WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vincle Internacional de Tecnologia y Sistemas, S.A. v. Warren Weitzman, Caramba LLC
Case No. D2018-1182
1. The Parties
The Complainant is Vincle Internacional de Tecnologia y Sistemas, S.A. of Barcelona, Spain, represented by Oficina Ponti, Spain.
The Respondent is Warren Weitzman, Caramba LLC of Bethesda, Maryland, United States of America (“United States”), represented by Greenberg & Lieberman, United States.
2. The Domain Name and Registrar
The disputed domain name <vincle.com> is registered with EPAG Domainservices GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2018. On May 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 29, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
Pursuant to the Complaint submitted in English and the registrar verification dated May 29, 2018 stating that German is the language of the registration agreement of the disputed domain name, on June 6, 2018, the Center sent a request in English and German that the Parties submit their comments on the language of the proceeding. On June 6, 2018, the Complainant submitted its request for English to be the language of the proceeding. On June 7, 2018, the Respondent submitted its request for English to be the language of the proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2018. The Respondent submitted unsolicited informal email communications on June 7, 2018 but did not submit a Response until the due date for Response. Accordingly, the Center notified the Parties on July 2, 2018 that it would proceed to the Panel appointment. On July 4, 2018, the Respondent filed a late Response with the Center.
The Center appointed Luca Barbero as the sole panelist in this matter on July 10, 2018. 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 a Spanish company active in the field of business consultancy and development of software to manage sales processes.
The Complainant is the owner of several trademark registrations, including the following:
- Spanish trademark registration Nos. M1726387(5) for VINCLE (word mark), filed on October 23, 1992, in class 42; M2525249(6) VINCLE.SALESWARE (word mark), filed on February 11, 2003, in class 42; and M2764518(5) VINCLE MOBILEWARE (figurative mark), filed on March 30, 2007, in class 42;
- International trademark registration No. H0601277 for VINCLE (word mark), filed on April 23, 1993 and in force in France, Italy and Portugal, in class 42;
- Brazilian trademark registration Nos. 830941630 for VINCLE (figurative mark), filed on February 16, 2011 in class 42; and 830941622 for VINCLE.SALESWARE (word mark), filed on February 16, 2011 in class 42;
- Peruvian trademark registration No. S00085007 for VINCLE (figurative mark), filed on May 5, 2014, in class 42;
- Colombian trademark registration No. 463325 for VINCLE (figurative mark), filed on June 13, 2012, in class 42;
- Mexican trademark registration No. 682239 for VINCLE (figurative mark), filed on June 27, 2000 in class 42;
- Chilean trademark registration No.1157769 for VINCLE (figurative mark), filed on May 14, 2014, in class 42;
The Complainant is also the owner of the domain names <vincle.es>, registered on November 26, 1996, and <vincleinternacional.com>, registered on June 11, 2014.
The disputed domain name <vincle.com> was registered on July 19, 2003 and has been pointed to a parking page with sponsored links where it is indicated that the disputed domain name is offered for sale.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its trademarks since it reproduces the denominative part “vincle” included in all of its marks.
The Complainant states that the Respondent has no right or legitimate interest in the disputed domain name since: i) there is no evidence of 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; ii) the Respondent is not commonly known by the disputed domain name; and iii) the Complainant has not authorized or permitted the Respondent to register or use the disputed domain name and there is no connection between the Respondent and the Complainant.
The Complainant submits that the Respondent registered the disputed domain name in bad faith because: i) it is hard to believe that the Respondent did not know of the existence of the Complainant’s earlier trademark registrations, the first of which (Spanish trademark registration No. 1726387) was applied for on October 23, 1992; ii) the “huge volume” of the Complainant’s activity under the trademarks VINCLE, VINCLE SALESWARE, and VINCLE MOBILE WARE makes likewise difficult that any company or natural person involved in the field of Internet-related services ignores the existence and use of the Complainant’s trademarks; iii) since the Respondent engages in domain name monetization and development, website design and Internet-related services, it likely made a comprehensive search in order to know whether there were domain names with the same denomination and, as a result, became aware of the existence of the Complainant’s marks and prior domain name <vincle.es>.
