The Complainant is Pas Eventos y Producciones, S.L. of Madrid, Spain, represented by Bercovitz-Carvajal, Spain.
The Respondent is Telecom Tech Corp. of Panama City, Panama, and PrivacyP, Domain Admin, of Moergestel, Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with Bargin Register Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2010. On July 9, 2010, the Center transmitted by email to Bargin Register Inc. a request for registrar verification in connection with the disputed domain name. On July 13, 2010, Bargin Register Inc. 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 July 22, 2010 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 July 27, 2010.
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 July 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2010.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on August 27, 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 company whose commercial activity is focused on the development, manufacturing, recording, edition and trade of musical and audiovisual contents.
The Complainant owns Spanish registrations for CANTAJUEGO, Reg. No. 2.601.185, granted on December 16, 2004; Reg. No. 2.809.927, granted on August 1, 2008; and No. 2.863.102, granted on July 14, 2009.
The disputed domain name was registered on May 1, 2007. 5. Parties’ Contentions A. Complainant
The Complainant contends the following:
That the Complainant is a Spanish company whose commercial activity is focused on the development, manufacturing, recording, edition and trade of musical and audiovisual contents and that its target is to carry on entertainment activities related with spare time and childhood, being one of its most famous creations the spectacle identified with the trademark CANTAJUEGO.
In that connection, the Complainant also contends that Mr. Pedro Zaidman created “Cantajuego” in 2004, which consists in a musical and choreographic work, a kind of educative and musical material especially adapted to young people and children.
Furthermore, the Complainant contends that the purpose of this innovating initiative is that every child between 0 and six years can develop their personal skills by combining both music and body movement. The goal of this project is to support the personal development of the child’s imagination, their memory, integrations feelings, self estimation and especially their musical and rhythmical sense.
The Complainant also contends that its trademark CANTAJUEGO is very well-known not only by the general public (especially children), but also in the professional sector to which the Complainant belongs.
In this regard, the Complainant contends that that disputed domain name was registered on May 1, 2007, long after the Complainant’s trademark was used in commerce, what would be conclusive of the fact that the Respondent should have been aware of the Complainant’s trademark CANTAJUEGO.
Moreover, the Complainant contends that while it may be argued that the term “CantaJuego” is a descriptive term, however, it has acquired a secondary meaning on the basis of its intensive use and promotion.
On the other hand, the Complainant contends that it owns Spanish registrations for CANTAJUEGO, Reg. No. 2.601.185, granted on December 16, 2004; Reg. No. 2.809.927, granted on August 1, 2008; and No. 2.863.102, granted on July 14, 2009.
In that regard, the Complainant contends that the disputed domain name is identical or confusingly similar to the trademark CANTAJUEGO in which the Complainant has rights, also observing that the disputed domain name incorporates the Complainant’s trademark CANTAJUEGO in its entirety with the minor addition of the letter “s”.
Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Moreover, the Complainant contends that there is no evidence that the Respondent has ever been known by “Cantajuegos” nor that the Respondent operates a business or any other organization under the disputed domain name.
The Complainant also contends that it has not licensed nor authorized the Respondent to use the Complainant’s trademark CANTAJUEGO.
Moreover, the Complainant contends that the domain name was registered and is being used in bad faith.
In that connection, the Complainant contends 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 location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
For all the above, the Complainant requests that the disputed domain name be transferred to it. 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 owns Spanish trademark registrations for CANTAJUEGO.
The disputed domain name incorporates the trademark CANTAJUEGO in its entirety, with the only difference of the letter “s” in “juegos”, which is the plural of said word.
The mere addition of the letter “s” in the disputed domain name does not 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 clear prima facie showing of a respondent's lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore 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 demonstrating rights or legitimate interests have effectively been shifted to the Respondent, who did not reply to the Complainant's contentions and, therefore, has not made such showing.
Furthermore, the Complainant has submitted relevant evidence showing that the Respondent has not made a bona fide offering of goods or services.
The Complainant has presented evidence that the website to which the disputed domain name resolves contains pay-per-click links that redirect Internet users to other online locations offering strongly related services to those offered by the Complainant.
In that connection, the printouts of said website show that it contains links under the names MUSICA, JUEGOS and BAJAR PELICULAS GRATIS, among others (whose English translation would be MUSIC, GAMES and TO FREELY DOWNLOAD MOVIES).
In the terms of the Policy, such use in the present circumstances does not appear to be a fair use of the disputed domain name and, therefore, the Panel finds that the Respondent is trying to misleadingly divert consumers to the website to which the disputed domain name resolves. Moreover, the Panel finds that the Respondent is attracting Internet users to its website and to the Complainant's competitors' websites, for commercial gain. Such use cannot be considered a bona fide use, or fair or noncommercial use.
Additionally, there is no evidence that the Respondent is commonly known as or identified by “cantajuegos” or that it has any right on it. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.
For these reasons, and in the absence of a plausible explanation from the Respondent, 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 whose commercial activity is focused on the development, manufacturing, recording, edition and trade of musical and audiovisual contents.
Moreover, the Complainant has proved to the Panel's satisfaction that it owns Spanish trademark registrations for CANTAJUEGO, first registered on December 16, 2004.
Furthermore, the Complainant has filed relevant evidence showing the importance and worldwide recognition of its trademark CANTAJUEGO before the Respondent registered the disputed domain name on May 1, 2007.
In that connection, the Complainant has filed press releases, music rankings in which CANTAJUEGO is at the top of them, merchandising catalogues, and different other documents showing significant sales of CANTAJUEGO products.
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 CANTAJUEGO before registering the disputed domain name , which evidences bad faith registration.
Moreover, as stated by the Complainant and on the basis of the printouts 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 or other on-line locations, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement.
The fact that upon visiting the website to which the disputed domain name resolves, some Internet users may find that the website is not sponsored nor endorsed by the Complainant, does not affect the above as at that time, Internet users would have already been diverted to the Respondent’s website.
For these reasons, the Panel finds that the Respondent both registered and is using the disputed domain name in bad faith and that the Complainant has therefore made out the third element of it case. 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: September 10, 2010
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