The Complainants are Caja de Ahorros del Mediterráneo and Mediterranean CAM International Homes, S.L. (Grupo CAM) of Alicante, Spain, represented by Elzaburu, Spain.
The Respondent is Mr. Steve Long of Essex, United Kingdom of Great Britain and Northern Ireland, represented by Peter Adediran, United Kingdom. 2. The Domain Name and Registrar
The disputed 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 February 3, 2011. On February 4, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 4, 2011, 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 February 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2011. The Respondent sent several email communications to the Center and the formal Response was filed with the Center on March 7, 2011.
The Center appointed Richard Hill as the sole panelist in this matter on March 17, 2011. 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 Complainants are part of a well-known Spanish financial services group active in the real estate market.
The group to which the Complainants belong markets its activities under a number of trade names, many containing the acronym “CAM”. The Complainants own various trademarks containing the acronym CAM. The group is well-known in Spain under that acronym.
The Respondent has been active in the Spanish real estate market for many years and is very familiar with the Complainants, their business activities, and their marketing materials.
The Complainants and the Respondent entered into a business agreement. That agreement was unilaterally terminated by the Respondent.
According to the Complainants, the Respondent registered the disputed domain name without informing the Complainants and without the consent of the Complainants.1 Subsequently, the Respondent stated that he saw no problem in transferring the disputed domain name as proof of good faith and that he would not make use of the acronym “CAM” without prior authorization.
When he terminated the business agreement between the parties, the Respondent refused to recognize any rights that the Complainants might hold in the disputed domain name and offered to transfer it to the Complainants for the sum of EUR 40,000, which sum would be compensation for “the money lost in terms of time and resources attempting to sell your product with relatively no support or direction”. 5. Parties’ Contentions A. Complainant
The Complainants state that they are companies of Grupo CAM, a major Spanish banking group, which has been active for many years. Both companies are well-known in Spain, in particular in the real estate financing market. The parent group has over one thousand branches in Spain and it is one of the top five financial entities in Spain.
According to the Complainants, Grupo CAM has sponsored various social activities which use the acronym CAM (for Caja de Ahorros del Mediterráneo – Mediterranean Development Bank) to indicate their affiliation with the group, and that same acronym CAM appears in the trade names of the group’s various companies.
The Complainants state that they own various trademarks of the form “CAM word mark”, for example CAM CAJA DE AHORROS DEL MEDITERRÁNEO or CAM INTERNACIONAL. In the figurative versions of those marks, the letters CAM are used as a distinctive logo. The trademarks are very well-known in Spain. The Complainants reference several UDRP decisions which recognize their trademarks.
The Complainants allege that the Respondent has been active in the Spanish real estate market since 2000 and that he is well aware of the Complainants’ activities, trade names, and trademarks.
The Complainants state that they entered into a business agreement with the Respondent. The disputed domain name was registered by the Respondent in December 2008, shortly before the business agreement between the parties was finalized, and the domain name was used to point to one of the Respondent’s web sites. The agreement between the parties provided that the Respondent would “cease to use the [Complainants’] distinctive brand names and logos … in whatever form upon the termination of this present agreement” and that the Respondent “expressly accepts that [one of the Complainants] is the owner of all rights relating to trademarks, distinctive marks, images and professional marketing reputation which derive from and are associated with the trading name, the brand and the corporate image of the business. The Respondent shall not use these distinctive marks without the express authorization of [one of the Complainants]”.
The Complainants allege that the Respondent never informed them of the registration of the disputed domain name and that they had not consented to that registration. The Complainants first learned of the registration of the disputed domain name in May 2009. They notified the Respondent, who replied stating that he saw no problem is transferring it as proof of good faith and that he would not make use of the Complainants’ logos without prior authorization.
But, say the Complainants, in October 2009, the Respondent unilaterally terminated the agreement between the parties, refused to recognize any rights that the Complainants might hold in the disputed domain name and offered to transfer it to the Complainants for the sum of EUR 40,000. Various requests by the Complainants for the transfer of the disputed domain name were refused by the Respondent.
The Complainants allege that they own trademark rights for the acronym CAM and that the disputed domain name is confusingly similar to that mark because it consists of the mark together with the descriptive terms “bank” and “properties”.
Further, according to the Complainants, the Respondent was not authorized or licensed to use the Complainants’ marks and he is not commonly known under the mark CAM. The Respondent clearly was aware of the Complainants’ well-known marks when he registered the disputed domain name. B. Respondent
The Respondent alleges that he registered the disputed domain name with the full knowledge and consent of one of the Complainants, as a trading vehicle to market the Complainants’ products (in particular real estate properties) in the United Kingdom, in accordance with the business agreement between the parties. In particular, in September 2009, the Complainant wrote to the Respondent indicating a desire to reduce activity because certain objectives had not been met and stating “we feel we can no longer provide you with permission to use the … and CAM logos in your publicity … . It would also be necessary to remove the [disputed domain name] since this could be misleading for your clients and cause confusion as to the source of your properties.”
