WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fundación EOI v. Kamil Gaede
Case No. D2021-3934
1. The Parties
The Complainant is Fundación EOI, Spain, represented by UBILIBET, Spain.
The Respondent is Kamil Gaede, Poland, self-represented.
2. The Domain Name and Registrar
The disputed domain name <fundesarte.org> is registered with TheNameCo LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on the same day, 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 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2021. The Response was filed with the Center on December 3, 2021.
The Center appointed David H. Bernstein as the sole panelist in this matter on December 7, 2021. 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 Fundación EOI, a governmental organization established in 1955 as part of an agreement between the Spanish Ministries of Education and Industry, Trade and Tourism. In 1981, the government created its subunit FUNDESARTE, the leading institution for the promotion and development of Spanish artisan craftsmanship. FUNDESARTE, which stands for Fundación para la Innovación de la Artesanía (Foundation for Innovation on Craftsmanship), helps Spanish artisans set up their businesses and publishes annual trend reports on different artisanal sectors. It has also organized exhibitions that have toured Spain and countries across the world. Within Spain, it organizes the annual National Crafts Awards, and internationally, it manages the “European Crafts Days” initiative.
According to the Complaint, the Complainant first registered the disputed domain name on February 2, 2001. On April 9, 2021, after the Complainant inadvertently allowed its registration of the disputed domain name to expire, the Respondent registered it.
After the Complainant objected to the Respondent’s registration and the content of the website to which the disputed domain name resolved, claiming that the Respondent was using the Complainant’s trademark, impersonating Fundación EOI and intentionally confusing site visitors, the Respondent offered to remove any misleading information linking his “new health business” with the old site, and to add a disclaimer that he was not associated with the Complainant. The Complainant’s counsel responded by stating that the Respondent was taking unfair advantage of its registered trademark and creating likelihood of confusion, and requested that the Respondent transfer the disputed domain name to the Complainant. The Respondent claimed that he was using the disputed domain name legally and not using the Complainant’s official logo, but stated that he was open to selling the disputed domain name. The Complainant’s counsel responded stating that the Respondent was cybersquatting and that the Complainant had decided to initiate a UDRP proceeding to retrieve the disputed domain name, but inquired as to the price of the domain name. The Respondent replied that he was neither using the disputed domain name in “bad faith” nor impersonating the Complainant, and had simply purchased it when it became available, but, he offered to sell it for 10,000 EUR. After a nudge from the Respondent, the Complainant offered to pay 3,500 EUR. The Respondent accepted the offer and switched the website into maintenance mode while Complainant’s counsel awaited confirmation from the Complainant as to the purchase.
However, the Complainant ultimately decided not to purchase the disputed domain name, instead opting for this UDRP proceeding. The Respondent replied that he could not transfer the disputed domain name at no cost, and that, if the Complainant did not complete the purchase within a week, he would begin selling weight loss and erectile dysfunction pills from the disputed domain name’s website while stating on the contact page that the site was not associated with the Complainant. After notice of the proceeding, the Respondent stated that it would be operating under a Fundesarte business name registered in Australia and raised the price of the disputed domain name to 12,000 EUR. The Complainant declined that offer and continued with this proceeding.
5. Parties’ Contentions
The Complainant claims rights in the FUNDESARTE trademark. In support of its assertion of trademark rights, the Complainant cites the history and origin of the mark dating back to 1981, and its registration of its figurative trademark with the Spanish Patent and Trademark Office (OEPM) with filing date of January 27, 2015.
The Complainant asserts that the disputed domain name is confusingly similar to its FUNDESARTE trademark, since the disputed domain name is identical to the trademark and the generic Top-Level Domain “.org” is commonly used by non-profit organizations.
