WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cámara Oficial de Comercio, Industria, Servicios y Navegación de Gijón v. Katsuhisa Igarashi
Case No. D2019-2120
1. The Parties
The Complainant is Cámara Oficial de Comercio, Industria, Servicios y Navegación De Gijón, Spain, represented by Herrero & Asociados, Spain.
The Respondent is Katsuhisa Igarashi, Japan.
2. The Domain Name and Registrar
The domain name <camaragijon.com> (the “disputed domain name”) is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2019. On August 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 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. On September 10, 2019, the Center sent an email regarding complaint deficiency. On September 10, 2019, the Center received an amended Complaint from the Complainant.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2019.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on October 14, 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 is the Cámara Oficial de Comercio, Industria, Servicios y Navegación de Gijón (Chamber of Commerce of Gijón), a Spanish public law corporation and a territorial chamber of the official Spanish Chamber of Commerce.
The Complainant owns the domain name <camaragijon.es>, registered on May 25, 2007.
The Complainant claims that it owned the disputed domain name from July 31, 2000 to July 31, 2011, and that due to administrative failures, it lost it in favor of the Respondent, who registered it in September 2011.
5. Parties’ Contentions
The Complainant argued the following:
That it is a territorial chamber of the official Spanish Chamber of Commerce which is duly incorporated under the laws of Spain, and has full legal powers to carry out those acts required for the fulfilment of its purposes, such as the representation, promotion and defense of the general interests of commerce, industry, services and navigation, as well as the provision of services to companies doing business in the aforementioned areas.
That in Spain, the territorial chambers of commerce are commonly referred to as “Cámara” (Chamber), plus the name of the corresponding city (i.e. Cámara Madrid, Cámara Valencia, etc.) and that the Complainant uses this name (Cámara Gijón) with the purpose of identifying itself in the marketplace.
That the Spanish Chamber of Commerce and its territorial chambers are well-known amongst the Spanish public, and has an established goodwill in the economic sector, and that the terms Cámara Gijón have become a distinctive source identifier which consumers associate with the chamber and its services.
That, in accordance with the Spanish Law 4/2014, the Complainant is the only entity that is legally allowed to use the name Cámara Gijón.
That the Policy does not require complainants to own registered marks, and that the Complainant has standing in this proceeding, and holds rights to the trademark CÁMARA GIJÓN, as a result of its continued use over the years.
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
That the disputed domain name is identical to the mark CÁMARA GIJÓN over which the Complainant has official rights, as it includes the mark in its entirety.
That there is a likelihood of confusion between the disputed domain name and the mark CÁMARA GIJÓN, as the addition of the generic Top-Level Domain “gTLD” “.com” does not alter the value of the mark reproduced in the disputed domain name.
(ii) The Respondent has no rights or legitimate interests in the disputed domain name.
That, in accordance with Spanish law, the use of the name Cámara Gijón is reserved to the Complainant.
That the Respondent has no rights to, or legitimate interests in the disputed domain name, as the Complainant has not authorized the Respondent or any third party to register the domain name, or use the Complainant’s rights for that purpose.
That the Respondent does not have any official rights regarding the public entity Cámara Gijón, nor does he have any relationship or association with the Chamber of Commerce of Gijón, the City of Gijón, or Spain.
That, in accordance with the Internet search conducted in the “TM View” database, the Respondent does not have any trademark rights over the name Cámara Gijón.
That the Respondent does not carry out any legitimate activity under the name Cámara Gijón, and that the web site to which the disputed domain name resolves does not feature any content related to the Chamber of Commerce of Gijón or the City of Gijón, as it displays static and mundane information written in the Japanese language.
(iii) Registration and use in bad faith.
That the Respondent has registered at least two hundred domain names, such as <theclarksisters.com>, <scarlettalbum.com>, <russianamericanchamber.org>, <ussportwomen.com>, <thinkmango.com>, or <jamaica-firebrigade.com>.
That the Respondent is engaged in a pattern of conduct of registering different domain names over which he does not have any rights or legitimate interests, and that he has been named as a respondent in other proceedings under the Policy (and cites WIPRO Limited v. Igarashi, Katsuhisa, WIPO Case No. D2013-0073, where the Panel found that the Respondent’s behavior constitutes bad faith).
That the name of the Complainant has become a distinctive identifier in the economic sector to which it belongs, and that the registration of the disputed domain name by the Respondent has taken place with knowledge of this fact and in bad faith, in order to prevent the Complainant from reflecting the mark CAMARA GIJÓN in a corresponding domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met:
(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 used in bad faith.
In view of the Respondent’s failure to submit a response, the Panel shall decide this proceeding on the basis of the Complainant’s undisputed factual allegations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules (see Boris Johnson v. Belize Domain WhoIs Service Lt, WIPO Case No. D2010-1954).
