WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Turisme de Barcelona v. Mottram Family Trust Ltd. Case No. D2008-1745 1. The Parties
The Complainant is Turisme de Barcelona, Barcelona, Spain, represented by Herrero & Asociados, Spain.
The Respondent is Mottram Family Trust Ltd., Cork, Ireland. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2008. On November 12, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 12, 2008, 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 November 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 12, 2008.
The Center appointed Tony Willoughby as the sole panelist in this matter on December 29, 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
The Complainant is the Catalonian institution responsible for promoting tourism in the city of Barcelona.
Among its promotional activities is a project known as Shopping Line Barcelona. The “shopping line” in question is a district of Barcelona comprising 5 kilometres of shops. The Complainant promotes this district as a tourist attraction by way of inter alia its website connected to its domain name, , and press advertising and promotional literature.
The Complainant uses a logo in association with its promotion of Shopping Line Barcelona. The logo is circular, featuring a geometric shape in the centre and the words SHOPPING LINE BARCELONA in the outer ring. That logo is registered as a trade mark in Spain in the name of the Complainant for a variety of goods and services in classes 16, 25, 35, 38, 41 and 42. The registrations all date back to 2001.
The Domain Name was registered by the Respondent on September 27, 2007.
On June 6, 2008 the Complainant's representatives sent a letter to the Respondent drawing the Respondent's attention to the Complainant's rights and seeking transfer of the Domain Name. This letter was re-sent by email on June 12, 2008.
On July 3, 2008 the Respondent replied by email saying that it is a marketing and tourism company based in Ireland, contending that it registered the Domain Name “to encourage tourism to the city of Barcelona” and stating that it had similar domain names registered for most major cities around the world. The Respondent objected to the tone of the Complainant's representatives' letter and asked for a sight of the Complainant's trade mark registration certificates. The Respondent claims also to be the owner of the domain name, , but that domain name does not form part of this Complaint.
The Domain Name is not currently connected to an active website. However, at the date of the Complaint, the Domain Name was connected to a website promoting Barcelona as a tourist destination and making prominent use of the Complainant's logo. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant's BARCELONA SHOPPING LINE logo and registered trade mark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name comprises the words, “Shopping Line Barcelona”, and the generic domain suffix. The Complainant's registered trade mark is a device mark, the most prominent element of which are those same words. Indeed, the Spanish trade mark registry identifies the Complainant's trade mark registrations (Nos. 2,279,820; 2,315,620; 2,315,621; 2,315,622; 2,315,623) by reference to the words, “Shopping Line Barcelona”.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It points out that the Respondent is not known by the Domain Name and confirms that it has granted the Respondent no permission to use the name, “Shopping Line Barcelona”. The Complainant produces evidence to demonstrate that the Respondent has been using the Domain Name to connect to a Barcelona tourism site, which features the Complainant's logo. The Complainant contends that the Respondent's site copies many elements of the Complainant's website and is dressed up to look like the Complainant's official site.
The Complainant contends that the Respondent's site is a commercial site, which in light of the Complainant's contentions cannot be regarded as a fair use of the Domain Name.
The Panel has not been able to verify the Complainant's contentions by visiting the site, because the Domain Name is no longer connected to an active website. However, from the material exhibited to the Complaint, the Panel is satisfied that the Complainant has made out a prima facie case under this head and that, accordingly, the Respondent has a case to answer.
The Respondent has not responded to the Complainant's contentions. In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. In so finding the Panel has taken into account the Respondent's response to the Complainant's representatives' email of June 12, 2008 (see section 4 above) in which the Respondent claims rights in respect of the Domain Name, but that email message is unparticularised and features no documentary support. D. Registered and Used in Bad Faith
The Complainant contends that, given the nature of the Domain Name, visitors to the Respondent's website (when it was active) will have believed that they were visiting the Complainant's official site and that this belief will have been strengthened by the contents of the site itself, featuring as it did many of the elements of the Complainant's site, including inter alia the Complainant's logo and some of the Complainant's photographs. The site also featured references to a “shoppinglinebarcelona” credit card and the Complainant is concerned that visitors will have been deceived into believing that that card had something to do with the Complainant.
The Complainant contends that the circumstances are such that the Respondent was clearly well aware of the Complainant's “Shopping Line Barcelona” project when it registered the Domain Name and that the Respondent's objective from the outset was to use the Domain Name for commercial gain, deceiving Internet users in the manner contemplated by paragraph 4(b)(iv) of the Policy.
The Panel agrees with the Complainant that that is the most likely explanation for the Respondent's choice of domain name and finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The fact that the Respondent is no longer making active use of the Domain Name does not save the Respondent. The uncontroverted evidence of the Complainant is that the Domain Name was in use in the manner described as at the date of the Complaint. 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.
Tony Willoughby
Sole Panelist
Dated: January 1, 2009
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