WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Elecnor, S.A. v. Privacy Protect, LLC (PrivacyProtect.org) / tuka, noreva
Case No. D2017-1906
1. The Parties
Complainant is Elecnor, S.A. of Madrid, Spain, represented by Clarke, Modet y Cia. S.L., Spain.
Respondent is Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Virginia, United States of America / tuka, noreva of Portharcourt, Rivers, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <elecnors.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2017. On September 29, 2017, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On September 30, 2017, the Registrar transmitted to the Center by e-mail its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. On October 2, 2017, the Center sent an e-mail communication to Complainant, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 4, 2017. Complainant filed a second amended Complaint on October 16, 2017.
The Center verified that the Complaint together with the amended Complaint and the second 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2017. An e-mail communication from a third party was received on October 23, 2017. An email communication from the legal representative of said third party was received on October 31, 2017. The Center informed the parties of the commencement of the panel appointment process on November 12, 2017.
The Center appointed Robert A. Badgley as the sole panelist in this matter on November 16, 2017. 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
According to the Complaint, Complainant is “one of the leading corporations in project development, construction and operation” in the infrastructure business (“engineering, construction and services projects”) and the concessions business (“which promotes, seeks financing for and manages energy transmission and generation assets”). Complainant allegedly has operated for more than 60 years in more than 50 countries, and “has become one of the most outstanding Spanish business groups and a benchmark in the infrastructure, renewable energy and technology sectors.”
Complainant holds numerous trademark registrations for the ELECNOR mark, including in Spain and the European Union, in numerous classes. For example, Spanish Trademark Registration No. 1.159.101 ELECNOR, registered on May 5, 1989.
The Domain Name was registered on August 6, 2017. It appears that, for a time, the Domain Name resolved to a website operated by a company Filters on Demand, LLC, which company has indicated to the Center that it has no knowledge of or connection with Respondent.
Complainant send Respondent a cease-and-desist letter on August 8, 2017. Shortly thereafter, Respondent changed the WhoIs information to reflect that he was using a privacy shield.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark ELECNOR through longstanding registration and use. The Domain Name is confusingly similar to Complainant’s mark, since it incorporates the mark ELECNOR in its entirety and adds the letter “s,” which addition does little or nothing to diminish confusing similarity to the mark.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not come forward to explain his bona fides, if any, with respect to the Domain Name. The mark ELECNOR does not appear to be a common word to which one might put an innocuous, non-infringing use. These circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Because the ELECNOR mark had been widely used and registered at the time of this Domain Name registration, and because ELECNOR is a fanciful mark rather than a common word, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name.
With respect to bad faith use of the Domain Name, the Panel notes that Respondent registered a Domain Name containing a distinctive and strong trademark – ELECNOR – which as a word has no common meaning, and appends to that mark the letter “s,” which suggests typo-squatting. As a further indication of bad faith on Respondent’s part, he hid behind a privacy shield upon receipt of Complainant’s cease-and−desist letter, and did not respond to that letter. Under these circumstances and on this record, the Panel can conceive of no good-faith basis for Respondent’s conduct vis-à-vis this Domain Name.
Complainant has established Policy paragraph 4(a)(iii).
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 <elecnors.com> be transferred to Complainant.
Robert A. Badgley
Dated: November 20, 2017