A. Identical or Confusingly Similar
The Complainant is a territorial chamber of the official Spanish Chamber of Commerce operating under the name Cámara Gijón. The Complainant submitted evidence, such as press releases, annual accounts and excerpts from its official Web site for the years 2014-2019, in order to show that it has constantly used the name Cámara Gijón in relation to the services rendered by it, and that, in consequence, it has established unregistered rights over it.
The Complainant also claims that Spanish Law awards territorial Chambers of Commerce the exclusive right to use the name of the Chamber belonging to a city in Spain.
The first element of the Policy allows for complainants to prove ownership of rights in relation to both registered and unregistered marks (see Generate4 Schools, LLC v. Privacyguardian.org / MiCamp Merchant Services, WIPO Case No. D2014-1009; The Highland Street Connection dba Highland Street Foundation v. Chris McGrath, WIPO Case No. D2006-0516).
According to section 1.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), unregistered geographical terms, used in their ordinary geographical sense, would not as such provide standing to file a complaint under the Policy.
A majority of Panels have decided that a complainant cannot typically rely on an unregistered geographical term alone to prove the first element of the Policy (see Port of Helsinki v. Paragon International Projects Ltd., WIPO Case No. D2001-0002 and City of Hamina v. Paragon International Projects Ltd., WIPO Case No. D2001-0001).
Nevertheless, Panels have exceptionally ruled that geographical terms may support standing in a proceeding substantiated under the Policy, when a complainant is able to show that the term functions as a distinctive sign, or enjoys consumer recognition in relation to the complainant’s goods or services and not for its geographical genre (see Thompson Island Outward Bound Education Center v. Larrie Noble/ Dirty Mackn Entertainment Corp, WIPO Case No. D2013-1144; BAA plc, Aberdeen Airport Limited v. Mr. H. Hashimi, WIPO Case No. D2004-0717; Instra Corporation Pty Ltd v. Domain Management SPM, WIPO Case No. D2009-1097, among others).
In Thompson Island Outward Bound Education Center v. Larrie Noble/ Dirty Mackn Entertainment Corp, supra, the Panel decided that the complainant produced sufficient evidence to show common law rights in its corporate name Thompson Island and therefore, that it had met its burden of proof under the Policy. In Instra Corporation Pty Ltd v. Domain Management SPM, supra, the Panel concluded that the evidence submitted by the complainant to prove use of the term “Asia Registry” as a source identifier, was sufficient to meet the requirement for a “mark” within the meaning of the paragraph 4(a)(i) of the Policy.
Therefore, when considering a case where a complainant claims rights over an unregistered geographical term, the main question is whether the facts demonstrate that such term meets the functional requirements of a trademark.
In the present case, the Panel is of the opinion that the Complainant has submitted substantial and uncontested evidence which shows that the terms “Cámara Gijón” have been used by the Complainant in a manner that identifies it as the source of the services that it provides to its community, and that distinguishes said services from those rendered by other entities. The evidence contained in the case docket proves that the businesses, merchants, and industries, as well as the media of Gijón (and Spain in general), recognize the Complainant and identify it under the name Cámara Gijón.
Furthermore, the Complainant claims rights over a name that consists not only of a geographical term, but which is combined with the additional word “Cámara” (Spanish for “chamber”), which draws attention to the scope of the Complainant’s commercial activity, and grants to the combination with this geographical term a distinctive character.
In addition, the fact that the Respondent registered a disputed domain name that is identical to the name Cámara Gijón, after the Complainant had used it, suggests that the Respondent was aware that the name had been used as a trademark and that it had some traffic and commercial value.
Therefore, the Panel concludes that the Complainant owns unregistered trademark rights over the name Cámara Gijón and that the disputed domain name is identical to the Complainant’s mark CÁMARA GIJÓN, as it incorporates said mark in its entirety.
The addition of the gTLD “.com” to the disputed domain name does not avoid the confusing similarity; therefore, it is without significance in the present case (see Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499; Money Tree Software, Ltd. v. Javier Martinez, Money Tree Software, LLC, WIPO Case No. D2014-1078).
For the foregoing reasons, the first element of the Policy has been met.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent 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 (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark 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 or to tarnish the trademark or service mark at issue.
The web site to which the disputed domain name resolves displays texts in Japanese. Pursuant to section 4.8 of the WIPO Overview 3.0, which states that “it is accepted that a group of experts may carry out factual investigations limited to publicly available information if it considers that such information is useful for evaluating the case and making a decision”, this Panel, with the aid of an automatic translation tool has translated some of the contents of such web page into English. The translated content shows financial and economic information about the European Union and countries such as Japan, China and the United States of America, and links to third party web sites that provide information on foreign exchange trading (Forex).
