WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alta Zapatería Balear, S.L. v. PEPE ALBALADEJO, JOSE ALBALADEJO
Case No. D2021-3510
1. The Parties
The Complainant is Alta Zapatería Balear, S.L., Spain, represented by Herrero & Asociados, S.L, Spain.
The Respondent is PEPE ALBALADEJO, JOSE ALBALADEJO, Spain.
2. The Domain Name and Registrar
The disputed domain name <carmina.shoes> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2021. On October 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 2021, 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 November 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2021. The Respondent requested an extension for Response and the Center automatically extended the due date for Response to December 4, 2021. The Response was filed with the Center on December 3, 2022. The Complainant requested the suspension of proceedings on December 15, 2021, and consequently extended the requested suspension several times. On June 7, 2022, the Complainant requested the reinstitution of proceedings.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on June 16, 2022. 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 founded in 1997 that operates in the field of handcrafted high quality shoes. The Complainant’s business dates back to 1966, as a family business, and, currently, it has presence and sales points in 15 countries around the world, with shops in important cites such as Madrid, Barcelona, Paris, Dubai, or New York.
The Complainant operates under the trademarks CARMINA and CARMINA SHOEMAKER, and holds registrations for these trademarks in various jurisdictions, including: Spanish Trademark Registration No. 3523786 CARMINA, word, registered on December 16, 2014, in Classes 18, 25, and 35; International Trademark Registration No. 1248600 CARMINA, word, registered on February 19, 2015, in Classes 18, 25, and 35; and European Trade Mark Registration No. 2886547 CARMINA SHOEMAKER, figurative, registered on March 15, 2004, in Class 25, (collectively the “CARMINA mark” and the “CARMINA SHOEMAKER mark”).
The Complainant also owns the domain name <carminashoemaker.com> (registered on June 10, 2004), which resolves to its corporate website, where the Complainant’s products are promoted and commercialized.
The Complainant is active in social media networks under the CARMINA SHOEMAKER mark.
The disputed domain name was registered on June 15, 2021. According to the evidence provided by the Complainant, it resolves to a parked page in Spanish language of the Registrar that includes a message indicating “Obten este dominio” (which can be translated in English as “buy this domain”), and displays various sections of promotional links to third parties’ websites under the sections “Cosmetics”, “Camelino”, “Corregir Ojeras” (“Correct Bags”), and “Borana”. At the time of drafting this decision, the disputed domain name resolves to a similar parked page displaying the same message (“Obten este dominio”) and various promotional links to third parties’ websites. The Panel, under its general powers articulated, inter alia, in paragraph 10 of the Rules, has corroborated the use of the disputed domain name.
On September 10, 2021, the Complainant sent a cease and desist letter to the Respondent through the Registrar. On September 27, 2021, the Complainant sent a reminder through the same channel.
5. Parties’ Contentions
Key contentions of the Complaint may be summarized as follows:
The Complainant’s trademarks CARMINA and CARMINA SHOEMAKER are well-known. These trademarks are internationally recognized, and followed by in social networks.
The disputed domain name incorporates the CARMINA mark, being identical to this trademark. The generic Top-Level Domain (“gTLD”) “.shoes” directly refers to the products commercialized under this trademark and the same term (“shoes”) is included in the CARMINA SHOEMAKER mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent owns no trademark including the terms of the disputed domain name, it has no professional relationship with the Complainant, and it has not been authorized to use the Complainant’s trademarks. The disputed domain name is not used in connection to a bona fide offering any goods or services, but to resolve to a parked page displaying pay-per-click (“PPC”) links.
The disputed domain name was registered and is being used in bad faith. As the Complainant’s trademarks are well-known, the registration of the disputed domain name was made in bad faith, with an intention to attract Internet traffic to the page linked to the disputed domain name for commercial gain. The Complainant sent a cease and desist letter to the Respondent, so it is aware of the infringement carried out with the disputed domain name, but it refused to collaborate. The Respondent may be a son of the Complainant’s founder or his grandson, who are perfectly aware of the Complainant’s business and its trademarks, but are outside the family business, having no professional relationship with the Complainant. Both persons are called Jose Albadalejo and operate a business located in the same location as the Complainant (Baleares), in the same sector (shoes), under a competing company (MEERMIN 1951, S.L.). The disputed domain name was registered and it has been used in bad faith, in an attempt to generate confusion with the Complainant’s reputed trademarks, to profit from their reputation.
The Complainant has cited previous decisions under the Policy that it considers supportive of its position, and requests the transfer of the disputed domain name.
