WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Repsol Butano, SA v. NURINET Case No. D2009-1636 1. The Parties
The Complainant is Repsol Butano, SA of Madrid, Spain, internally represented.
The Respondent is NURINET of Gyeongju-si, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with N. Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2009. On December 4 and 8, 2009, the Center transmitted a request for registrar verification in connection with the disputed domain name to N. Inc. by e-mail. On December 9, 2009, N. Inc. transmitted its verification response, confirming that the Respondent is listed as the current registrant and providing the contact details to the Center by e-mail. On December 9, 2009, the Complainant sent an e-mail to the Center explaining the difficulties in sending the confirmation copy of the Complaint to the Respondent because the physical address recorded in the WhoIs database was incomplete.
On December 9, 2009, the Center issued a Language of Proceeding notification, inviting comment from the parties. On December 11, 2009, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not respond to the Center's Language of Proceeding notification. On December 15, 2009, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that in accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of the proceeding.
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 proceeding commenced on December 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 5, 2010.
The Center appointed Young Kim as the sole panelist in this matter on January 14, 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 subsidiary of Repsol YPF, S.A. which is one of the major companies in LPG (Liquified Petroleum Gas) retail distribution worldwide including Spain, South America, Europe, Asia and Africa. In Spain, the Complainant distributes bottle, bulk and piped LPG, via collective distribution networks.
The Complainant is the owner of trademark registrations for SERVICIO OFICIAL REPSOL BUTANO + device in the European Union and Spain. The EU trademark was filed on April 10, 2000 and registered in 2001. The Spanish trademark was filed on May 14, 2009 and registered on October 1, 2009. The Complainant also owns trademark registrations for REPSOL BUTANO + device in various classifications in Spain. The Spanish trademarks were filed from September 29, 1987 and registered from November 1988. There is a trademark registration in Republic of Korea (“Korea”) for REPSOL + device which was filed on October 21, 1999 and registered on November 14, 2000. The Korean trademark registration is owned by REPSOL PETROLEO, S.A. of Paseo de la Castellana 278-280, Madrid, Spain. 5. Parties' Contentions A. Complainant
The Complainant asserts that the facts of the present case establish that each of the three elements set forth in paragraph 4(a) of the Policy are satisfied, namely: (1) the disputed domain name is identical to the trademark to which the Complainant has rights; (2) the Respondent has no rights or legitimate interests with respect to the domain name; and (3) the domain name was registered and is being used in bad faith.
The Complainant asserts that the Complainant's trademarks and the disputed domain name are absolutely identical. The Complaint further argues that the Respondent has simply transcribed the Complainant's trademark REPSOL BUTANO into the disputed domain name .
The Complainant asserts that it is a company totally owned by the group Repsol YPF, S.A. The Complainant also asserts that the group Repsol YPF, S.A. is known worldwide, and is specially known in Korea in light of the following facts:
(a) A complaint for the domain name was filed before the Center in 2001 against COMn.com with an address in Taegu, Korea (see Exhibit 8 to the Complaint).
(b) Honda motorcycles are widely sold out and well-known in Korea, and the REPSOL HONDA team participates in every race of the Motor Championship, including in People's Republic of China, Japan or Malaysia.
(c) There was a trademark application filed before the Korean Trademark Office by a Korean citizen. The Complainant filed oppositions against such application and the application has been refused by the Korean Trademark Office (see Exhibit 9 to the Complaint).
The Complainant asserts that it is not the first time the Complainant sought to defend its trademark rights against cybersquatters, but in all cases the well-known trademark rights of the Complainant have prevailed.
Moreover, the Complainant asserts that it has conducted a search in G under the name “Repsol Butano” and among the 100 results of the search, none of them matches the disputed domain name. More than 99% of the obtained results referred to the Complainant's marks and credit card (see Exhibit 6 to the Complaint).
Therefore, the Complainant asserts that it is a well-known company in Spain and abroad. The Complainant also asserts all of these arguments support the Respondent's bad faith use and registration of the disputed domain name.
The Complainant asserts that it has never authorized the Respondent to use the mark REPSOL BUTANO or any word which may include the term “repsol,” either by granting a license or franchising the mark to the Respondent. Thus, the Respondent does not hold any right over the mark and has no legitimate interest in the disputed domain name.
The Complainant contends that the Respondent has no right or legitimate interest in the disputed domain name. More specifically, the Respondent uses the disputed domain name for a parking web page with links related mostly to gas, under the trademark REPSOL BUTANO (see Exhibit 10 to the Complaint).
The Complainant asserts that use by the Respondent of the disputed domain name in connection with domain name parking services cannot be considered as a bona fide offering of goods and services. On the contrary, under the Evidence of Registration and Use in Bad Faith (paragraph 4(b) of the Policy), such use should be found to be in bad faith. Paragraph 4(b) in relevant part stipulates as follows:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your 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 your web site or location or of a product or service on your web site or location.
The Complainant asserts that the Respondent has no rights or legitimate interests with respect to the disputed domain name based on the following:
(i) There was no bona fide offering of goods or services before the notice of this dispute.
