WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
YPF S.A. v. Christian Sarapa, Chrisos
Case No. D2019-1775
1. The Parties
The Complainant is YPF S.A., Argentina, represented by Berken IP, Argentina.
The Respondent is Christian Sarapa, Chrisos, Argentina.
2. The Domain Name and Registrar
The disputed domain name <serviclubs.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2019. On July 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 2019, 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.
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 August 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2019.
The Center appointed Gustavo Patricio Giay as the sole panelist in this matter on September 3, 2019. 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 YPF S.A. is the largest oil company in Argentina. It is the proprietor of several trademark registrations including the word SERVICLUB, such as: Argentine trademark SERVICLUB and Design registrations No. 2.804.519 of May 9, 2016, renewal of No. 1.805.681, in class 16; No. 2.804.520 of May 9, 2016, renewal of No. 1.805.682, in class 35; No. 2.804.521 of May 9, 2016, renewal of No. 1.805.683, in class 36, among many others.
The Complainant is also the owner of the domain name <serviclub.com.ar> registered on October 14, 1998 which redirects to the site <serviclubypf.com> with the official YPF Serviclub loyalty program that rewards its members with exclusive benefits and products in a variety of areas such as tourism, entertainment and shopping, among others.
The disputed domain name <serviclubs.com> was registered on October 26, 2016 and it relates to a site with the heading “YPF Serviclub Argentina” that provides information on the Complainant’s Serviclub loyalty program.
5. Parties’ Contentions
The Complainant is the most important oil company in Argentina and the fifth largest in the region. It owns 92 productive blocks distributed in basins throughout the entire territory of the country and 48 exploratory blocks, having become a leading company in Latin America in the production of non-conventional resources with the development of the Loma Campana field (Vaca Muerta formation, the second with shale gas resources and fourth with shale oil resources in the world).
It is leader in the fuel market and recognized worldwide, with more than 95 years of history, created on June 3, 1922. Its products and services are provided in more than 1,500 service stations distributed all across the country in the 23 provinces.
The Complainant claims that the disputed domain name <serviclubs.com> is confusingly similar to the Complainant’s trademarks mentioned in section 4 above (Factual Background); that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.
More specifically, the Complainant contends that the Respondent is not known by the disputed domain name, it is not affiliated with the Complainant in any way, nor has any authorization to use the Complainant’s trademarks or to register the disputed domain name. Further, the Respondent lacks any trademark rights which could justify the registration of the disputed domain name.
The Respondent knew or should have known about the Complainant and its trademark when it registered the disputed domain name.
The Complainant asserts that the Respondent’s intention by registering and using the disputed domain name is no other than to mislead consumers by deceiving them into assuming that the website to which it relates belongs to the Complainant. All of this is made through unfair practice and bad faith.
Finally, the Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain
name, the Complainant must prove each of the following, namely that:
(i) The disputed domain name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has proved that it has rights in the trademark SERVICLUB and Design.
The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar to the trademark. The test involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In this case, the addition of the letter “s” to the word “serviclub” in the disputed domain name <serviclubs.com> is clearly insufficient to avoid a finding of confusing similarity with the trademark SERVICLUB and design in which the Complainant has rights.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”, as it is viewed as a standard registration requirement, as noted in section 1.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds that the disputed domain name is confusingly similar to the trademark SERVICLUB and design in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Complainant sustains that the Respondent has not at any time been commonly known by the disputed domain name. Further, the Complainant is not aware of any trademark in which the Respondent may have rights that are identical with or similar to the disputed domain name.
As sustained by the Complainant, there is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests in the disputed domain name <serviclubs.com.com>. The name of the Respondent does not resemble the disputed domain name in any manner.
Likewise, and as further discussed under section 6.C, it does not seem that the Respondent is making any fair use of the disputed domain name, but rather has registered and uses it for the purpose of confusing Internet users and leading them to believe that the site to which the disputed domain name leads belongs to the Complainant.
The Respondent has failed to even allege and much less prove any of the circumstances mentioned above or any other to justify any rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage or otherwise abuses of complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, UDRP paragraph 4(b) provides a non-exclusive list of scenarios which constitute evidence of respondent’s bad faith.
As set forth in section 3.1 of WIPO Overview 3.0, given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of such scenarios, evidence demonstrating that respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy the complainant’s burden.
The site to which the disputed domain name <serviclubs.com> relates contains the heading “YPF Serviclub Argentina” that provides information on the Complainant’s Serviclub loyalty program and includes a section where users ask questions about the program. Although the disputed domain name includes a notice stating that the mission is to inform the users about the Complainant’s Serviclub loyalty program and it is not related to the Complainant’s official channel, where the overall circumstances of a case point to the Respondent’s bad faith –especially the case as here where the disputed domain name adds an “s” to the Complainant’s mark and is easily confused-, the mere existence of a disclaimer cannot cure such bad faith. See section 3.7 of WIPO Overview 3.0.
Further the site to which the disputed domain name resolves contains a warning to users that if their card is lost, stolen or damaged they should report immediately to the website “www.serviclub.com”, which is the Complainant’s website.
In view of the foregoing the Panel is satisfied that the Respondent must have been aware of the Complainant’s trademark mentioned in section 4 above (Factual Background) when it registered the disputed domain name <serviclubs.com> on October 26, 2016.
The fact that there is a clear absence of rights or legitimate interests coupled with no credible non-infringing explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0).
The Respondent when registering and using the disputed domain name <serviclubs.com> has intentionally attempted to disrupt the Complainant’s relationship with its customers and ultimately profit illegally from the goodwill attached to the Complainant’s mark by creating a likelihood of confusion to Internet users with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement. This amounts to bad faith under paragraph 4(b)(iv) 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 <serviclubs.com> be transferred to the Complainant.
Gustavo Patricio Giay
Date: September 17, 2019