WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Repsol YPF S.A. v. Talk2middle Top Domain Reg
Case No. D2008-0556
1. The Parties
Complainant is Repsol YPF S.A., of Madrid, Spain, represented internally.
Respondent is Talk2middle Top Domain Reg, of Nigeria.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with OnlineNic, Inc. d/b/a China-C.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2008. On April 11, 2008, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the Domain Name. On April 17, 2008, OnlineNic, Inc. d/b/a China-C transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on April 17, 2008. 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”), 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 Respondent of the Complaint, and the proceedings commenced on April 21, 2008. In accordance with the Rules, Paragraph 5(a), the due date for Response was May 11, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 13, 2008.
The Center appointed Clive L. Elliott as the sole panelist in this matter on May 22, 2008. 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
Complainant is an oil, chemical and gas company carrying out activities in exploration and production, refining, distribution and marketing, chemicals and natural gas and electricity. Complainant is the corporate manifestation resulting from the take over between the Spanish company Repsol, S.A. and the Argentinean oil company YPF. It is now a leading oil company in Latin America and amongst the world’s ten largest oil companies.
Complainant operates in Europe, South and North America, North and Middle Africa, Middle East, Indonesia, Philippines, Malaysia, Vietnam and other countries in South East Asia.
Complainant is the registered proprietor of a number of trade marks in a number of countries for the trade mark REPSOL YPF. Details are provided.
5. Parties’ Contentions
A. Complainant
Complainant asserts that even though in accordance with the Policy it is not necessary to hold trade mark rights where the domain name titleholder has his residence, that in this present case, Complainant holds rights worldwide and specifically in Nigeria, the place of residence of Respondent.
Complainant asserts that by virtue of the longstanding and substantial use of the REPSOL and YPF names and marks in Argentina, Africa, Europe, and the rest of South America that both, the names and the marks, are well known.
Complainant argues that the Domain Name comprises Complainant’s trade mark entirely, and includes a hyphen, which separates Complainant’s mark REPSOL YPF from the word “online”, which refers to the Internet.
Complainant asserts that its trade name and trade mark thus identifies a famous brand of oil, chemical, gas and electricity goods and services worldwide and that the Repsol YPF S.A. activities are widely mentioned by the mass media, locally, nationally and internationally.
Complainant notes further that it has vigorously defended its Intellectual Property rights in all trade mark classes, having successfully brought complaints before WIPO for the domain names (Repsol YPF S.A. v. COMn.com,WIPO Case No. D2001-0741), (Repsol Comercial de Productos Petroliferos, S.A. v. Juana Hidalgo Mortos,WIPO Case No. D2000-1238), (Campsa Estaciones de Servicio S.A. v. Maninfor Muncia GB, SL,WIPO Case No. D2004-0467), among others.
Complainant submits that Respondent has no rights or legitimate interests in respect of the Domain Name and that it has, after registering the Domain Name, set up a website imitating Complainant’s official website. It submits that this will lead consumers to think that such website under the Domain Name belongs to Respondent. Further, it is contended that the appearance of such website and the web content is a copy of the contents of Complainant’s corporate information.
Finally, it is contended that Respondent has been activating such webpage intermittently during the past months since its registration and that such webpage include other marks owned by Complainant, including “Your Energy Moves us”, or the name and data of Complainant’s Board of Directors, or the name of its President and CEO.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following:
(i) The Domain Name registered by Respondent is identical or confusingly similar to a trade mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by Paragraph 4(a)(iii) referred to above.
Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in Paragraph 4(a)(ii) referred to above.
Given that Respondent filed no Response nor sought further time in which to do so, the Panel is required to assess the evidence and submissions filed by Complainant alone. In the absence of any dispute as to the accuracy and correctness of that information, the Panel must decide this proceeding on the basis of Complainant’s undisputed representations and draw such inferences it considers appropriate. The Panel considers that, on the basis of the record, that there is no reason why it should not do so in the present case.
A. Identical or Confusingly Similar
Complainant has used the REPSOL YPF trade mark in relation to the supply of oil, chemical and gas and carried out activities in relation to a range of like exploration and production activities. It is asserted, without contest, that Complainant is a leading oil company in Latin America and amongst the world’s ten largest oil companies and has business interests in a wide range of countries around the world.
Most relevantly, Complainant has widely registered the trade mark REPSOL YPF.
None of these assertions are disputed and they are thus accepted.
Complainant contends that the Domain Name constitutes an infringement of its trade marks. It is found that the Domain Name is confusingly similar to the REPSOL YPF trade mark (differing only with regard to a descriptive element, the word “online”).
On this basis it is found that:
(a) Complainant has trade mark rights in respect of the trade mark REPSOL YPF; and
(b) The Domain Name is confusingly similar to the trade mark REPSOL YPF.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
Complainant submits that Respondent has no rights or legitimate interest in respect of the Domain Name and that it has created a website imitating Complainant’s official website and that this will lead consumers to the mistaken belief that such website under the Domain Name belongs to Complainant.
Further, it is asserted by Complainant that the appearance of Respondent’s website, incorporating the contents of Complainant’s corporate information is also likely to mislead consumers.
The above situation, supported by the evidence and submissions provided by Complainant, is sufficient to raise a question as to whether Respondent has any rights or a legitimate interests in the Domain Name. This is particularly so given the apparent well-known nature of the REPSOL YPF trade mark. The Panel draws the inference that the trade mark appears to have no apparent meaning apart from as a means to identify Complainant and its services.
Accordingly, in the absence of any effort to explain why Respondent might have a right or legitimate interest in the Domain Name the Panel infers in the circumstances of this particular case, that no such a right or legitimate interest exists and that this element of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainant asserts that Respondent has been activating its webpage intermittently during the past months since registration of the Domain Name and that the webpage includes other marks owned by Complainant, including “Your Energy Moves us”, or the name and data of Complainant’s Board of Directors, or the name of its President and CEO.
This is hardly consistent with legitimate use of a domain name. This is coupled with the inference that Respondent was likely to have had prior knowledge of the trade mark REPSOL YPF prior to registering the Domain Name.
It is reasonable in the present situation and again in the absence of any contest from Respondent to conclude that Respondent was or ought to have been aware of the existence of Complainant’s trade mark.
The Panel concludes that Complainant has established the third element of the Policy.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, namely , be transferred to Complainant.
Clive L. Elliott
Sole Panelist
Dated: June 12, 2008
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