As to the use of the disputed domain name, the Complainant submits a screenshot of the Respondent’s website and states that the Respondent’s use demonstrates the lack of interest that the Respondent has always had in using the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent states that the word “vincle” is the Spanish WORD for “link” and quotes the definition of the English word “link” provided by the online Websters dictionary to conclude that the disputed domain name is constituted of a generic term.
With reference to the Complainant’s trademarks, the Respondent underlines that none of them is registered in the United States – where the Respondent is based – and states that most of them are either stylized marks protecting only the Complainant’s stylized logo or word marks protecting expressions not identical to the disputed domain name. It also points out that there are other entities that also use the mark VINCLE, such as a Spanish association which engages in educational, cultural and sports activities.
In view of the foregoing, the Respondent concludes that the Complainant has no exclusive rights in the trademark VINCLE.
The Respondent claims to have never heard of the Complainant and asserts that it did not register the disputed domain name primarily for the purpose of “selling, renting or other transferring” it to the Complainant, nor does the Respondent have “a pattern of engaging” in preventing “the owner of the trademark or service mark from reflecting the mark in a corresponding domain name” nor has the Respondent intended to create a likelihood of confusion or disrupt the Complainant’s business.
The Respondent states that the use of a common word domain name related to the descriptive meaning of the domain name, such as the word “vincle”, constitutes use in connection with a bona fide offering of goods or services. The Respondent also states that the fact that the disputed domain name is generic and usable for any variety of generic purposes further establishes the Respondent’s legitimate interest in the disputed domain name.
The Respondent invokes the application of the doctrine of laches, highlighting that the Respondent has owned the disputed domain name for 15 years and that, for that entire time, the Complainant has not reached out to the Respondent. The Respondent alleges that this “makes it clear that Complainant had no interest in the domain name until now when they are in the process of entering the US market” and that the Complainant had no bona fide basis for commencing this proceeding under the Policy and is culpable for reverse domain name hijacking.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
6.1. Preliminary procedural issues
6.1.1. Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
In the case at hand, the language of the Registration Agreement of the disputed domain name is German.
The Complaint was filed in English and, upon receipt of the Center’s email communication about the language of the proceeding, the Complainant submitted a request for English to be the language of the proceeding. The Center requested the Respondent to comment on this issue and the Respondent replied indicating that English was its preferred language. The Center notified the Complaint in English and the subsequent correspondence among the Center and the Parties was held in English.
In view of the circumstances of the case, the Panel finds that such language is the proper language of this proceeding and will thus proceed to render the Decision in English.
6.1.2 Respondent’s late Response
As highlighted in the Procedural History, the Response in this case was submitted 6 days after the due date for Response of June 28, 2018.
However, based on the records, the Respondent sent informal email communications to the Center, before the notification of the Complaint, indicating that its attorney was travelling and requesting an extension of 20 days to submit its Response. The Center replied to such communication indicating that it would have proceeded with the notification of the Complaint and that the Respondent would then have 20 calendar days to submit a Response.
On July 2, 2018, the Respondent’s attorney sent an email communication to the Center in which it was indicated that “for some reason”, the notification of the Complaint and of the commencement of proceeding was not received and requested to be provided an opportunity to file a Response. The Center replied to such communication, on July 3, 2018, indicating that: “As the specified due date for submission of a Response has now passed, and the Rules make no express provision for the filing of materials by either party at this stage of the proceedings except as may be specifically requested by the Panel, the Center will bring your late response (if any) to the Panel’s attention (when appointed), and it will be at the discretion of the Panel to consider it.” The Respondent’s attorney then filed the Response on July 4, 2018.