The Complainant asserts that the Respondent has no rights to or legitimate interests in the disputed domain name because there is no evidence of the Respondent’s previous use of the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, nor is there evidence the Respondent has ever been commonly known as Fundesarte. The Complainant asserts that it is the only entity granted rights to exploit the trademark, and has not authorized, licensed or otherwise permitted the Respondent to use it. Finally, it states that Fundesarte is not a term in popular usage, but rather an acronym created ad hoc to designate a Spanish foundation aimed at artisans.
Finally, the Complainant asserts that the disputed domain name was registered and used in bad faith, primarily in order to sell it. In support of that contention, the Complainant claims that, once it contacted the Respondent, the Respondent changed the content of the website to an image of a fat body in order to intentionally damage the trademark. The Complainant also states that the Respondent’s threat to sell weight loss and erectile dysfunction pills at the disputed domain name’s website is not a bona fide offering of goods or services. As further indicia of the Respondent’s bad faith, and evidence that he must have known about the Complainant’s trademark before registering the disputed domain name, the Complainant points out that the trademark is an ad hoc, unique word, the Respondent wrote the contact address of the Complainant on the website, and the website was originally in Spanish. Additionally, the Complainant notes that the Respondent sought to sell the disputed domain name for well in excess of its out-of-pocket costs directly related to the domain name; moreover, the Respondent registered the disputed domain name following the Complainant’s inadvertent failure to renew its disputed domain name registration.
The Respondent contends that he legally purchased the disputed domain name in an auction, and that he has registered “Fundesarte” as a business name in Australia, where the Complainant has neither registered its trademark nor claimed its trademark is recognizable. He claims that, since he has no connection with Spain, he did not know about the Complainant’s business or trademark; additionally, he states that he never used the Complainant’s logo or targeted the Spanish or European market. He states that his audience, business category, and country are different from the Complainant’s, and that he has done all he could to prevent any confusion between his business and the Complainant’s mark.
Denying that he purchased the disputed domain name in order to sell it, he points out that he did not make the first contact with the Complainant; moreover, in his first message to the Complainant, he did not offer to sell the disputed domain name but rather offered to state on the website that he had no connection with their business. He states that he could not transfer the disputed domain name for free, as the Complainant requested, since he had paid for it. As to the price, whereas the Complainant notes that his 3,500 EUR offer well exceeded his out-of-pocket costs, the Respondent notes that it was well below the valuation he received from a domain appraisal tool; thus, he claims that his 3,500 EUR offer was a show of goodwill and would have been a loss for him. He claims that the Complainant, with this dispute, has unfairly delayed his work on his disputed domain name and his health business.
Additionally, the Respondent enumerates three steps he took to address the Complainant’s concerns: blocking traffic from Spain, temporarily putting the website in maintenance mode, and offering to state on the website that he had no connection with the Spanish foundation.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements in order to obtain cancellation or transfer of a disputed domain name:
(i) the domain name registered by the respondent 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established trademark rights in the FUNDESARTE mark by virtue of its registration of the mark. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1 (a nationally registered trademark prima facie satisfies the first requirement of having trademark rights). The Respondent does not contest the Complainant’s rights in the FUNDESARTE mark within Spain or Europe; however, it does contest whether the Complainant has trademark rights in the mark in Australia, where the Respondent has registered a business under that name. Whether the Complainant has trademark rights in Australia, however, is irrelevant. Id., section 1.1.2 (given the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid are not considered relevant to whether a Complainant has trademark rights).
The disputed domain name is confusingly similar to the Complainant’s trademark because it incorporates in its entirety the Complainant’s mark. Id, section 1.7 (where a domain name incorporates the entirety of a trademark, it will generally be considered confusingly similar).
Accordingly, the Panel finds that the disputed domain name is identical to the Complainant’s mark.
B. Rights or Legitimate Interests
A complainant has the burden to prove that a respondent lacks rights or legitimate interests in the domain name at issue. This requires the complainant to “prove a negative,” which can be challenging because it requires information that is usually within the exclusive knowledge or control of the respondent. Id,. section 2.1. For this reason, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.” Id. In such circumstances, if the respondent fails to come forward with evidence establishing rights or legitimate interests in the disputed domain name, the complainant is deemed to have satisfied this element. Id.