Said web site is presented in a blog-like format with links to different publications, such as “Great East Japan Earthquake and yen exchange rate”, “European financial crisis and tightening”, “Southern European countries following credit downgrades”, “China's inflation concerns”, etc.
Furthermore, under the section “Recommended sites” of said web site, there are links to third party web sites such as: “www.cms-forex.com”, “www.qqhrcqjy.com” and “www.fx-invast-fun.net” which offer users the possibility of trading in the foreign exchange market (Forex) and provide information relating thereto.
The Complainant has submitted evidence showing that, since 1995, the Respondent has registered over 200 domain names, many of which resolve to Web sites that display economic and financial publications about Japan, the United States of America and other countries, as well as information on Forex, similar to that contained in the web site to which the disputed domain name resolves (for example, <russianamericanchamber.org>, <sqftgallery.com>, <risecreate.com>, <podcampireland.com>, <hcwchickenandwaffles.com>).
The Complainant also submitted evidence of another proceeding decided under the Policy where the Respondent registered a domain name that included a well-known mark of an Indian third party, and that was linked to information on foreign exchange trading in Japanese (WIPRO Limited v. Igarashi, Katsuhisa, supra).
Whereas holding a web site that displays a blog which content is related to foreign exchange trading does not constitute an illegitimate activity per se, considering that the content is clearly unrelated to “Cámara de Gijón” without any reasonable explanation for the reasons that lead the Respondent to register the disputed domain name. The Panel finds that there is no evidence showing rights or legitimate interests of the Respondent in the disputed domain name. In additionally, the Panel notes that the Respondent has engaged in a pattern of conduct in which he has registered domain names incorporating names or trademarks of third parties, linking many of them to the same type of Forex contents in Japanese (absent any explanation as to why such contents have been associated to such diverse domain names). The Panel concludes that the Respondent’s use of the disputed domain name cannot be catalogued as a bona fide offering of goods or services, nor a legitimate noncommercial or fair use (see Harpo, Inc. and Oprah’s Farm, LLC v. Robert McDaniel; WIPO Case No. D2013-0585).
Since there is no evidence contained in the case file showing that the Respondent has been commonly known as <camaragijon.com> nor any other evidence of rights or legitimate interests, the Respondent’s conduct cannot be considered to have taken place in good faith, and therefore cannot grant any rights to, or legitimate interests in the disputed domain name.
For these reasons, the second element of the Policy has been met.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its Web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s Web site or location or of a product or service on its Web site or location.
The Complainant claims that it owned the disputed domain name from July 31, 2000 until July 31, 2011, and that the Respondent registered it a few months later “as it became available for a series of administrative failures of its legitimate holder”.
This fact, together with the Respondent’s behavior discussed in section 6. B (supra) without any reasonable explanation for the reasons to register the disputed domain name, leads this Panel to infer that the Respondent knew about the Complainant, its services, and perhaps the traffic previously associated to the disputed domain name, when the Respondent obtained it. This cannot constitute good faith under the Policy (see, mutatis, mutandis, Klarna AB v. pan jing, WIPO Case No. D2019-1795; Autodesk, Inc. v. Bayram Fatih Aksoy, WIPO Case No. D2016-2000).
The Respondent has registered other domain names that incorporate the term “Chamber”, together with a name of a city or country (for example, <madisonvillechamber.com> and <russianamericanchamber.org>).
This behavior, in addition to the fact that the Respondent has also been named a respondent in a similar case (involving a domain name confusingly similar to the name and trademark of an Indian entity, which domain name resolved to a Web site with content in Japanese, related to foreign exchange trading) (see WIPRO Limited v. Igarashi, Katsuhisa, supra), makes it reasonable for the Panel to infer that the Respondent has engaged in a pattern of registering domain names that incorporate the marks of third parties in order to prevent the owner of the mark from reflecting it in a corresponding domain name (see WIPRO Limited v. Igarashi, Katsuhisa, supra; Verizon Trademark Services LLC v. Osman Khan, NutriGold Inc, WIPO Case No. D2015-1651).
The pattern of associating a number of domain names that incorporate trademarks of third parties, or names of entities, chambers or associations from different parts of the world, to the web sites and blogs of the Respondent described previously, suggests that in this case the Respondent has intentionally attempted to attract, for commercial gain, Internet users to said web sites and blogs, by creating a likelihood of confusion with the Complainant’s name and mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web sites or blogs, which constitutes bad faith under Paragraph 4(b)(iv) of the Policy
The third element of the Policy has been met.
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 <camaragijon.com> be transferred to the Complainant.
Date: November 12, 2019