WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Puerto 80 Projects SLU v. Domains By Proxy, LLC, DomainsByProxy.com and Jupiter Miguel Tarrero Gallo

Case No. D2012-1563

1. The Parties

The Complainant is Puerto 80 Projects SLU of Madrid, Spain, represented by Bufet Almeida, Abogados Asociados, Spain.

The Respondent is Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States of America (“US”) and Jupiter Miguel Tarrero Gallo of Madrid, Spain.

2. The Domain Name and Registrar

The disputed domain name <todorojadirecta.com> 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 August 2, 2012. On August 2, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2012, 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 August 9, 2012 providing the registrant and contact information disclosed by the Registrar, as well as notifying it about a deficiency with respect to paragraph 12 of the Complaint, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 13, 2012.

On August 8, 2012, the Center transmitted the language of the proceedings document to the parties in both English and Spanish. On August 13, 2012, the Complainant requested Spanish to be the language of the proceedings. The Respondent did not submit its comments. Taking into account these circumstances and the fact that the language of the registration agreement of the disputed domain name is English, the Panel has decided to draft this Decision in English.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2012.

The Center appointed José Carlos Erdozain as the sole panelist in this matter on September 18, 2012. 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, incorporated in 2005, which owns the domain names <rojadirecta.me>, <rojadirecta.es>, <rojadirecta.com> and <rojadirecta.org> among a number of other domain names.

The Complainant is licensed to use the trademark ROJADIRECTA since 2005.

ROJADIRECTA is a Spanish trademark (word with drawing), which is registered with the Spanish Patent and Trademark Office (registration no. 2,938,949). The application form was filed on July 9, 2010, and it was registered on January 17, 2011.

The word ”rojadirecta” has been associated with the Complainant’s above-mentioned domain names throughout the last years.

The domain name <rojadirecta.me> is able to index more than 500 sports events in one weekend.

As indicated in Annex 7 to the Complaint, the Complainant’s website at “www.rojadirecta.me” is among the top 1,500 most visited websites in the world.

The disputed domain name was registered on December 20, 2011.

According to the Complainant, the Complainant and the Respondent were engaged in a previous UDRP proceeding with respect to the domain name <esrojadirecta.com> (Puerto 80 Projects, SLU v. Jupiter Networks SL, WIPO Case No. D2011-1617).

5. Parties’ Contentions

A. Complainant

The Complainant contends that the trademark ROJADIRECTA, which is commercially used under license, is a well-known trademark throughout the world.

The disputed domain name is identical or confusingly similar to the trademark ROJADIRECTA on the grounds that the word ”todo” does not make any difference to any consumer that may visit the disputed domain name’s website. In fact, addition of the generic word “todo” to the Complainant trademark ROJADIRECTA does not contribute to distinguish the disputed domain name from the Complainant’s trademark.

The Respondent does not have any rights or legitimate interests in the disputed domain name, nor in the word “rojadirecta”. The Respondent just imitates the look and feel of the website of the Complainant, and therefore is trying to attract Internet users to the disputed domain name’s website.

The disputed domain name has been registered and is being used in bad faith. The Complainant claims that the Respondent registered the disputed domain name with the purpose of obtaining a commercial gain. In addition, the registration of the disputed domain name in bad faith is proved because the Respondent does not only have any right or legitimate interest in the same, but also was aware of the activities of the Complainant and its trademark at the time of registration of the disputed domain name. As to the use in bad faith requirement, the Complainant contends that the Respondent is obtaining commercial gain from the advertisement included in the disputed domain name’s website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The first element of the Policy is that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

In the present proceeding, the Complainant is licensee of the trademark ROJADIRECTA. This trademark was registered on January 17, 2011, and in force to date.

A significant number of UDRP decisions regarding the requirement of identity or confusing similarity have been produced to date. In the Panel’s opinion, in accordance with previous UDRP decisions, a domain name used by a respondent may be considered identical or confusingly similar to a complainant’s mark if the respondent reproduces it in the domain name without any modification or with addition of descriptive terms to the trademark or, “when viewed as a whole it contains differences so insignificant that they go unnoticed by the Internet users” (see Viacom International Inc. v. Mo-Team, WIPO Case No. D2009-1420).

In this regard, the Panel finds that a visual comparison between the disputed domain name and the trademark ROJADIRECTA leads to the conclusion that both of them are confusingly similar. In Spanish the meaning of the word “todo” is “all”. It is unarguable that this word does not have any intrinsic significance that may produce a distinction between the disputed domain name and the Complainant’s trademark.

For all these reasons, the Panel finds that the first requirement of the UDRP is met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proving any of the following non-exclusive conditions: (i) before any notice to respondent of the dispute, respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) respondent (as an individual, business, or organization) has been commonly known by the domain name, even if respondent has not acquired trademark or service mark rights; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

If the Complainant makes a prima facie showing of absence of the Resopndent’s rights or legitimate interests in the disputed domain name, then the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the disputed domain name.

In the present proceeding, the Respondent has not filed any response to the Complaint. Therefore, the Respondent has failed to show evidence of having any rights or legitimate interests in the disputed domain name.

