WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Institut Gestalt, S.L. v. Joan Cintero S.L. Case No. D2008-1842 1. The Parties
The Complainant is Institut Gestalt, S.L., of Barcelona, Spain, represented by Josep Carbonell Callicó, Spain.
The Respondent is Joan Cintero S.L., of Barcelona, Spain, appearing pro se. 2. The Domain Names and Registrar
The disputed domain names and are registered with GKG.NET, INC (formerly GK Group LLC). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2008. On December 1, 2008, the Center transmitted by email to GKG.NET, INC (formerly GK Group LLC) a request for registrar verification in connection with the disputed domain names. On December 1, 2008, GKG.NET, INC (formerly GK Group LLC) 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 December 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2009. The Response was filed with the Center on December 18, 2008 via several email comunications (December 16, 2008 and December 18, 2008) purporting to be together the complete Response.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on January 6, 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 is a Spanish company located in Barcelona and founded in 1997; although since 1983, it has been offering professional services.
From the evidence submitted by the Complainant, as annexes to the Complaint, the Complainant is the proprietor of the following trademarks:
Spanish Trademark No. 2.709.012 IG INSTITUT GESTALT.COM, filed on
May 3, 2006, and granted on October 3, 2006.
Spanish Trademark No. 2.791.334 INSTITUT GESTALT-COACHING
TRANSFORMACIONAL filed on September 25, 2007, and granted on June 30, 2008.
The Complainant registered the domain name on November 17, 1997.
The Respondent became the registrant of the disputed domain name on July 25, 2005 and registrant of the disputed domain name on February 12, 2007. 5. Procedural aspects Form of the Response
The Response submitted by the Respondent is alleged by the Complainant to be formally deficient. The Response indeed does not fulfill the requirements established in paragraph 5 of the Rules. The Panel further notes that the Rules do not contain a mechanism (comparable to that for filed complaints) which provides for the issuing of response deficiency notifications. Accordingly, the timely submitted Response has been included in the case file or record.
The decision as to whether these deficiencies shall lead to the Panel's disregard of the Response is left to the Panel's sole discretion. The Panel considers that these deficiencies are of a purely formal character and are not material to the substantive issues to be resolved in these proceedings.
Therefore, the Panel has admitted the Response, as filed. Complainant's Request for Further Submissions.
The normal practice under these proceedings is that the complainant is allowed to submit a complaint, and the respondent is allowed to submit a response. Although the Response in this case was filed in several emails, this should not alter the main principle of one pleading each.
In the Panel's view, no points arise from any of the emails of the Respondent that comprise the Response which persuade the Panel to elicit or admit further filings from either Party. In particular, there is nothing to suggest that the result the Panel has reached would be altered if the Parties were allowed an opportunity to file a further round of submissions.
The Panel will therefore proceed to make a decision based on the Complaint and the Response, as filed. 6. Parties' Contentions A. Complainant
Institut Gestalt, S.L. is a leading health and spiritual center. Its main activity is the development and implementation of different spiritual and physical therapies, in areas such as psychotherapy, communication, human relationships and personal growth.
Institut Gestalt S.L. started its professional activity in 1983, under the trade name “Institut Gestalt” and is the owner of the above-mentioned trademarks.
The disputed domain names and owned by the Respondent are almost identical to the trademarks and domain name owned by the Complainant. This strong similarity leads the Complainant to conclude that the disputed domain names are likely to mislead Internet users, who will no longer be able to differentiate, at first sight, which domain name is making reference to the services provided by which company.
The Respondent lacks the rights over the distinctive sign “Institut Gestalt” and is not commonly known as “Institut Gestalt”.
The Complainant alleges that Respondent's purpose to register the disputed domain names was to attract Internet consumers to his web site as a competitor of the Complainant. In fact, the Complainant notes that the Respondent is a competitor, and the Respondent's founder and representative was aware of the activities developed by “Institut Gestalt” after having taken part in several courses managed by the Complainant. B. Respondent
The Respondent is the owner of the following registered trademarks GESTALT, PERSONAS Y EMPRESAS and GESTALT BARCELONA. These trademarks, says the Respondent, are different from “Institut Gestalt” (the trade name of the Complainant) and there is no intention to cause confusion among consumers.
According to the Respondent, the use of the words “institut” or “institute”, adding the “gestalt” term, in the disputed domain names is a commercial strategy to be linked to the Gestalt theory founder. Therefore, no confusion may arise as both companies are well-identified on the Internet.
The Respondent declares to be in a position to transfer the disputed domain names to the Complainant as soon they reach a solution. 7. Discussion and Findings
In order for a panel to decide to grant the remedy of transfer of a domain name to a complainant under the Policy, it is necessary that the complainant must prove, as required by Paragraph 4(a) of the Policy, that:
(i) the domain name is identical or confusingly similar to a trademark or service mark to 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. A. Identical or Confusingly Similar
The relevant parts of the disputed domain names incorporate the dominant aspects of Complainant's trademarks IG INSTITUT GESTALT.COM and INSTITUT GESTALT-COACHING TRANSFORMACIONAL, granted in October 3, 2006 and June 30, 2007, as well as Complainant's trade name of “Institut Gestalt.”
Previous panels have decided that essential or virtual identity is sufficient to meet the first element La Caixa D'Estalvis I Pensions de Barcelona v. Molina Georgesen, WIPO Case No. D2006-1615. Accordingly, in the present case, the omission of the letters “IG” and the addition of the letter “e” or a dash (-) between the two words that compose the disputed domain names are not sufficient to distinguish the disputed domain names from the Complainant's trademarks.