The Respondent states that he is a well-known and reputable real estate agent. It was the intention of the parties that the Respondent would expand their joint commercial activity through the Respondent’s web site using the disputed domain name as the address.
The Respondent states that he invested a substantial amount of labor and expense in promotions and creating awareness of the disputed domain name, which generates a substantial amount of traffic. The total cost was in excess of GBP 50,000. During the period in which the parties were working together, the Respondent built a dedicated web site at the disputed domain name in compliance with the Complainants’ requests to pre-qualify clients and forward them to the Complainants’ own platform for assistance and attendance. That dedicated web site was live from January to October 2009, and the Complainants were aware of it already in January 2009.
The Respondent accepts there were throughout this time period various issues relating to misuse of the Complainants’ logo by sub-agent and media partners associated with the Respondent. The offer of transferring the disputed domain name was not first made in May 2009: that offer had been made by the Respondent many times in various business development discussions with the Complainants. The first discussion took place prior to registration of the domain name. Further discussions were had prior to paying for marketing in March 2009 for a major trade show. The May 2009 offer to transfer the disputed domain name was meant to form new contracts which would allow the bank to own the domain name with the sales activity transferring to the Respondent which would have increased sales and allowed the Respondent an element of control not possible in the existing partnership. The contract in place was one-sided in terms of procedure. The fact that 635 clients needed attending to and enquiries on the platform at the disputed domain name had surpassed 7000 or more potential clients the aim was to make the Complainants realize that they simply could not honor their obligations under the agreement between the parties.
According to the Respondent, the dedicated web site was taken down by the Respondent when it became clear that the Complainants would not honor commissions on sales, or contribute at all to the total cost of the marketing borne by the Respondent. After cancellation in October 2009 of the agreement between the parties, and to avoid confusion, the disputed domain name was redirected to the Respondent’s main website. This action was taken primarily to allow any of the thousands of historic viewers to the domain name as well as collaborative partners, news reporters etc. to be attended to and correctly advised on the reasons for removal of site.
According to the Respondent, after 9 months of investing time and resources the Complainants failed to perform their obligations under the agreement, in particular payment of commissions. No sales commission was offered or received by the Respondent in relation to the 635 plus clients duly received and passed to the Complainants for onward attendance. The Respondent estimates that commissions in excess of GBP 250,000 are due to him. Consequently, he terminated the business agreement between the parties and is considering legal action against the Complainants.
The Respondent states that he never received various letters from the Complainants containing requests to transfer the disputed domain name, because they were deliberately sent to an incorrect address.
The Respondent alleges that the disputed domain name is not identical or confusingly similar to any of the Complainants’ marks.
Further, he states that he has rights and legitimate interests in the disputed domain name because he registered it in the context of the agreement between the parties and marketed the domain name, which now generates considerable traffic.
According to the Respondent, the facts show that his registration and use of the disputed domain name are not in bad faith. Further, this is not a dispute of cybersquatting. It is a commercial dispute where two parties engaged in commercial activity which was unsuccessful. Intellectual property issues relating to the commercial activity should not be dealt with in the present proceedings.
The Respondent requests the Panel to consider a finding of reverse domain name hijacking.
Further, says the Respondent, if the Complainants are successful in this attempt to take the disputed domain name for free they (the Complainants) will merely use it directly and will probably continue to sell to the 635 clients who are already registered on the platform. Potential sales if only 100 buyers are completed will gross over EUR 15,000,000 for the bank at an average sale price of EUR 150,000, commission if paid at 7% which is the going rate. The commission would be in this event EUR 1,050,000 for example. Indeed the Complainants are now working with a major United Kingdom real estate group and no doubt wish to use the disputed domain name for that new partnership. 6. Discussion and Findings
As a preliminary matter, the Panel must determine whether the present case properly falls within the scope of the UDRP or whether it is a business dispute best handled by the competent national courts.
In Courtney Love v. Brooke Barnett, NAF Claim. No. 944826, the panel stated:
“When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.”
The panel in Luvilon Industries NV v. Top Serve Tennis Pty Ltd., WIPO Case No. DAU2005-0004 concurred with this reasoning:
“[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes. .. The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.”
The Panel finds that, in the present case, the only dispute between the parties with respect to the facts is whether or not the Complainants authorized the Respondent to register and to use the disputed domain name. And the Panel finds that the evidence provided by the parties allows it to establish the facts regarding that matter with sufficient certainty to justify deciding this case under the UDRP. While there are issues between the parties other than the disputed domain name, those issues do not validly affect the registration and use of the disputed domain name. Thus the present case must be distinguished from the cited cases and the Panel will decide this case in accordance with the Policy. A. Identical or Confusingly Similar
The Complainants cite several UDRP decisions which recognize their trademarks. However, those cases must be distinguished from the present case, because in the cited cases the disputed domain names contained the significant words comprising one of the Complainants’ mark (for example and ). But, in the present case, the acronym CAM is combined with the generic words “bank” and “properties”, which is an entirely different situation from the one in the cases cited by the Complainants.