Besides, the Complainant alleges that the Respondent has never been licensed to use the trademark ROJADIRECTA, and that it is not affiliated with the Complainant whatsoever. Moreover, the Respondent has never been known by the disputed domain name.

In the present proceeding, the Respondent has not submitted evidence or proof of any of those circumstances listed in paragraph 4(c) of the Policy and, therefore, has failed to demonstrate its rights or legitimate interests to the disputed domain name for purposes of paragraph 4(a)(ii) of the Policy (see Casa Tarradellas, S.A. / D. José Tarradellas Arcarons v. Indices de Gestión, S.L., WIPO Case No. D2001-0151; Compaigne Gervais Danone. v. Danup.com, WIPO Case No. D2008-0076).

Bearing in mind all these circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name (see Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055, and Bayer Akiengesellschaft v. K Dango, WIPO Case No. D2002-0138).

Therefore, the Panel concludes that the second requirement of the Policy is also met.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires a complainant to prove that the disputed domain name has been registered and is being used in bad faith in order to be successful in its complaint. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you [respondent] have registered or you [respondent] have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the 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 your [respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) you [respondent] have registered the 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 you [respondent] have engaged in a pattern of such conduct; or

(iii) you [respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you [respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your [respondent’s] website or location or of a product or service on your [respondent’s] website or location.”

The Panel finds that the Complainant has filed sufficient evidence that the trademark ROJADIRECTA was a well-known trademark at the time the disputed domain name was registered. It is also worth mentioning the fact that the application for the trademark ROJADIRECTA was filed in 2010 and was granted on January 17, 2011, whereas the disputed domain name was registered on December 20, 2011, that is after the Complainant had registered said trademark.

Also to be taken into account is the fact that the Respondent is domiciled in Spain and that it apparently was previously involved in a dispute with the Complainant with respect to the domain name <esrojadirecta.com> (Puerto 80 Projects, SLU v. Jupiter Networks SL, WIPO Case No. D2011-1617). Therefore, this proves that the Respondent was aware of the activities of the Complainant and of the trademark ROJADIRECTA at the time of registration of the disputed domain name (in this regard, the Panel also notes that the disputed domain name was registered 14 days after the decision was rendered in the above-referred case between the parties).

The Panel finds that the Respondent uses advertisements in the disputed domain name’s website. The purpose thereof is, in the Panel’s opinion, to obtain commercial gain from the use of the trademark ROJADIRECTA (assuming that the word “todo” in the disputed domain name, as the Panel previously noted, does not contribute to any difference between the disputed domain name and the Complainant’s trademark). This has been found as an evidence of bad faith (see Oxygen Media, LLC v. Oana Marinescu, WIPO Case No. D2000-0582).

Moreover, the Panel subscribes to the opinion taken in J. García Carrión, SA v. José Catalán Frías, WIPO Case No. D2000-0239 where the panel found that lack of respondent’s rights or legitimate interests in the domain name is undoubtedly indicative of registration in bad faith. In the Panel’s opinion, this is the case in the present proceeding.

It should be stressed the fact that the disputed domain name is redirected to the domain name <rinconrojadirecta,com>, where the words “roja directa” appear in capital letters. This mention addresses undoubtedly to the Complainant and its trademark ROJADIRECTA (registration no. 2,938,949).

Also, the Panel notes that the website at “www.rinconrojadirecta.com”, to which resolves the disputed domain name, contains the following disclaimer in Spanish: “rinconrojadirecta.com es una pagina totalmente independiente a las paginas rojadirecta.com – rojadirecta.me - rojadirecta.es y no guarda ningun tipo de relacion con las mismas”. In this regard, the Panel notes that the disclaimer on the website of the domain name <rinconrojadirecta.com> refers to the domain names <rojadirecta.com>, <rojadirecta.me> and <rojadirecta.es>, which are the property of the Complainant. The fact that the Respondent tries to refuse any misunderstanding or confusion between the domain name to which the disputed domain name redirects and the domain names of the Complainant, induces to conclude that even the Respondent assumes that a likelihood of confusion may be found between the disputed domain name and the domain names property of the Complainant. In the Panel’s opinion, such disclaimer does not change its findings in this case.

Therefore, in accordance with all these facts, it has been proved, in the Panel’s view, that by registering and using the disputed domain name Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website of the disputed domain name by creating a likelihood of confusion with the Complainant’s trademark ROJADIRECTA as to the source of the website in question and the content available therein. The generic word “todo” does not have any distinctiveness by itself. In fact, any consumer accessing the disputed domain name would certainly focus on the word ”rojadirecta”. This conclusion is reasonable in view of the evidence that has been filed with the case (see also Guardant, Inc. v. youngcho kim, WIPO Case No. D2001-0043 and Pfizer Inc. v. Phillip Pizzurro, WIPO Case No. D2004-0600).

Therefore, the Panel concludes that the disputed domain name was registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <todorojadirecta.com> be transferred to the Complainant.

José Carlos Erdozain
Sole Panelist
Dated: October 2, 2012