WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Newton 21 S.A. Barcelona v. Axafina Inc., Virgie Corona Case No. D2008-1680 1. The Parties
The Complainant is Newton 21 S.A., of Barcelona, Spain, represented by Crowell & Moring, LLP, Belgium.
The Respondent is Axafina Inc., Virgie Corona, of Cheyenne, Wyoming, United States of America. 2. The Domain Name and Registrar
The disputed Domain Name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2008. On November 4, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed Domain Name. On November 4, 2008, eNom transmitted by email to the Center its verification response confirming that the 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, the Complainant filed the Amended Complaint on November 25, 2008. 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 December 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 31, 2008.
The Center appointed Ian Blackshaw as the sole panelist in this matter on January 19, 2009. 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 claims to be the holder of the THAO SALUD INFANTIL unregistered trademark, which it uses widely in connection with a child obesity reduction program (discussed further under Section 5. A2 below).
For the handling of ICT matters, the Complainant had called upon the assistance of the Respondent. The Respondent was inter alia requested to manage the Complainant's domain name portfolio.
Whereas the Complainant assumed that it would continue to be the holder of the domain names that it uses, the Respondent either registered these domain names in its own name, or transferred the domain names to him, thereby becoming the holder.
The Respondent misled the Complainant in this regard when it assured the latter that it would continue to be the holder of these domain names. This is apparent from inter alia an email of February 7, 2007 of Mr. Mingels, an employee of the Respondent, who wrote the following to the CEO of the Complainant with regard to another one of the Complainant's domain names:
“… I am sending you attached a letter certifying that the domain transfer of N to Axafina is not an ownership transfer but a simple transfer of domain registrar. …
As discussed this will enable us to finish our implementation of the Barcelona IT infrastructure. …
… currently there is a Client Transfer Prohibited lock on this domain. This means that we cannot initiate the transfer as of yet. You will need to contact the current registrar ASCIO TECHNOLOGIES, INC. to remove that lock. …”
The Panel has been provided with a copy of this e-mail.
In a letter of the same date, Mr. Mingels wrote:
“…
After the transfer has been completed and the domain is managed by Axafina's registrar services the same ownership applies as listed above.
Furthermore it is very clear to us that you are the owner of the domain and that under no circumstances Axafina will accept any requests for modifications of any kind unless specifically requested in writing by you in person as CEO of Newton 21 Europe.”
Again, the Panel has been provided with a copy.
However, in an email of February 14, 2007, Mr. Mingels suddenly wrote:
“…
Please let me know if we can now go ahead with the domain transfer or if you need anything else. …”
Likewise, a copy has been provided to the Panel.
The contractual relationship between the Complainant and the Respondent has been terminated on November 20, 2007. Evidence of this has been provided to the Panel. The Respondent, however, is still the holder of the disputed Domain Name.
The file does not contain any approval by the Complainant of the Respondent being the registrant of the disputed Domain Name.
A request on October 3, 2008 to transfer the disputed Domain Name to the Complainant was left unanswered. A copy has been provided to the Panel.
The present UDRP proceedings are not the first between the parties. On February 12, 2008, the Complainant initiated UDRP proceedings with the Center against two of the Respondent's employees who had acquired the domain name , which is used by the Complainant in the same way as described herein above. A response was filed, not by the two employees, but by the Respondent. The learned panel in Newton 21 Europe sa v. Chris Bejoian, Robby A.J. Mingels, Axafina, Inc.,WIPO Case No. D2008-0217, found that the domain name had been registered in bad faith and ordered that this domain name be transferred to the Complainant.
The website which used to be accessible via the disputed Domain Name and that was created by the Complainant was the website of the “thao salud infantil” program, albeit the old version. Evidence of this has been provided to the Panel.
As this website is no longer under the physical control of the Complainant (by lack of control of the disputed Domain Name) and as the Complainant wished to have its program communicated anyhow, the Complainant registered the domain name and published its website. That website is presently regularly updated by the Complainant. Again, evidence of this has been provided to the Panel.
When one compares the two websites, one will note inter alia that the version which can be accessed via the disputed Domain Name lacks two new categories mentioned in the website which can be accessed via the domain name's toolbar: “ideas y juegos” and “newsletter”.
As mentioned above, with the disputed Domain Name being the property of the Respondent, the Complainant has no control over the content of this website and cannot update it. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions: A1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))
The Complaint is based on the unregistered trademark THAO SALUD INFANTIL which is held by the Complainant.
