WIPO Arbitration and Mediation Center
Fundación Trinidad Alfonso Mocholí, Fundación de la Comunitat Valenciana v. Jack Zhang
Case No. D2020-1543
1. The Parties
The Complainant is Fundación Trinidad Alfonso Mocholí, Fundación de la Comunitat Valenciana, Spain, represented by Berenguer & Pomares Abogados, Spain.
The Respondent is Jack Zhang, United States of America (“United States”), self-represented.
2. The Domain Name and Registrar
The disputed domain name <juanroig.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2020. On June 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2020, 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 June 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2020. The Response was filed with the Center on July 5, 2020.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 16, 2020. 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 charitable organisation founded in Spain in, it appears, 2012.
The name of the Complainant is derived from the name of its President’s, “José Roig Alfonso” (commonly known as Juan Roig), mother.
Mr. Juan Roig is also the President and CEO of Mercadona SA, the largest supermarket chain in Spain. From materials filed with the Complaint, it appears that Mr. Juan Roig is a well-known businessman and entrepreneur, particularly in Spain. He has been regularly identified in the financial press as one of the most influential people in Spain. In a Forbes list published in Spain in November 2013, he was identified as the second richest person in Spain. In June 2014, he was photographed with their Majesties, the King and Queen of Spain during a reception on the coronation of King Felipe VI.
One of the Complainant’s activities is work and programs to encourage and promote the participation of children in sport. This activity is carried on under the name “Mecenazgo Deportivo Juan Roig”. It is not clear from the Complaint when these activities commenced under this name. In 2019, however, Mr. Juan Roig donated EUR 27 million for this project.
Amongst other things, the Complainant is the owner of a registered trademark in Spain, Registration Number 4041194:
The application to register this trademark was filed on October 30, 2019 and registered on April 17, 2020. It is registered in respect of a range of goods and services in International Classes 16, 25, and 41.
The Respondent is involved in purchasing and selling what he describes as generic domain names. He registered the disputed domain name on October 27, 2014. It has not resolved to an active website or, apparently, in any other way. Instead, it appears to have been offered for sale for USD 2,500. The web pages where these offers are made do not include pay-per-click advertising.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of Spanish Registered Trademark No. 4041194 depicted above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) , section 1.7 .
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0 , section 1.11 .
In addition, as they cannot be represented in a domain name in this gTLD, it is usual to disregard design or figurative elements of a trademark unless the textual elements have been disclaimed or overtaken by the design elements. See WIPO Overview 3.0 , section 1.10 .
In the present case, the textual elements are not overtaken by the design elements. Moreover, the words “mecenazgo deportivo” are Spanish for “sports sponsorship”. It is permissible to discount them too. See WIPO Overview 3.0 , section 1.8 . Accordingly, the Panel finds that the disputed domain name is at least confusingly similar to the Complainant’s trademark as the words “Juan Roig” are clearly and distinctly visible.
The Respondent contends that the words “Juan Roig” are themselves descriptive and should also be disregarded. In the context of the Complainant’s trademark, however, the words are a distinguishing feature as they identify what, or whose, sports sponsorship is in question.
The Respondent also distinguishes the case of Amelia Almuedo Mojarro v.Manuel Almuedo Muñoz, WIPO Case No. D2008-1231, which the Complainant relies on, as in that case, although the trademark was registered after the registration of the domain name, the trademark application was filed before the domain name was registered. As noted above, however, it has long been established under the Policy that timing of the registration of the trademark is not relevant under this requirement of the Policy. It is better considered under the other elements. The decision of Timik Group AB and Timik AS v. Admin, WIPO Case No. D2020-0374, which the Respondent relies on, in fact supports the Panel’s finding in this case. In Timik Group AB and Timik AS v. Admin, supra, the complaint failed because registration in bad faith was not shown. The panel, however, found both the first and second requirements made out even though the domain name had been registered almost 10 years before the trademark applications were field.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] 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, even if [the Respondent] has acquired no 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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See WIPO Overview 3.0 , section 2.1 .
It is not in dispute between the Parties that the Respondent is not authorised by, nor associated in any way with, the Complainant. Nor is it disputed that the Respondent is not commonly known by a name from which the disputed domain name could be derived. Nor that the Respondent does not own any relevant trademark rights in the disputed domain name.
Legitimate noncommercial or fair use is also excluded as the Respondent is simply offering the disputed domain name for sale.
The Respondent first contends that purchasing and selling generic domain names is an accepted and legitimate business under the Policy. The Respondent contends further that a search of LinkedIn shows that there are more than 1,200 members registered in Spain whose name is, or includes, “Juan Roig”. He argues that as less than 10 per cent of the world’s population are members of LinkedIn, it follows that there are about 12,000 people in Spain called Juan Roig or whose names include those names.