The Complainant here has sufficiently alleged a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has alleged there is no evidence of the Respondent having used the disputed domain name in connection with a bona fide offering of goods and services; nor is there evidence the Respondent had ever been known as FUNDESARTE, prior to its registration of the disputed domain name nearly twenty years after the Complainant created it.
The Respondent retorts that he has rights or legitimate interests in the mark arising from his registration of a business under that name in Australia. To demonstrate rights or legitimate interests in a domain name under UDRP paragraph 4(c), a respondent can show its use of, or demonstrate preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services, prior to any notice of the dispute. Id.
The Respondent has not provided such evidence of use or demonstrable preparation to use the disputed domain name in connection with a bona fide offering of goods and services. To the contrary, the Respondent’s registration of a business name in Australia and claim that he would use the disputed domain name to sell weight loss and erectile dysfunction products is a clear pretext. He registered the business name on December 2, 2021, well after receiving notice of this dispute. Moreover, beyond summarily stating that he was planning to use the name Fundesarte – coincidentally, during the brief window in twenty years that the domain became available – Respondent has offered no explanation for what FUNDESARTE – an ad hoc acronym standing for Fundación Española para la Innovación de la Artesanía (Spanish foundation for innovation in craftsmanship) – has to do with either weight loss or erectile dysfunction in Australia. Furthermore, the Respondent’s registration of a business name in Australia – far from the Respondent’s home in Poland – does not reflect a legitimate interest; to the contrary, it supports an inference that the Respondent searched for a jurisdiction where the Complainant has no trademark rights. In sum, the Respondent’s conduct, quite apart from demonstrating legitimate interests, is the opposite – it makes clear that the Respondent has acted illegitimately and is holding the Complainant’s name hostage. There is nothing bona fide about any of the Respondent’s activities. Id., section 2.12.2 (panels have generally declined to find legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent application of the UDRP).
Therefore, the Panel finds that the Complainant has established that the Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
For reasons similar to those discussed above, the Panel finds that the Respondent registered and has used the disputed domain name in bad faith. The Panel finds that Respondent registered and used the disputed domain name primarily for the purpose of selling it back to the Complainant for consideration in excess of his out-of-pocket costs related to acquiring it (which according to the evidence in the case file were just USD 410). That some domain name appraisal tool valued the domain name at a higher price is irrelevant; the test simply looks at whether the Respondent sought to profit from the sale; not whether the Respondent could have profited even more by selling the disputed domain name for an even higher price.
The Respondent’s assertion that he was not familiar with the Complainant is not credible given that he included the Complainant’s contact information on his website and that his website was originally in Spanish, which is the Complainant’s, but not the Respondent’s, language. Further undermining the Respondent’s credibility is the Respondent’s asserted intention to sell weight loss and erectile dysfunction products through the disputed domain name, which has bears no relationship at all to those products.
In any event, as a person who is in the business of buying and selling domain names, the Respondent has a heightened obligation to comply with Paragraph 2 of the Policy, which requires the Respondent to “represent and warrant to us that . . . (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.” Further, the Policy makes clear that “It is [the Respondent’s] responsibility to determine whether your domain name registration infringes or violates someone else's rights.” The Respondent does not appear to have done anything to comply with its obligations under the Policy. Even if the Respondent was not actually aware of the Complainant and its trademark rights, the Respondent is charged with knowledge if it was willfully blind to the Complainant’s rights. See generally WIPO Overview, Sections 3.2.2 and 3.2.3.
Finally, the Respondent notes that he has offered to post a disclaimer making clear that the website is not associated with Complainant, but such a disclaimer does nothing to cure the Respondent’s bad faith registration and use of the disputed domain name. Id., section 3.7 (“[W]here the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused.”).
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, <fundesarte.org>, be transferred to the Complainant.
David H. Bernstein
Date: December 21, 2021