(ii) The Respondent has never been known by the trademark REPSOL or REPSOL BUTANO.
(iii) The Respondent is not making any noncommercial fair use of the disputed domain name as it is obtaining profit by the establishment of a webpage related to the activity of the Complainant with the intent to obtain profit by taking advantage of the reputation of the Complainant and trying to confuse Internet users (see Exhibit 7 and 10 to the Complaint).
(iv) The public sale offer for the disputed domain name was made by the Respondent in the website at the disputed domain name. The Respondent included a link under the legend of “The domain may be for sale by its owner!” which, when clicking, addresses the user to the domain name reseller “”, where it also contains the statement “ (REPSOLBUTANO) is for sale” (see Exhibit 10 and Exhibit 11 to the Complaint).
(v) The whole webpage at the disputed domain name is in Spanish, the language of the Complainant (see Exhibit 7 and 10 to the Complaint).
(vi) The Respondent intended to hide its identity in the WhoIs database. When registering the disputed domain name, the Respondent appears to use no legal entity or physical person, but instead a self-defined name “NURINET”.
The Complainant asserts that the presumed purpose of the Respondent in registering the disputed domain name is to resell it to the Complainant (or, perhaps, renting it). Thus, the disputed domain name should be considered as having been registered and used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Language of the Proceeding
The Complaint was filed in English. Pursuant to paragraph 11 of the Rules, in the absence of any agreement between the parties, or otherwise specified in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Panel notes that the language of the proceeding for this case would be Korean, being the language of the relevant registration agreement in the absence of any express agreement to the contrary by the parties.
Under the Rules, the Panel has the authority to determine the language of the proceeding. The Complainant has submitted a request that English be the language of the proceeding. The Respondent has posted the disputed domain name for sale through “” which is operated in English. Further, the Respondent did not submit any response either to the Complaint or to the Center's Language of Proceeding notification, raising no objection to the Complainant's request that English be the language of the proceeding.
The Panel has considered the particular circumstances of this case carefully as well as the discretion given to her by paragraph 11(a) of the Rules. The Panel hereby determines that English shall be the language of the administrative proceeding in this case. Merits
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark to which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of these three elements is discussed below. A. Identical or Confusingly Similar
The disputed domain name is . The Complainant has trademark registrations for REPSOL BUTANO + device and SERVICIO OFICIAL REPSOL BUTANO + device in Spain and Europe. The words “Repsol Butano” is part of a registered trademark, and therefore is distinct. Thus, the Panel finds that the disputed domain name is confusingly similar to the trademarks of the Complainant. B. Rights or Legitimate Interests
Even though the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests with respect to the disputed domain name, it is the consensus among UDRP panelists that in light of the difficulty of proving a negative, the Complainant, initially, only has to make a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy (see paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions). As a result, the burden of proof to show that the Respondent has rights or legitimate interests with respect to the disputed domain name will then shift to the Respondent.
The Complainant asserts that it has never authorized the Respondent to use its trademarks or word which may include the term “repsol,” either by granting a license or franchising the mark to the Respondent. The Complainant also asserts that the Respondent has never been known by the name “Repsol Butano”.
The Panel notes that the Respondent uses the disputed domain name in connection with domain name parking services. The Respondent includes a link under the legend of “The domain may be for sale by its owner!” which, when links the user to the domain name reseller , where it also states “ (REPSOL BUTANO) is for sale.” This is not a bona fide offering of goods and services.
On the other hand, the Respondent did not submit any response to the Complaint. There was no explanation or assertion from the Respondent that the Respondent has rights or legitimate interests with respect to the disputed domain name.
Accordingly, the Panel finds that the Complainant has met its burden to prove that the Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Complainant is a subsidiary of Repsol YPF, S.A. which is recognized as a major energy company from evidences attached to the Complaint. According to the records, Repsol YPF, S.A. received public awards from respected national and international communications media. Further, Repsol YPF, S.A. was selected as the best performing oil company in the New York Stock Market in 2003. According to the search by the Complainant in G under the name “Repsol Butano”, more than 99% of the obtained results are references to the Complainant's marks. Therefore, it is considered that Repsol YPF, S.A. is a well-known company worldwide.
The Complainant is a wholly owned subsidiary of Repsol YPF, S.A. The Complainant owns the trademark registrations for REPSOL BUTANO + device in Spain and Europe since 1988. The Respondent registered the disputed domain name on October 20, 2009. It is also noted that the Respondent included the disputed domain name in a link under the legend of “The domain may be for sale by its owner!” which, when clicking, links the user to the domain name reseller “”, also contains the statement “ (REPSOLBUTANO) is for sale”.
Thus, the Complainant asserts that the Respondent registered and uses the disputed domain name in bad faith. The Respondent did not respond to the Complainant's assertion.
In view of the above, the Panel finds that the Complainant has met its burden to prove that the Respondent has registered and uses 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.
Young Kim
Sole Panelist
Dated: January 28, 2010
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