A registered trademark is not required under the first UDRP element. A complainant may also base its complaint on an unregistered trademark.
The answer to question 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions explains the conditions that need to be met for there to be an unregistered trademark:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant's rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.”
The Complainant created, promotes and manages a methodology designed to involve all relevant local stakeholders, such as municipalities, in an integrated and concrete prevention program aimed at facilitating the adoption of healthier lifestyles in everyday life and, in particular, aimed at preventing obesity in children under the age of 12. This program is known in Spain under the name “thao salud infantil”.
The “thao salud infantil” program is widely known and the trademark has been extensively used for more than one year, inter alia on the program's website. More than 12,000 children have already participated in the program, which clearly shows the extent of the use and proves that the name of the program has acquired a secondary meaning. Evidence of this has been provided to the Panel.
The only difference between the disputed Domain Name and the Complainant's unregistered trademark is that the last word “infantil' is deleted in the former. However, the Internet users are still confused.
The dominant element “thao” in the Complainant's unregistered trademark is also present in the disputed Domain Name as is the word “salud”.
Moreover, at the time of the registration of the disputed Domain Name by the Respondent at the request of the Complainant, the Domain Name was chosen by the Complainant (emphasis added). The Complainant wanted a shorter and thereby easier way to use the Domain Name than its unregistered trademark for the “thao salud infantil” website. The Respondent was asked by the Complainant to only register the Domain Name (“thaosalud”) and not “thaosaludinfantil”. The very fact that the disputed Domain Name was chosen by the Complainant to be the address for the program website, clearly shows that there is a strong link between the Domain Name and the Complainant's unregistered trademark and, therefore, that the former is confusingly similar to the latter. A2. The Respondent has no rights or legitimate interests in respect of the domain name;
(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))
The Complainant further contends that it has made a prima facie showing that the Respondent has no right or legitimate interest in the disputed Domain Name.
It is evident that the Respondent does not have any rights or legitimate interests in respect of the disputed Domain Name.
Attention is paid to the relevant aspects of the Policy, paragraph 4(c), including:
(i) Before any notice to the Respondent of the dispute, there is no evidence of the Respondent's use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services;
(ii) The Respondent has not been commonly known by the Domain Name and the Respondent has not acquired trademark or service mark rights;
(iii) The Respondent is not making a legitimate non-commercial or fair use of the Domain Name. Respondent has made the use of the Domain Name by Complainant impossible.
The Respondent does not use the disputed Domain Name for the bona fide offering of services. Indeed, the website which can be visited via the Domain Name is, in fact, the website which the Complainant created for the “thao salud infantil” program, albeit an older version which has not been updated, the learned Panel will see inter alia that the old version lacks two new categories mentioned in the website's toolbar: “ideas y juegos” and “newsletter” of the site that the Complainant has temporarily set up to permit access to its program, i.e., via the domain name ). Using the right holder's website cannot be considered to be a bona fide offering of services (emphasis added).
As has been explained herein above, the disputed Domain Name is a shortened version of the Complainant's unregistered trademark. The Respondent cannot, therefore, be known by the Domain Name as the unregistered trademark and therefore the Domain Name is associated with the Complainant, not with the Respondent. The Respondent's only association with the Complainant's unregistered trademark was the fact that it was – as a service provider – asked to look after the ICT matters of the Complainant.
The Respondent is not making a legitimate use of the Domain Name as the only purpose for using the Domain Name is to prevent the Complainant from using it.
The Complainant refers to Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094. In that case, with facts which are comparable to the facts in the case at hand, the respondent was also held not to have any rights or legitimate interests. In that case, the complainant's majority shareholder asked the respondent, another shareholder and also an employee of the complainant, to register the disputed domain name in the name of the complainant. The disputed domain name was confusingly similar to a trademark in which only the complainant had rights. The respondent registered the domain name but, without the complainant's knowledge or permission, did so under the respondent's own name, rather than under the complainant's name. Just as in the case at hand, the respondent had misled the complainant in registering the disputed domain name in his own name rather than in name of the complainant who was also the trademark holder.
In its Response in Newton 21 Europe, supra, the respondent argued that it had a right in the domain name as the Complainant allegedly had not yet paid the services which had been provided.