The Respondent also points out that he has received two inquiries to purchase the disputed domain name since he registered it. The first was received in October 2014 shortly after the Respondent registered the disputed domain name. It offered to buy the disputed domain name for USD 300.
The second inquiry was received in October 2016. Whether any amount was actually offered is not revealed. Nor whether either inquiry resulted in any negotiations. In fact, the record does not indicate that the Respondent even replied to either; just the initial inquiry and the fact the Respondent is still seeking to sell the disputed domain name for USD 2,500.
The Panel does not think it safe to infer that there are likely to be 12,000 “Juan Roigs” in Spain on the basis of the Respondent’s analysis. The Panel does accept, however, that there are a number of people in Spain or Latin American countries who have both names in their name. Annex 3 to the Response is a print out of the first page of the LinkedIn search the Respondent relies on. Three of the members are listed as “Juan Roig”; none of these is the President of the Complainant. The remainder are individuals whose name takes the form “Juan X Roig” or “Juan X Y Roig”, where X and Y are other names.
The Respondent’s justification, therefore, is akin to the cases where a respondent claims rights in a domain name because of its descriptive or dictionary meaning.
It is well established under the Policy, however, that it is necessary to show the domain name is genuinely being used for its dictionary (or descriptive) meaning, or demonstrable preparations for such use are in train, to rebut a prima facie case of lack of rights or legitimate interests. See WIPO Overview 3.0 , section 2.10.1 .
The Respondent’s activities, consisting merely of registering the disputed domain name and offering it for sale, do not constitute use of the disputed domain name for its dictionary or descriptive connotations. The Respondent has not sought to make out a case of demonstrable preparation to use for such a purpose.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name which the Respondent failed to rebut. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
Paragraph 4(b) identifies situations which may demonstrate that registration and use of a disputed domain name was in bad faith under the Policy:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of [the disputed] domain name in bad faith:
(i) circumstances indicating that [the Respondent] has registered or [the Respondent has] acquired the [disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] 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 [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 a competitor; or
(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site or other on-line 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] web site or location.”
These situations are illustrations only and not an exhaustive listing of the circumstances in which the Respondent may be found to have registered and used the disputed domain name in bad faith.
The Complainant contends that registration and use in bad faith should be inferred from the facts that the President of the Complainant, commonly referred to as Mr. Juan Roig, is a very prominent and well-known businessman and philanthropist. It argues it is no coincidence the Respondent registered the disputed domain name soon after Mr. Juan Roig was listed as the second richest person in Spain and, the Panel notes, photographed in June 2014 being received by the newly crowned King and Queen of Spain.
Generally speaking, a respondent will not be found to have registered a domain in bad faith where the domain name was registered before the complainant acquired its trademark rights. See WIPO Overview 3.0 , section 3.8 . Here, the Respondent registered the disputed domain name some five years before the Complainant applied to register its trademark.
The general rule, however, can be displaced where the Respondent is shown to have knowledge or awareness that the Complainant has incipient or inchoate rights in the trademark, even though it has not acquired trademark rights yet. An example of this situation is where it becomes public knowledge that two companies are considering merging and a respondent registers a domain name in an attempt to gazump or in anticipation of the merged company. Another example is where the complainant has been using the trademark or name before registering it, where that use occurred or started before the disputed domain name was registered.
In the context of domainers, panels have generally assessed the issue of registration in bad faith objectively. In making that assessment, panels have given considerable weight to whether the respondent has registered the domain name in issue without regard to whether or not it would impinge on someone else’s trademark rights and without any apparent attempt to avoid doing so. In addition, panels have given weight to a finding that the domain name in question abuses the trademark rights of another person, such as the complainant in the proceeding and the likelihood that the value, or greatest value, of the domain name resides in that other person. See e.g. Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket.com, WIPO Case No. D2018-0540, where the panel explained:
“The Respondent is a domainer who undertakes bulk purchases and automated registrations, including in particular by ‘drop-catching’ previously-registered domain names. The Panel is of the view that the knowledge (and, for that matter, the intention) of such a domainer generally should be judged objectively. Thus, what may be observed here is that the Respondent registered the disputed domain without concern as to whether doing so abused the trademark rights of a third party, and without any apparent effort to avoid so doing. As it happens, the Respondent’s registration of the disputed domain name did abuse the trademark rights of a third party – namely, those of the immediately-prior registrant, the Complainant.
In this case, the Respondent ‘drop-caught’ a domain name that contained a descriptive term (‘super’) that the Respondent had pre-determined gave value to a domain name with that term. However, it seems clear that the disputed domain name has the greatest value to the Complainant, given that the Complainant has trademark rights in the string to which the disputed domain name is almost identical, and given that the Complainant was the immediately-prior previous registrant of the disputed domain name (before failing to renew the registration through error). Thus, it can be seen that the value of the disputed domain name derives primarily from the fact that it is the Complainant’s trademark, rather than from the fact that it contains arguably a descriptive term. In these circumstances, and absent any attempt by the Respondent to avoid registering a domain name that is another person’s trademark, the Respondent must accept that, judged objectively, it will be considered to have registered the disputed domain name for the primary purpose of selling it to the Complainant – which is deemed by the Policy to be evidence of registration and use in bad faith.