Therefore, there is confusing similarity between the disputed domain names and the Complainant's trademark.
The fact that the disputed domain name was registered on July 25, 2005, prior to the Complainant's registration of its trademark rights does not affect the analysis under the first element. As stated in Digital Vision, Ltd v. Advanced Chemill Systems,WIPO Case No. D2001-0827 and other cases, paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the domain name. The fact that a disputed domain name predates the complainant's trademark registration is generally relevant, for example, in the assessment of bad faith pursuant to paragraph 4(a)(iii) of the Policy, which is considered below.
The Panel therefore concludes that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
There are several circumstances in the proceeding, as explained below, indicating that the Complainant has demonstrated a prima facie case of the Respondent's lack of rights or legitimate interests in the disputed domain names. The evidentiary burden therefore shifts to Respondent to show persuasive evidence that it does have rights or legitimate interests in the disputed domain names.
The Complainant has not authorized or consented to the Respondent's use of the disputed domain names. The Complainant states, without opposition, that both Parties are located in Barcelona and both Parties engage in the same business. Indeed the Complainant submits evidence that Respondent's founder and representative, Mr. Cintero, had registered himself in several training courses offered by the Complainant during 2004. And nothing reflects that the Respondent has ever been commonly known by the disputed domain names.
In the Panel's opinion, the Respondent has demonstrated that the words, each on its own, “gestalt” and “institut” or “institute”, as the case may be, are in common usage. This however does not automatically show that the use of the words as part of a domain name corresponds to a bona fide offering of goods and services on a balance of the evidence. The Respondent does not deny that he was familiar with the Complainant, known in Barcelona and trading as “Institut Gestalt”, he registered the disputed domain names. There other common terms which could have been used in domain names, such as, “academy”, “school”, “center”, which in combination with “gestalt”, would not have called to mind the Complainant, “Institut Gestalt”. Or the Respondent could have simply registered domain names directly incorporating its trademarks. The fact that the Respondent has obtained trademark registrations that contain the word “gestalt” do not of themselves suffice in the circumstances to establish the Respondent's rights or legitimate interests in these particular disputed domain names. In a case such as the present, the outcome often boils down to a question of whether the Panel accepts that the Respondent registered the domain names with their descriptive or potentially generic value in mind, or whether the Respondent did so intending to target the Complainant.
On a balance of the probabilities, in this case, the Panel accepts the Complainant's assertions in respect of the real goal of the Respondent: to attract Internet consumers to his web site as a competitor of the Complainant.
Moreover, in this case the Complainant succeeds not only in the term of the Policy but according to Spanish Law. Indeed, it is legitimate under paragraph 15 (a) of the Rules that the Panel should look at principles of law deemed applicable. This Panel considers Spanish law applicable since both Parties are registered and located in Spain La Caixa D'Estalvis I Pensions de Barcelona v. Molina Georgesen, WIPO Case No. D2006-1615. The Panel finds that as far as article 34 of the Spanish Trademark Law is applicable, the Complainant has shown prior and better rights to hold the disputed domain names.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain names and that the requirement of paragraph 4 (a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the disputed domain names in bad faith on the basis that, the Respondent must have been aware of the Complainant's brand prior to registration of the disputed domain names and, that the Respondent is seeking to disrupt the Complainant's business by causing confusion between the disputed domain names and the Complainant's trademarks and trade name.
From the evidence submitted it is apparent that the Respondent's founder and representative, Mr. Cintero, had registered himself in several training courses offered by the Complainant during 2004. It is clear that the Respondent was well aware of the Complainant's existence when he registered the disputed domain names in 2005 and 2007, respectively. The Respondent has not denied being aware of the Complainant's trade name or trademarks when registering the disputed domain names (and indeed alludes to the training referred to by the Complainant when the Respondent, in one of its email responses, raises the issue of “a training made at their [the Complainant's] school without certificate and fees paid without invoice that is linked with this issue”)1. Further, that the Respondent is a competitor of the Complainant and is located in the same city further affirms the Respondent's knowledge of the Complainant trading as “Institut Gestalt”, and its various trademarks and, presumably, accompanying and coinciding rights therein.
Therefore, the Respondent was aware of the existence and activities run by the Complainant at the time of the registration of the disputed domain names. In the present case, the fact that the Complainant did not have its trademarks registered at the time of the registration of does not prevent the Complainant from succeeding on this element in respect to the bad faith registration of the disputed domain names, due to the likely knowledge of the Respondent of the Complainant's use of unregistered trademarks and a trade name (all containing the words “Institut Gestalt”) at the time of the disputed domain name's registrations. Indeed, the Panel finds it likely that the aim of the registration was to take advantage of the confusion between the disputed domain names and the Complainant trademarks and trade name, so bad faith can be found.
In respect to the use of the disputed domain names, as apparent in the record before it, the Panel finds bad faith use, according to paragraphs 4(b)(iii) and (iv) of the Policy: the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor and in an attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's trademarks and, in this case, trade name.
Upon the above mentioned, the Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration and use. 8. 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 names and be transferred to the Complainant.
Manuel Moreno-Torres
Sole Panelist
Dated: January 26, 2009
1 The Panel does not exclude the possibility that the disputed domain names may have been registered by the Respondent with such issues at least partly in mind.
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