The Panel notes that, in the event of a late Response, the default course of action pursuant to paragraph 14(a) of the Rules, is to proceed to decision based only on the Complaint. However, the Panel may, in its discretion, consider the response if “exceptional circumstances” exist. As highlighted in AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485, late responses were taken into account by the panels in cases in which:
“- the response was filed before commencement of the decision-making process by the panel (see J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035 - <jpmorgan.org>);
- the lateness did not delay the decision (see Young Genius Software AB v. MWD, James Vargas, WIPO Case No. D2000-0591 - <younggenius.com>);
- respondent was able to rely on a medical emergency (see Khoral Research, Inc. v. Alexy V. Khrabrov, National Arbitration Forum Case No. FA 94269 - <khoros.com>);
- failure to take into account would have led to a “miscarriage of justice” (see Collegetown Relocation, L.L.C. v John Mamminga, National Arbitration, Forum Case No. FA 95003 - <collegetown.com>);
- response was late only by one day (see Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 and Arthur Guinness Son & Co. (Dublin) Limited v. Feeney O’Donnell and John O’Donnell, WIPO Case No. D2000-1710 - <guinnessdraught.com>)
- although there were no exceptional circumstances, a late response was taken into account on the basis of the panel’s “general powers” pursuant to paragraph 10(b) of the Rules (“equality and that each party is given a fair opportunity”) on the grounds that failure to take the response into account “would be a rather drastic step and should be undertaken with great care.” (AT&T Corp. v. Randy Thompson, WIPO Case No. D2001-0830 - <attmsn.com>).
In contrast, responses submitted after the expiry of the deadline were dismissed by the panel where the period set was exceeded by two weeks, since the respondent could have applied for an extension and was represented by counsel (Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 - <talk-city.com>)”.
In the case at hand, notwithstanding the absence of exceptional circumstances, the lateness of the filing of the Response has not prejudiced the Complainant nor has it greatly delayed the Decision.
In view of the above and exercising its powers according to paragraph 10(b) of the Rules, the Panel deems appropriate to admit the Respondent’s late Response and will thus consider it in rendering the Decision.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of several trademark registrations consisting of VINCLE alone or in combination with other generic terms or device elements.
As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
The Panel finds that the disputed domain name is identical to the Complainant’s word mark VINCLE, as it reproduces the mark in its entirety with the mere addition of the generic Top-Level Domain (“gTLD”) “.com”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).
The Panel also finds that the disputed domain name is confusingly similar to the additional trademarks on which the Complainant relies, since their dominant portion is constituted by the denominative element “vincle”.
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912; Wal-Mart Stores, Inc. v. WalMart Careers, Inc., WIPO Case No. D2012-0285.
Based on the records, there is no relation between the Parties and the Complainant has not authorized the Respondent to use its trademark VINCLE or to register and use the disputed domain name. There is also no evidence that the Respondent might be commonly known by the disputed domain name or might have acquired trademark rights in the term VINCLE.
As highlighted above, the Respondent claims that the Complainant does not have exclusive rights over the mark VINCLE since the term “vincle” would be generic, being the Spanish for “link”. It also states that the use of a common word domain name related to the descriptive meaning of the domain name, such as the word “vincle”, amounts to a bona fide offering of goods or services, and that that fact that the disputed domain name is usable for a variety of generic purposes further establishes the Respondent’s legitimate interest in the disputed domain name.
The Panel notes that the Respondent has not submitted any evidence to substantiate the asserted generic nature of the term “vincle”, other than by referring to an online dictionary providing a definition of the English term “link”. The Panel notes that in fact “vincle” seems to possibly be a Catalan version of “link” but it is not the Spanish version (being “vincular” in its common use). Moreover, despite the Respondent’s claim that also other third parties use VINCLE as a trademark, it has not provided any document or references to third-party trademark records to demonstrate such assertion.
In view of the above and since the disputed domain name is pointed to a parking page with sponsored (pay-per-click) links which, by definition, generate revenues for the registrant and/or the registrar, the Panel does not find that the disputed domain name is being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use without intention to trade off the Complainant’s trademark.
Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As indicated above, the Complainant has provided evidence of ownership of trademark registrations for VINCLE which were filed, in Spain and other countries several years before the registration of the disputed domain name, which occurred in 2003. The Complainant’s domain name <vincle.es> was registered on November 26, 1996 and, in the “About” section of the correspondent website “www.vincle.es”, it is stated that “VINCLE has 26 years of experience”.
