WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Xfera Moviles, S.A. v. Private Registrations Aktien Gesellschaft / PrivacyProtect.org

Case No. D2012-2114

1. The Parties

The Complainant is Xfera Moviles, S.A. of Madrid, Spain, represented by Abril Abogados, Spain.

The Respondent is Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines / PrivacyProtect.org of Nobby Beach, Queensland, Australia.

2. The Domain Name and Registrar

The disputed domain name <miyoigo.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2012. On October 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 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 October 29, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 30, 2012.

The Center verified that the Complaint together with the amended 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 October 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2012.

The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on November 26, 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 one of the four mobile phone operators in Spain. It offers its products and services through its main and notorious trademark YOIGO.

The Complainant offers its services off and online through specialized stores located in each Spanish province and via the Internet at “www.yoigo.es”.

The Complainant is the owner of the following registered trademarks for YOIGO:

- Spanish Trademark No. 2730813, filed on September 18, 2006;

- Community Trademark No. 5416904, filed on October 25, 2006;

- Community Trademark No. 5417324 YOIGO, filed on October 25, 2006;

- Community Trademark No. 5417373 YOIGO, filed on October 25, 2006; and

- Community Trademark No. 5417381 YOIGO, filed on October 25, 2006.

The Complainant is also the owner of domain name registrations, both as generic Top Level Domains (gTLDs) and country code Top Level Domains (ccTLDs) such as <yoigo.com>, <yoigo.net>, <yoigo.biz>, <yoigo.org>, <yoigo.es>, and <yoigo.co.uk>.

According to evidence submitted by the Complainant, the Complainant and its trademark have been covered by foreign media such as the Washington Post and the renowned Financial News television channel Bloomberg.

The disputed domain name was created on January 5, 2007, and was registered by the Respondent on February 3, 2012.

At the time of filing of the Complaint the disputed domain name resolved to a website which contained links to competitors of the Complainant.

5. Parties’ Contentions

A. Complainant

The disputed domain name fully incorporates the registered trademark YOIGO owned by the Complainant. The trademark is preceded by the Spanish possessive article “mi” (“my”, in English), a fact that leads to the conclusion that the Respondent either is Spanish or has enough knowledge of the Spanish language. In any case, it can be presumed that it has full knowledge of the Complainant’s trademark. Thus, the inclusion of the term “mi” leads to a practical identity which leads to a risk of confusion between the disputed domain name <miyoigo.com> and the Complainant’s prior trademark YOIGO. Therefore, according to the Complainant, undoubtedly the first requirement of the Policy must be considered satisfactory fulfilled.

The Complainant contends that the Respondent cannot prove any rights or legitimate interests in the term “yoigo” because of the following reasons:

- An online search shows that the Respondent has no relation with the term “yoigo”;

- The Respondent is not a distributor, reseller or client of the Complainant;

- The disputed domain name clearly misleads consumers into believing that somehow the contents on the website at the disputed domain name are endorsed or approved by the Complainant.

In view of the above, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The term “yoigo” is unique and has no meaning. Any defense based on a registration “by chance” must be refused as not being plausible. Registration of the disputed domain name can only be understood from a cybersquatting perspective.

There is a clear indication of bad faith at the moment of registration: at the date of registration of the disputed domain name, the YOIGO trademarks were already in force and the Complainant’s main website “www.yoigo.es” was fully operational.

The use of the possessive article “mi”, as said, undoubtedly confirms that the Respondent was fully aware of the Complainant’s trademark. The election of such domain name can only be explained as opportunistic behavior which leads to a bad faith presumption on the part of the Respondent.

The Complainant submits that therefore the third requirement of the Policy must be considered satisfactory fulfilled.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

This first element requires that the Complainant demonstrate that (1) it has trademark rights and (2) the disputed domain name is identical or confusingly similar to such trademark in which the Complainant has rights.

The Panel finds that the Complainant has established that it is the owner of the registered trademark YOIGO based on the evidence provided by the Complainant (Annex 3 to the Complaint).

The disputed domain name consists of one word, in which however one can clearly distinguish the trademark YOIGO and the term “mi”, the Spanish term for “my”. The Panel considers that the addition of the generic term “mi”, especially when added to a well-known trademark is not sufficient to avoid confusion. This is even more so when the generic word added to the trademark is simply an attributive adjective that indicates possession.

The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

By the terms used in paragraph 4(a)(ii) of the Policy it is clear that the overall burden of proof is on the Complainant, however a complainant is only 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. If the respondent fails to come forward with such allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Complainant has stated that the disputed domain name directs to a parked webpage where third party links appear (some of them referring to the Complainant and reproducing the registered trademark YOIGO). Furthermore, the Complainant asserts that the Respondent is not affiliated with the Complainant in any way nor has it authorized the Respondent to use or register its trademarks or to seek the registration of any domain names incorporating said trademarks. The Complainant finally claims that the Respondent makes no legitimate noncommercial or fair use of the disputed domain name and therefore has no rights or legitimate interest in the disputed domain name.

The Respondent has not provided a Response to the allegations set forth by the Complainant, though given the opportunity.

The Panel could not find any evidence in the case file demonstrating that the Respondent might have rights or legitimate interests in the disputed domain name.

This Panel considers that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and, in the absence of a Response, has satisfied the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The third element under paragraph 4(a) of the Policy requires that the Complainant demonstrates that (1) the disputed domain name has been registered in bad faith and (2) is being used in bad faith.

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

The disputed domain name is composed of one word, “miyoigo”. However one can clearly distinguish the terms “mi” and “yoigo”. The first is an attributive adjective that indicates possession that in the English language means “my”; the second a registered trademark owned by the Complainant;

The Complainant has stated that the trademark YOIGO is a coined word created by the Complainant, which has no real meaning. Consequently, it is difficult to believe that the election of such a term “yoigo” is a mere coincidence, and therefore one can reasonably conclude that the Respondent had knowledge of the existence of the Complainant’s trademark, demonstrating bad faith registration.

Moreover, the Complainant sent a cease-and-desist letter to the Respondent requesting the transfer of the disputed domain name and the cease of use of the trademark. However, to date the Respondent has not removed such mention and remains using the trademark of the Complainant, in circumstances in which the Complainant has clearly stated that it has never given the Respondent authorization to use such trademark.

In addition, the Panel accessed the website at the disputed domain name and has noted that the website effectively provides a parked page, more specific a pay per click site. The Panel considers that by registering a domain name corresponding to a well-known trademark, the Respondent has intentionally tried to divert Internet users to its website, for commercial gain. This behavior constitutes bad faith use and in the Panel’s view may tarnish the Complainant’s reputation by, among other things, attracting Internet users to a website that does not correspond to what they are looking for.

The above can only lead the Panel to conclude that the Respondent is attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the services provided on the website.

Therefore, in accordance with paragraph 4(b)(iv) of the Policy, the above findings lead to the conclusion that the disputed domain name has been registered and 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 disputed domain name <miyoigo.com> be transferred to the Complainant.

Rodrigo Velasco Santelices
Sole Panelist
Dated: November 29, 2012