The Complainant strongly rejects the Respondent's allegations in this regard. Moreover, even if the Respondent's allegations were to be true, the second UDRP element is still met. Indeed, the second UDRP element states that one must have a right or legitimate interest in a domain name (again, emphasis added). The Respondent, on the contrary, claims to have ‘a right' vis-à-vis the Complainant, not in the disputed Domain Name. An unpaid invoice does not allow one to register a domain name which is clearly the property of the defaulter. This is even more so now that the Respondent was only able to register the disputed Domain Name after having misled the Complainant into thinking that it would still be the holder of the Domain Name. In Newton 21 Europe, supra, the learned panel stated the following in that regard:
“This does not mean that the Respondent may not have a legitimate contractual dispute – as it claims – with the Complainant. However, such a dispute is not within the scope of the Policy to determine.”
The Complainant informs the Panel that, despite its allegations, the Respondent has not claimed any payment with regard to its alleged unpaid services. A3. The domain name was registered and is being used in bad faith
Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraphs 3(b)(ix)(3))
The Complainant contends that the disputed Domain Name has been acquired and used in bad faith by the Respondent.
Reference is hereby made to relevant aspects of the Policy, para. 4(b), including:
- The Domain Name was clearly acquired in order to prevent Complainant as owner of the trademark from further reflecting the mark in the corresponding Domain Name. Respondent has engaged in a pattern of such malicious conduct.
- The Domain Name was clearly acquired primarily for the purpose of disrupting the business of Complainant.
When the Respondent registered the disputed Domain Name in its own name, it clearly was not doing so at the request of the Complainant. Much to the contrary, the Respondent's actions towards the Complainant were clearly misleading. The Respondent registered the Domain Name and thereby became its holder, whereas it had assured the Complainant that the Complainant would be the holder. Moreover, the disputed Domain Name is not the only domain name which was misleadingly acquired by the Respondent. As has been explained herein above, the Respondent has already been ordered to transfer the domain name which it was ruled to have registered and used in bad faith.
The Complainant again refers to Champion Innovations, supra, a case which, as the Complainant explained, has a comparable situation. The respondent in that case was also found to have registered and used the domain name in bad faith because it had registered the disputed domain name in its own name whereas he was in fact supposed to register the disputed domain name in the name of the complainant.
The fact that the disputed Domain Name was acquired primarily to disrupt the business of the Complainant is evident when one considers that the Respondent does not update the “thao salud infantil” program's website. It would clearly be impossible for the Respondent to update the website as the content does not belong at all to the business of the Respondent. Instead, the content is owned by the Complainant as is clearly following from the website accessible via “”, which, in contrast, is regularly updated.
The learned panel in Newton 21 Europe, supra, summarized the situation which had arisen between the Complainant and the Respondent as follows:
“That is, the evidence demonstrates that, having obtained the registration of the disputed domain name, without authorization of the Complainant, the Respondent then sought to pursue its broader dispute. The registration and use of the disputed domain name in these circumstances does not demonstrate a good faith registration and use by the Respondent, for the purpose of the Policy. This is so, even if the Respondent has a legitimate dispute with the Complainant – which is not a matter on which the Panel can or should make a finding for the purpose of this dispute under the Policy.” B. Respondent
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant's contentions or take any part in them. 6. Discussion and Findings
To qualify for cancellation or transfer of the disputed Domain Name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(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 Domain Name; and
(iii) The disputed Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the respondent failed to file a response, the panel's decisions were based upon the complainant's assertions and evidence, as well as inferences drawn from the respondent's failure to reply. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936.
Nevertheless, the panel must not decide in the complainant's favor solely based on the respondent's default. See Cortefiel S.A. v. Miguel García Quintas,WIPO Case No. D2000-0140. The panel must decide whether the complainant has introduced elements of proof, which allow the panel to conclude that its allegations are true. A. Identical or Confusingly Similar
In the present case, the Complainant claims rights in an unregistered trademark, namely, THAO SALUD INFANTIL, which it further claims is associated with its commercial activities and also identifies these activities, namely, its “thao salud infantil” program. This program is aimed at preventing obesity in children under the age of 12 and is known in Spain under the name “thao salud infantil”. The “thao salud infantil” program is widely known and the trademark has been extensively used for more than one year, inter alia, on the program's website. According to the Complainant, more than 12,000 children have already participated in the program and the Panel agrees with the Complainant's contention that this clearly demonstrates the extent to which the program has been used and also shows that the name of the program and the unregistered trademark THAO SALUD INFANTIL has acquired a ‘secondary meaning'. In other words, this trademark is clearly associated with the Complainant and its program and activities.
