WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Pribucol S.A. v. Moniker Online Services LLC / F. Ciodo Case No. D2009-1601 1. The Parties
The Complainant is Pribucol S.A. of Madrid, Spain, represented by Alejandro Jaime Prieto Bua, Spain.
The Respondent is Moniker Online Services LLC / F. Ciodo of Asuncion, Paraguay. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2009. On November 26, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On December 3, 2009, Moniker Online Services, LLC 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 December 9, 2009, 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 December 15, 2009. 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 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 6, 2010.
The Center appointed Miguel B. O' Farrell as the sole panelist in this matter on January 22, 2010. 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 based company engaged in retail trading of household furnishing and construction articles.
The Complainant owns a Spanish trademark registration for CE COLCHONEXPRES, Reg. No. 2.553.169, granted on January 12, 2004.
The Complainant also holds the domain names , , , and .
The Respondent registered the disputed domain name on January 7, 2007. 5. Parties' Contentions A. Complainant
The Complainant contends the following:
That the Complainant is a Spanish based company engaged in retail trading of household furnishing and construction supplies.
Furthermore, the Complainant contends that it owns a Spanish trademark registration for CE COLCHONEXPRES, Reg. No. 2.553.169, granted on January 12, 2004, which is used in connection with its commercial activity, and that it also holds the domain names , , , and .
Moreover, the Complainant contends that the disputed domain name is confusingly similar to its trademark CE COLCHONEXPRES.
On the other hand, the Complainant contends that the Respondent does not have any rights or legitimate interests in connection with the disputed domain name as it does not provide a genuine offer of products or services than can be identified under the name “colchonexpress”.
In that connection, the Complainant contends that it has not licensed or otherwise permitted the Respondent to use its trademark nor to register or use any domain name incorporating it.
The Complainant also contends that the Respondent is not known under the name “colchonexpress”.
Regarding the Respondent's bad faith, the Complainant contends that the website “www.” to which the disputed domain name resolves has sponsored links that redirect users to other on line locations which offer competing services to those rendered by the Complainant, which can not be considered a noncommercial or fair use of the disputed domain name .
Moreover, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith taking advantage of the prestige of the Complainant's trademark CE COLCHONEXPRES.
The Complainant finally contends that by using the disputed domain name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website and other on-line locations, by creating a likelihood of confusion with the Complainant's trademark CE COLCHONEXPRES as to the source, sponsorship, affiliation, or endorsement.
For all the above-mentioned the Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
For the Complaint to succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, the Complainant must prove that:
(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.
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. A. Identical or Confusingly Similar
The Complainant has filed relevant evidence showing that it holds a Spanish registration for CE COLCHONEXPRES.
The Panel finds that “colchonexpres” is the most distinctive term in the Complainant's trademark. In fact, “CE” is the abbreviation for “colchon” and “expres”.
Despite the fact that in the disputed domain name the term “express” is written with double “s”, while in the Complainant's trademark is written with only one, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark CE COLCHONEXPRES. The absence of the initial letters “CE” and the last “s” in the disputed domain name is not sufficient to avoid the risk of confusion with the Complainant's mark.
In view of the foregoing, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and therefore, the Complainant has succeeded on this first element under the Policy. B. Rights or Legitimate Interests
According to paragraph 4(a)(ii), the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in its paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
Although the Policy states that the Complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent's lack of rights or legitimate interests in a domain name, the burden of submitting evidence to prove such rights or legitimate interests shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.
The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests and so the burden of proof has effectively been shifted to the Respondent, who did not reply to the Complainant's contentions and, therefore, has not made such showing.
Moreover, there is no evidence showing that the Respondent is commonly known as or identified by “colchonexpress”. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.
At the same time, and on the basis of the content of the website “www.” to which the disputed domain name resolves, the Complainant has proven to the Panel's satisfaction that the Respondent's website has sponsored links that redirect users to other online line locations which offer competitive services to those rendered by the Complainant. Such use can not be considered as legitimate or noncommercial in the terms of paragraph 4(c)iii of the Policy.
For these reasons, and in the absence of a plausible explanation from the Respondent in connection with its rights or legitimate interests, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith. The Policy in paragraph 4(b) sets out various circumstances which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
The Complainant has identified itself as a Spanish company engaged in retail trading of household furnishing and construction articles. Particularly, the Complainant sells mattresses and pillows. The Spanish translation for mattress is “colchón”.
Moreover, the Complainant has proved to the Panel's satisfaction that it owns a Spanish registration for CE COLCHONEXPRES, Reg. No. 2.553.169, granted on January 12, 2004, and that it holds the domain names , , , and .
In view of the foregoing, and in the absence of a rebuttal from the Respondent, the Panel finds that the Respondent was aware or must have been aware of the trademark CE COLCHONEXPRES before registering the disputed domain name , which evidences bad faith registration. This circumstance is reinforced by the fact that the Respondent's website has several pay-per-click links in connection with sale of mattresses.
Moreover, as stated by the Complainant and on the basis of the content of the website to which the disputed domain name resolves, and in the absence of a rebuttal by the Respondent, the Panel finds that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website and other on-line locations offering competitive services to those rendered by the Complainant, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.
For these reasons, the Panel finds that the Respondent both registered and uses the disputed domain name in bad faith, and that the Complainant has therefore satisfied the third requirement of (4)(a) 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, be transferred to the Complainant.
Miguel B. O'Farrell
Sole Panelist
Dated: February 3, 2010
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