as to conceal the Respondent's true identity and the absence of a reply to the cease and desist letter sent prior to initiating this proceeding corroborate the Respondent's bad faith.
The Respondent did not reply to the Complainant's contentions.
On September 19, 2016 the Center received an email from a third party merely stating "Hi, Please share which links need to be removed.". On October 27, 2016 the Center received a new email from the same third party insisting "which links need to be removed." In spite of the Center's requests to the third party to identify itself clarifying its relationship to the Respondent, no reply was received.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name.
Before turning to these questions, however, the Panel needs to address the issue of the language of the proceeding.
A. Language of the Proceeding
The Complainant made a request that the language of the proceeding be Spanish in spite of the fact that the registration agreement is in English given that the contents of the webpage made available at the disputed domain name were in Spanish showing that the Respondent is fluent in Spanish. The Center accepted the Complaint to be filed in Spanish with what the Panel agrees. Considering that the Respondent did not reply to any of the communications sent by the Center, both in English and in Spanish, this Panel reputes that translating the Complaint and its annexes into English would create an unnecessary and unjustified burden on the Complainant, but will in any event issue its decision in English.
B. Identical or Confusingly Similar
The Complainant has established rights in the PLANETA and EDITORIAL PLANETA trademarks, duly registered in various countries.
The Panel finds that the disputed domain name <planetabooks.com> merely reproduces the Complainant's well-known PLANETA mark with the addition of the generic term "books" which is related to the Complainant's activities, not adding any distinctiveness and thus being confusingly similar therewith.
The first element of the Policy has therefore been established.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a nonexclusive list of circumstances that indicate a respondent's rights to or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant to first make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that it has not authorized the Respondent to use the PLANETA trademark, that the Respondent has not been commonly known by the disputed domain name, and that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services and is therefore not making a legitimate noncommercial or fair use of the disputed domain name.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name or the lack of evidence showing that the Respondent has been commonly known by the disputed domain name corroborate with the Panel's finding of the absence of rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted Complainant's prima facie case.
Moreover, currently the disputed domain name does not resolve to an active website.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
The second element of the Policy has therefore been established.
D. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the complainant; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
The Panel notes that the Complainant's trademarks were registered prior to the registration of the disputed domain name. The Panel also notes that the Complainant has registered at least seventeen domain names comprising the terms "Planeta de Libros", including the domain name <planetadelibros.com> which is being used by the Complainant and was registered prior to the registration of the disputed domain name. The Panel notes that the disputed domain name is comprised of the Complainant's trademark PLANETA and the dictionary word "books" which is related to the Complainant's activities. The Panel considers that taking into account all the circumstances and being PLANETA a well-known trademark in the edition, publishing and book retail businesses, the Respondent registered the disputed domain name with the Complainant's trademark in mind and, on the balance of probabilities, to cause some kind of confusion in the Internet users with Complainant's trademark and domain names, or to take advantage of the PLANETA the trademark being a well-known trademark within the book business. The Panel finds that the Respondent registered the disputed domain name in bad faith.
In addition, the use of the disputed domain name to display information on books, manuals and other publications, in the Spanish language characterizes, in view of the Complainant's well-known trademark, bad faith in the use of the disputed domain name since the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website in view of the likelihood of confusion with the Complainant's mark and the disputed domain name and/or to disrupt the business of the Complainant.
Furthermore, the apparent use of a privacy shield or a privacy protection service, so as to conceal its true identity and the absence of a reply to the cease and desist letter sent by the Complainant before initiating this proceeding and the fact that after the filling of the Complaint the disputed domain name no longer resolves to an active website are further evidence of Respondent's bad faith.
The third element of the Policy has therefore been established.
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 <planetabooks.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: November 11, 2016