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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sergio Juan Canamasas Español v. Whois Privacy Services by Domainca, Spsoft Co., Ltd / Lee Wongi

Case No. D2021-4392

1. The Parties

The Complainant is Sergio Juan Canamasas Español, Spain, represented by Ferran Farré de Febrer, Spain.

The Respondent is Whois Privacy Services by Domainca, Spsoft Co., Ltd, Republic of Korea / Lee Wongi, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <faca.com> is registered with Gabia, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2021. On December 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 3, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 3, 2022, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 6, 2022.

The Center sent an email communication in English and Korean to the parties on February 3, 2022, regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Korean. The Complainant submitted a request for English to be the language of the proceeding in an amendment to the Complaint on February 6, 2022. The Respondent submitted a request for Korean to be the language of the proceeding on February 3, February 4, and February 7, 2022. The Center sent a request to the Complainant to submit a translated Complaint in Korean on February 11, 2022. The Complainant filed a translated Complaint on February 16, 2022.

The Center verified that the Complaint together with the amendment to 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 February 23, 2022. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2022. The Response was filed with the Center on March 7, 2022.

The Center appointed Ik-Hyun Seo, Albert Agustinoy Guilayn, and Ilhyung Lee as panelists in this matter on April 1, 2022. The Panel finds that it was properly constituted. Each member of 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.

Based on the deadline set forth in paragraph 15 of the Rules, a decision was to be issued by the Panel by April 15, 2022. Due to unforeseen circumstances, the Panel found it necessary to extend the due date for the decision to May 13, 2022, and the Parties were so notified.

4. Factual Background

The Complainant is the owner of a Spanish company by the name of Plásticos FACA, S.A. which has been in the business of manufacturing high-end plastic containers and packaging for cosmetic products for more than 50 years. The Complainant has a trademark registration for “faca” and design in Class 17 in Spain (Registration Number M2189874, registered on October 16, 1998). The Complainant has owned the domain names <facapackaging.com> and <facasa.com> since January 11, 2017, and March 17, 1999, respectively.

The Respondent appears to be an individual with an address in the Republic of Korea.

The disputed domain name was registered on September 18, 2001, and resolves to a domain parking page with pay-per-click links.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name consists solely of “faca” and is therefore identical to the “faca” and design trademark in which it has rights.

The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name, and confirms that it has not authorized or licensed rights to the Respondent in any respect. Further, the Complainant asserts that use of the disputed domain name for a domain parking page cannot be considered fair or non-commercial use.

Finally, the Complainant contends that the disputed domain name was registered and is used in bad faith. The Complainant explains that the Respondent registered the disputed domain name in order to profit from the fame of the Complainant’s trademark. The Complainant asserts that the Respondent has linked the disputed domain name to a domain parking site, thereby commercially profiting from the fame of the FACA mark, causing confusion, and diverting consumers from the Complainant’s official website. Also, the Complainant points out that the parking page advertises the disputed domain name for sale for USD 55,000, and that the Respondent seeks to profit unfairly by selling it to the Complainant for an exorbitant price.

B. Respondent

First, the Respondent contends that the Complainant has a narrow scope of rights to “faca” despite the Complainant’s trademark registration.

Next, the Respondent explains that he is in the business of registering domain names and selling it later for profit. Specifically, he asserts that he registered the disputed domain name for its potential commercial value since it consists of four letters only and is easy to pronounce and remember.

Finally, the Respondent denies that he engaged in bad faith registration or use of the disputed domain name. He contends that he did not have any knowledge of the Complainant or his goods or services at the time of registration in 2001. Rather, the Respondent argues that he registered the disputed domain name as it consists of four letters, which is short and easy to remember, and, as a result, the value of which is high. Also, the term “faca”, when pronounced, is similar to a Korean term for a jacket. Further, Respondent later became aware that the term means “knife” in Portuguese and there are more than 1.5 billion Google results under this search term, most of them not referring to the Complainant at all. The Respondent also argues that past UDRP panels held that a registrant is not prevented from trying to attract Internet users to one’s website for commercial gain.

6. Discussion and Findings

A. Language

Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the registration agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the language of the Registration Agreement is Korean, and both Parties have had an opportunity to argue their position on this point. The Complainant initially submitted the Complaint in English, and upon the Center’s request, submitted a Korean translation of the Complaint. The Respondent thereafter submitted a Response in Korean.

The Panel finds it proper and fair to render this decision in English. First, as the Complainant is based in Spain and the Respondent is based in the Republic of Korea, English would appear to be the fairest neutral language for rendering this decision. Further, according to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1, the Panel can take into consideration prior cases involving the respondent in a particular language. In this regard, the panel in two of the past cases involving the Respondent described the Respondent as having sufficient knowledge of English to be able to understand the proceedings in English. And lastly, both parties were permitted to and in fact did present their cases in the language of their preference, so it appears that fairness has been maintained in view of the overall circumstances.

B. Identical or Confusingly Similar

The Complainant has demonstrated with supporting evidence that it holds a registration to a mark consisting of “faca” and design in Spain. The disputed domain name solely consists of the term “faca”, and is therefore, identical to the Complainant’s trademark.

For the reasons mentioned above, the Panel finds that the first element has been established.

C. Rights or Legitimate Interests

On the basis of the present record, there is no evidence that the Respondent improperly registered or obtained the disputed domain name with knowledge of the Complainant. Indeed, while the Complainant owns a trademark registration for “faca” and design, based on the Respondent’s submissions which are supported by a simple Google search, this term correlates to a slew of other meanings wholly unrelated to the Complainant, including a Portuguese term for “knife”. Further, the Respondent has parked the disputed domain name with a parking service but this is not per se illegitimate under the UDRP, especially for a domain name which consists of a dictionary term like “faca” and hosts pay-per-click links actually related to the dictionary meaning of the word (here, knives and similar tools) with no evidence of trading on the trademark of the Complainant or its competitors. See section 2.9 of the WIPO Overview 3.0. Therefore, the Panel finds that the Complainant has not met its burden here with respect to the Respondent’s lack of rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Section 3.1 of the WIPO Overview 3.0 provides that bad faith under the UDRP is “broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. Here, it would appear that the Respondent has a history of cybersquatting, but the record in this case does not support a finding of bad faith. There is no evidence to suggest that the Respondent knew of the Complainant at the time of registration. Further, the offer to sell the disputed domain name or the Respondent’s use of the disputed domain name for Sedo parking, without additional supporting factors, do not necessarily indicate bad faith here. Indeed, there is no clear evidence that “faca” is widely known as a trademark of the Complainant. As mentioned above, “faca” is a dictionary term meaning “knife” in Portuguese, and a Google search for “faca” shows a great many results, nearly all of them unrelated to the Complainant. Therefore, based on the available record no reasonable inference can be made that the Respondent specifically targeted the Complainant in bad faith to freeride on the reputation and fame of the Complainant’s mark by registering and using the disputed domain name.

Therefore, the Panel finds that this element has not been established.

7. Decision

For the foregoing reasons, the Complaint is denied.

Ik-Hyun Seo
Presiding Panelist

Albert Agustinoy Guilayn
Panelist

Ilhyung Lee
Panelist
Date: May 13, 2022

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