WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Everis Spain S.L. v. Benjamin Gallagher
Case No. DCO2014-0040
1. The Parties
The Complainant is Everis Spain S.L. of Madrid, Spain, represented by Cavelier Abogados, Colombia.
The Respondent is Benjamin Gallagher of Xingyang, Zhengzhou, China.
2. The Domain Name and Registrar
The disputed domain name <everis.com.co> 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 December 13, 2014. On December 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2015.
The Center appointed James A. Barker as the sole panelist in this matter on February 4, 2015. 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 says that it is a leading consulting firm established in 1996 that provides business and strategy solutions, including application development, maintenance, and outsourcing services in Spain and elsewhere around the world.
The Complainant is the owner of marks registered for EVERIS. These include Colombian trademark registrations for EVERIS in the name of the Complainant. The earliest of those marks was registered in 2007.
According to the WhoIs details, confirmed by the Registrar, the disputed domain name was created on April 16, 2014.
The Complainant provides screenshots of various pages from the Respondent’s website, contrasting them with examples of other websites which have a similar look and feel. From those examples, the Respondent’s website consistently includes a logo including the word “Ciros” alongside a title heading “MINING AND CONSTRUCTION”.
In the absence of a response, there is little information about the identity or operations of the Respondent.
Although not mentioned in the Complaint, the Complainant has previously been a successful complainant in a case under the .es Policy involving its mark: Everis Spain, SL c. Sergi Herrera, WIPO Case No. DES2008-0020.
5. Parties’ Contentions
The Complainant says that the disputed domain name is, for all intents and purposes, identical to its mark. The Complainant also refers to previous panel authority for the proposition that a mark which is entirely incorporated in a domain name establishes confusing similarity for the purposes of the Policy. Further, it is well established that the generic Top-Level Domain (gTLD) and the country code Top-Level Domain (ccTLD) may be disregarded when evaluating whether the domain name is identical or confusingly similar to the Complainant’s trademark.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent’s use of the disputed domain name does not meet the criteria for a bona fide offering of goods or services. The Complainant has not licensed or authorized the Respondent to use its mark. Even if the Respondent established that it was unaware of the Complainant’s mark, the Policy required the Respondent to determine whether the disputed domain name infringed or violated a third party’s rights prior to registration. The Respondent knew or should have known that the Complainant was the owner of the registered trademark EVERIS in Colombia. Otherwise there is no explanation for the Respondent’s registration of the disputed domain name that incorporates that mark.
The Respondent has placed a “template” website at the website to which the disputed domain name reverts, pretending to be a fully functional website. The Complainant provides evidence that the images appearing on the Respondent’s website may have been sourced from different random pages on the Internet from where the Respondent may have copied text, images and other designs. There are several unrelated websites online using an almost identical interface to that on the Respondent’s website. The website also includes links which, when clicked on, give an error indicating the account is no longer active.
The Complainant says that the disputed domain name was registered and has been used in bad faith. This is indicated by the Respondent’s failure to get the Complainant’s permission to use its mark and to actively use the website. The Complainant also tried to negotiate a price for the disputed domain name, and sent an email suggesting that there was little use that could be made of the disputed domain name in Columbia that would not give rise to consumer confusion, but the Respondent never answered. Neither has the Respondent provided any evidence of actual or contemplated good faith use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(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 was registered and is being used in bad faith.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the first thing a complainant must show is that it “has rights” in a trademark. The Complainant has provided copies of registration certificates for the EVERIS mark on which it relies and so meets this aspect of the Policy.
The next issue is whether the disputed domain name is identical or confusingly similar to that mark. It is well established that the domain name extensions (in this case, both the gTLD and the ccTLD) are to be generally disregarded for the purpose of comparison. Disregarding those extensions, it is self-evident that the disputed domain name is relevantly identical to the Complainant’s registered trademark for EVERIS. Being identical, there is no need for the Complainant to alternatively establish that the disputed domain name is confusingly similar.
For these reasons, the Panel finds that the Complainant has established this first element.
B. Rights or Legitimate Interests
The second thing which the Complainant must establish to succeed is that the Respondent has no rights or legitimate interests in the disputed domain name. As noted in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), for this element of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name.
The Complainant has established such a case against the Respondent. The Complainant’s evidence is that the Respondent’s website gives the superficial appearance of a legitimate website, but does not function as one. If the Respondent was, as its website suggests, operating a legitimate and substantial business, it should not have been difficult for it to provide some evidence of this. It is also notable that, even if the Respondent did in fact operate the business enterprise suggested by its website, that website contains no self-evident connection with the mark EVERIS.
In these circumstances, the Panel finds that the Respondent has not rebutted the Complainant’s prima facie case against it. Accordingly, the Panel finds that the Complainant has established this second element.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances in which bad faith may be found. Each of those circumstances requires, or implies, that a respondent must at least have known, or ought to have known, of a complainant’s rights, and sought to take unfair advantage of them.
As discussed above, the Complainant’s mark is exactly incorporated in the disputed domain name, such that it is relevantly identical to that mark. While the Complainant did not explain the origin of its mark or provide much evidence of its reputation, the Complainant’s case is unrebutted and its marks have been recognized in a previous case under the .es Policy. It also appears no coincidence that the Respondent has registered its ccTLD in a Spanish-speaking country’s domain and that the Complainant is based in Spain. The Panel has also inferred, from the Respondent’s failure to reply, that it has no good response to the case against it.
On balance, the Panel considers that this evidence is suggestive that the Respondent was aware of the Complainant’s mark, and registered and has used the disputed domain name to unfairly exploit the Complainant’s reputation. Such a use points to bad faith for the purpose of paragraph 4(a)(iii) of the Policy. Accordingly, the Panel finds that the Complainant has established this third element.
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 <everis.com.co> be transferred to the Complainant.
James A. Barker
Date: February 19, 2015