The Respondent must also accept that, judged objectively, it will be considered to have registered the disputed domain name to prevent the Complainant from reflecting its trademark in a corresponding domain name – which is also deemed by the Policy to be evidence of registration and use in bad faith, so long as the Respondent has engaged in a pattern of such conduct. The Complainant identified a number of previous actions under the Policy brought successfully against the Respondent. In the Panel’s view, those actions establish that the Respondent has engaged in the requisite pattern of conduct, ….”
A significant factor in the “drop catching” cases is that “drop catching” of its nature puts the “drop catcher” on notice that someone has already had an interest in the domain name. That element is not present here as it appears the disputed domain name was a new registration.
This case does not involve “drop catching”. However, the Respondent rejected an offer of USD 300 to buy the disputed domain name. So far as the record shows, without even responding to it. The amount of USD 300 is in broad terms between 10 and 15 times the standard price for registering a domain name in the “.com” gTLD. On any view, that would have been a very substantial return on the Respondent’s initial investment. It is clear, therefore, the Respondent hoped even greater returns, even in late 2014.
Acknowledging that its registered trademark was registered long after the Respondent registered the disputed domain name, the Complainant seeks to impute knowledge to the Respondent on the basis of the reputation and renown of its President, Mr. Juan Roig. This reliance on the reputation and renown of its President, Mr. Juan Roig is along the lines of the second type of exception to the general rule referred to above.
The Respondent, however, contends that he had never heard of the Complainant or (presumably) its trademark before the commencement of this proceeding. The Respondent points out that most of the published materials relied on by the Complainant are Spanish publications in Spanish and says he does not read Spanish.
The materials submitted by the Complainant do include two articles in English, in the Financial Times and the Wall Street Journal. While these are very well known publications, the Panel would not necessarily infer that the Respondent must be familiar with their content as, in broad terms, they are largely directed to the financial services industry and customarily read by people participating in that industry. The two articles were also published in 2012, almost two years before the disputed domain name was registered.
The Panel does not think knowledge or awareness of Mr. Juan Roig can fairly be imputed to the Respondent in the circumstances revealed by the record in this proceeding. As shown on LinkedIn, it does appear that “Juan Roig” is a reasonably common name among Spanish speaking people or people with an Hispanic background. It also appears that Mr. Juan Roig has a very substantial reputation both from his business and impressive philanthropical work. On the record in this case, however, that reputation appears to be largely with the public in Spain. If Mr. Juan Roig was well-known or had a significant public profile in the United States in November 2014, the record in this proceeding does not expose that.
The Complainant also claims that the Respondent has engaged in a pattern of abusive conduct, pointing out that the Respondent was found liable in Facebook Technologies, LLC v. Jack Zhang, WIPO Case No. D2019-2160 (“Facebook Technologies case”).
The Complainant also referred to another case, Mou Limited v IT Manager, Jack Zhang, WIPO Case No. D2019-2130, but acknowledges that may be a different individual. The Respondent admits he was the respondent in the Facebook Technologies case, but denies involvement in the second. The Panel therefore disregards the complaint brought by Mou Limited.
While the Respondent describes his business as the registration and sale of generic (sic) domain names, it is noteworthy that the Facebook Technologies case against the Respondent involved the domain name <oculusporn.com>. The Respondent did voluntarily surrender it upon the complaint being brought. Nonetheless, that domain name can in no way be described as a “generic” or even descriptive domain name.
For a pattern to arise, there must be a pattern of abusive conduct. As “Juan Roig” appears to be a reasonably common name amongst Spanish speaking peoples and the Respondent’s denial of awareness of the Complainant and its trademark cannot be disregarded in the circumstances outlined above, however, that is not the case here.
Accordingly, the Complaint must fail.
As it must fail, there is no purpose in considering whether the Respondent is using the disputed domain name in bad faith. The Panel does note, however, that there would appear to be very limited use to which the Respondent could legitimately put the disputed domain name.
D. Reverse Domain Name Hijacking
The Respondent seeks a finding of reverse domain name hijacking against the Complainant on the basis that its lawyers should have known it had no chance of winning.
The Panel will not make such a finding in this proceeding. A finding of reverse domain name hijacking does not follow just because the Complaint has been dismissed. From the Complainant’s point of view, the circumstances and timing of the registration of the disputed domain name could legitimately call for explanation. It may be that proceedings in another forum without the limitations of proceedings under the Policy, which do not involve discovery processes or cross-examination, could lead to a different outcome.
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Date: August 4, 2020