The Panel agrees with the Complainant that an unregistered trademark is sufficient to satisfy the requirements of paragraph 4(a)(i) of the Policy, which merely refers to trademark rights rather than rights in a registered trademark, provided, as has been held in numerous previous UDRP cases, that the mark has become a distinctive identifier associated with the complainant or its goods and services. See, for example, Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322. The Panel is satisfied, on the evidence adduced by the Complainant, that such an association or so-called ‘secondary meaning' exists in the present case.
The Panel also agrees with the Complainant, for the reasons stated by the Complainant in paragraph 5. A1. above, that the dominant elements of the Complainant's unregistered trademark THAO SALUD INFANTIL, namely “thao salud”, are incorporated in the disputed Domain Name and, therefore, the disputed Domain Name is confusingly similar to the Complainant's trademark in which, it has demonstrated to the satisfaction of the Panel, that it has established rights.
In view of all this, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in the present case. B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed Domain Name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
– whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent's use of, or 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;
– whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;
– whether the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed Domain Name. On the contrary, as the record in the case file shows and as stated above, the Respondent was asked by the Complainant to register the disputed Domain Name on behalf of the Complainant. Apart from that, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint. See 1-800-F, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc. v. G Design,WIPO Case No. D2006-0977.
Neither is there any evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant's trademark THAO SALUD INFANTIL. Moreover, the adoption by the Respondent of a domain name similar to the Complainant's well-known trademark THAO SALUD INFANTIL is likely to lead to confusion on the part of Internet users and consumers seeking information about the Complainant and its activities and services (see further on this point below) and the consequential tarnishing of the Complainant's trademark THAO SALUD INFANTIL and also the valuable goodwill that the Complainant has established in this trademark through its commercial use of the same, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed Domain Name in connection with a bona fide offering of goods or services. Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed Domain Name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed Domain Name.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed Domain Name. C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which may constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris,WIPO Case No. D2003-0366.
The Panel finds that paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent's] web site or location or of a product or service on its web site or location.”
Based on the record in the case file, the Panel agrees with the Complainant's contention that the Respondent, by registering the disputed Domain Name, is trading on the Complainant's valuable goodwill established in its trademark THAO SALUD INFANTIL.
Again, by registering and using the disputed Domain Name incorporating the Complainant's trademark THAO SALUD INFANTIL, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent's activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file, is, in fact, the situation. Such misleading consequences, in the view of the Panel, constitute bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet,WIPO Case No. D2004-0649.
Furthermore, the fact that the disputed Domain Name includes the dominant elements of the trademark THAO SALUD INFANTIL, as held and used by the Complainant prior to the date the Respondent registered the disputed Domain Name, is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman,WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028. For a domain name would typically be used in good faith by the owner of the respective right or by a licensee, or at least by a party who has established a legitimate interest, none of which is the situation in the present case.
In addition, the particular circumstances in which the Respondent registered and is using the disputed Domain Name, as stated above by the Complainant, also indicate bad faith on the part of the Respondent. See the panel's findings on this point in Champion Innovations, supra. And, as a consequence thereof, the Panel in the present case also agrees with the Complainant's contention, as stated and argued above, that, because the Respondent is not able to update the “thao salud infantil” program's website, because its contents and the commercial activities that it reflects do not belong to the Respondent but only to the Complainant, in effect, the registration and use of the disputed Domain Name is disrupting the business of the Complainant. This must have been intended by the Respondent, based on the well-known legal presumption that a person is taken to have intended the natural consequences of his/its own acts, and such a situation is also evidence of bad faith on the part of the Respondent under paragraph 4(b)(iii) of the Policy.
Also, there is a previous history between the Complainant and the Respondent in which the Respondent has been ordered in UDRP proceedings to transfer to the Complainant a disputed domain name, as mentioned above by the Complainant. See Newton 21 Europe, supra. This, in the view of the Panel, is a further indication supporting a finding of bad faith on the part of the Respondent in the present case.
Finally, the failure of the Respondent to answer the Complainant's e-mail of October 3, 2007, requesting the transfer of the disputed Domain Name, in the context of the Respondent's e-mail of February 14, 2007, in which the Respondent indicated that it was ready to proceed with the transfer of the disputed Domain Name to the Complainant, as well the Respondent's failure to answer the Complaint or take any part in the present proceedings are, again in the view of the Panel, further indications of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787.
Therefore, taking all these particular circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith. 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 be transferred to the Complainant.
Ian Blackshaw
Sole Panelist
Dated: January 21, 2009
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