Key contentions of the Response may be summarized as follows:
The Complainant freely chose to identify itself on the Internet and in social media as CARMINA SHOEMARKER, and not as CARMINA alone. Despite the availability of the term “carmina shoes” or even “Carmina”, the Complainant did not choose these terms and did not register the disputed domain name. The Complainant uses the terms “Carmina Shoemaker” in logos, hashtags, and all publications in social media. The Complainant also identifies itself using the CARMINA SHOEMAKER mark in websites or platforms where it sells its products, like the website of “El Corte Inglés”, the store directory of “EL Paseo de Gracia”, and in institutional videos of the Baleares government.
The Respondent has legitimate rights and interests with respect to the disputed domain name. The Respondent is direct family connected to the Complainant’s founder. Although the Respondent has never been part of the family business, his grandparents (Mr. Jose Albaladejo Pujadas and Mrs. Carmen Ramis) are the founders of the Complainant, and are still an important part of the share capital (49 per cent), being the real directors of the company. The Respondent registered the disputed domain name to protect his inheritance interests and the family’s assets. The Respondent’s father is the oldest son and a “forceds heir” (under the Spanish legal system) of the founders. There is, therefore, an expectation of inheritance rights of the Respondent over the Complainant.
The Respondent acted in good faith seeking to protect his family’s interests, and not to profit from the Complainant’s reputation or to sell the disputed domain name, and he has not prevented the Complainant’s from reflecting its marks in a corresponding domain name. The Complainant has not registered any trademark for the terms “Carmina shoes”, and develops its business through physical stores identified by the CARMINA SHOEMAKER mark, and ecommerce through the corresponding website “www.caminashoemaker.com”. The Complainant has never been interested in the terms of the disputed domain name, so the Respondent’s actions has not frustrated or affected the Complainant’s business or its sales. The non-use of the disputed domain name reveals that the Respondent has never attempted to generate confusion, to attract Internet users to the Respondent’s website or to take advantage of the Complainant’s reputation.
Prior to the notification of the Complaint, the Respondent never received any communication from the Complainant. The Complainant’s communications (sent through the Registrar) were never transmitted to the Respondent. As the Complainant knew the Respondent’s identity and contact details, it should have sent this communication directly to the Respondent, and he would have transferred the disputed domain name to the Complainant.
The Respondent consents to the remedy requested by the Complainant and agrees to transfer the disputed domain name to the Complainant (but not to any of its shareholders).
6.1. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights;
(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.
For the evaluation of this case, the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and, where appropriate, will decide consistent with the consensus views stated therein.
6.2. Consent to Transfer/Case Merits
The Panel notes that even without a formal settlement agreement between the parties, the consent to the transfer of the disputed domain name by the Respondent may provide a sufficient basis for an order for transfer without the need for consideration of the UDRP criteria. As is expressed in WIPO Overview 3.0, section 4.10, a panel may “order the requested remedy solely on the basis of such consent”.
The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy.
The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
In this case, as the Respondent has given his consent to the remedy requested by the Complainant, and he has agreed to the transfer the disputed domain name to the Complainant, the Panel does not consider necessary to enter into the assessment of the merits of this case.
The Panel, therefore, orders that transfer of the disputed domain name on the basis of the Complainant’s request for the transfer of the disputed domain name and the Respondent’s acceptance of this remedy which it is noted included a caveat that it be transferred to the Complainant and not to its shareholders. See section 4.10 of the WIPO Overview 3.0. In this regard, the Panel wishes to clarify that, albeit the circumstances of this case and the Respondent’s reaction to the Complaint may indicate that the Respondent acted driven by what he considered a legitimate interests in protecting his family’s assets (and his apparent expected inheritance), this goal alone cannot sufficiently justify the registration of the disputed domain name. Particularly, taking into consideration that the disputed domain name is identical to the Complainant’s trademark CARMINA, generating a likelihood of confusion and implied affiliation, effectively impersonating or suggesting sponsorship or endorsement by the current trademark owner. See section 2.5.1 of the WIPO Overview 3.0 and UDRP paragraph 4(b)(iv). The Panel moreover notes that the Respondent’s family name is not Carmina so no claim to be commonly known by the disputed domain name could be made by the Respondent. In other words, even without the Respondent’s consent (with its specific caveat) to remedy, the Complainant meets the criteria specified under the Policy and is entitled to the requested relief.
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, <carmina.shoes> be transferred to the Complainant.
Reyes Campello Estebaranz
Date: June 29, 2022