The Complainant submitted the following documents to prove its use of the trademark VINCLE:
i) printouts of the Complainant’s website “www.vincleinternational.com” showing a description of the services that the Complainant offers under its trademarks;
ii) numerous invoices issued by the Complainant for services rendered to clients in the United Kingdom of Great Britain and Northern Ireland, Spain, Italy and Greece since February 2008 – the total amount of which exceeds EUR 530,000 , displaying the Complainant’s trademark VINCLE;
iii) printout of the report “Market Guide for Retail Execution and Monitoring Solutions for the Consumer Goods Industry”, dated June 7, 2016, taken from the website “www.gartner.com” – operated by a United States research and advisory firm providing information technology-related insight for IT and other business leaders located across the world –, mentioning the trademark VINCLE in a list of “representative vendors”;
iv) excerpts from the Complainant’s magazine Vincle News, namely of Nos. 3/2008, 4/2008, 8/2011, and 9/2016, reporting that the Complainant’s services have been provided to several companies like Grupo Planeta, Danone, Damm, Nutrexpa, and Bacardi;
v) printouts of an electronic publication “Alimarket” dated March 31, 2015, in which the associate General Manager of the Complainant stated that its company offered “global solutions for all the stages in the commercial process”;
vi) printouts of the electronic publication “Pmfarma.com” of November-December 2015 and of the 2016 edition of the same publication, making reference to a Complainant’s event about commercial management.
As highlighted above, the Respondent claimed that it was unaware of the existence of the Complainant and that it registered the disputed domain name in 2003 since it would correspond to a generic term, “vincle”, supposedly meaning “link” in Spanish and would have been subject of trademark registrations by third parties.
However, as mentioned above, the Respondent has failed to prove that VINCLE is actually a generic term in Spanish and that third parties might have actually used such term in trademarks.
The Panel acknowledges that, as underlined by the Respondent, the Complainant has not provided evidence of ownership of valid trademark registrations for VINCLE filed in the United States. Notwithstanding the foregoing, the Complainant has proved its ownership of trademark registrations for VINCLE (alone or with generic terms or device elements) filed in several countries and also under the Madrid system before the registration date of the disputed domain name. Moreover, the Complainant’s domain name <vincle.es> was registered several years before the registration of the disputed domain name.
In view of the above, and since, based on the records, the Respondent appears to operate in the trade of domain names, the Panel finds that the Respondent could have been and ought to be aware of the Complainant’s trademarks at the time of registration. In addition, especially considering that the Respondent is apparently a professional in domain name registrations, it should have performed some kind of search aimed at excluding possible conflicts with third party rights. See along these lines section 3.2.3 of the WIPO Overview 3.0: “Noting registrant obligations under UDRP paragraph 2, panels have however found that respondents who (deliberately) fail to search and/or screen registrations against available online databases would be responsible for any resulting abusive registrations under the concept of willful blindness; depending on the facts and circumstances of a case, this concept has been applied irrespective of whether the registrant is a professional domainer.”
In light of the circumstances of the case, the Panel also finds that the Respondent’s use of the disputed domain name in connection with a parking page with sponsored links where the disputed domain name is offered for sale does not amount to a good faith use. Indeed, the Panel finds that the Respondent, more likely than not, intentionally attempted to attract Internet users to its website for commercial gain by causing a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its website according to paragraph 4(b)(iv) of the Policy.
With reference to the doctrine of laches invoked by the Respondent, the Panel finds that it is not applicable in this case, which is decided under the Policy. As indicated in section 4.17 of WIPO Overview 3.0, “Panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. Panels have noted that the UDRP remedy is injunctive rather than compensatory, and that a principal concern is to halt ongoing or avoid future abuse/damage, not to provide equitable relief. (…) Panels have therefore declined to specifically adopt concepts such as laches or its equivalent in UDRP cases”. Moreover, the Respondent has not shown how it was disadvantaged by its reliance on some representation of the Complainant.
In light of the Panel’s findings under this Section, the Respondent’s request for a finding of Reverse Domain Name Hijacking is denied.
Therefore, based on the records before it and on balance of probabilities, the Panel finds that the Complainant has proven that the disputed domain name was registered and is used in bad faith according to 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 <vincle.com> be transferred to the Complainant.
Date: July 25, 2018