The Complainants provide ample evidence of ownership of numerous trademarks containing the acronym CAM and they provide evidence to the effect that that acronym is well-known in Spain and that it is commonly associated, within the Spanish financial services sector, with the Complainants and their sister companies within Grupo CAM.
The Panel holds that this is sufficient to find that the Complainants have rights in the mark CAM, see 01066 GmbH v. Digitel GmbH, WIPO Case No. D2004-0540; Helsingin yliopiston ylioppilaskunta and HYY Group Ltd v. Paul Jones, WIPO Case No. D2002-1164; Worldcom Exchange, Inc v. W, Inc., WIPO Case No. D2004-0955; Dreamstar Cash S.L. v. Brad Klarkson, WIPO Case No. D2007-1943, which last states: “There is no doubt that unregistered trade mark or service mark rights may qualify as ‘rights’ in a trade mark or service mark, for the purposes of paragraph 4(a)(i) of the Policy.” Indeed, common law rights can be established by showing that the claimed mark has acquired a “secondary meaning”, as an indicator of an association with the complainant or a business operated by the complainant, and this is precisely the situation in the present case.
It is obvious that the disputed domain name is confusingly similar, in the sense of the Policy, to the Complainants’ mark CAM, in particular because that mark is used in the financial services sector, and the disputed domain name combines the mark with the term “bank”. B. Rights or Legitimate Interests
The Respondent admits that he reneged his previous promise to transfer the disputed domain name, and to refrain from using the Complainants’ logos without permission, as a consequence of the commercial dispute that had arisen between the parties. But it is well-established that commercial disputes should be resolved by appropriate legal actions, not by “self-enforcement”.
Consequently, the Panel agrees with the conclusions of a previous UDRP panel in a similar case, Ecoyoga Ltd v. , Siteleader Hosting,WIPO Case No. D2009-1327, finding that “non-payment of fees by the Complainant to the Respondent does not establish rights or legitimate interests in the disputed domain name in the Respondent.”
The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
It has been generally held that, under the Policy, bad faith registration cannot be found when a complainant allowed the respondent to register the disputed domain name in order to promote the complainant’s products. See Green Tyre Company Plc. v. Shannon Group,WIPO Case No. D2005-0877; The T, LLC v. Jeffrey S. Poploff,WIPO Case No. D2000-1470. But those cases must be distinguished from the present case, because, in the present case, the Respondent accepted certain conditions when he registered the disputed domain name and subsequently refused to abide by those conditions. See UVA Solar GmbH & Co K.G. .v. Mads Kragh,WIPO Case No. D2001-0373; Exel Oyj v. KH Trading, Inc.,WIPO Case No. D2004-0433; R&M Italia SpA, Tycon Technoglass Srl v. EnQuip Technologies Group, Inc.,WIPO Case No. D2007-1477.
In the present case, the Respondent alleges that the Complainants did give him permission to register the disputed domain name, but he does not provide any explicit written evidence to support that allegation. The Complainants allege that the disputed domain name was first registered without their knowledge. The Respondent presents convincing evidence that the Complainants accepted the registration when the website at the disputed domain name became operational and only challenged the registration later, when some problems started to develop in the business relation.
It seems clear to the Panel that, when he registered the disputed domain name, the Respondent accepted that he was doing so only within the framework of the forthcoming agreement between the parties. Indeed, it is not disputed that, when challenged by the Complainants regarding the disputed domain name, the Respondent offered to transfer it to the Complainants and promised not to use the Complainants’ logos without permission—and this would imply not using the disputed domain name without permission.
From the evidence submitted by the parties, it is clear that the agreement between the parties provided that the Respondent would cease to use the Complainants’ distinctive brand names and logos, in whatever form, upon the termination of the agreement; that the Respondent expressly accepted that the Complainants own all rights relating to trademarks, distinctive marks, images and professional marketing reputation which derive from and are associated with the distinctive mark CAM; and that the Respondent would not use these distinctive marks without the express authorization of the Complainants.
As noted above, it is not disputed that, subsequent to the termination of the business agreement between the parties, the Respondent reneged that promise: he refused to transfer the disputed domain name and redirected it to his own web site, and this in order to recover sums that he felt are owed to him by the Complainants. Similar behavior by the Respondent has been found by prior UDRP panels to constitute bad faith use. See UVA Solar GmbH & Co K.G. v. Mads Kragh, supra. See also Ecoyoga Ltd, supra.
Given the prior relations between the parties, and the conditions the Respondent accepted when registering the disputed domain name, the Panel finds that the Respondent did not act in good faith when he registered the disputed domain name then refused to transfer it, and continued using it, apparently in order to recover sums that he believes are due to him.
Consequently the Panel finds that the Respondent has registered and used the disputed domain name in bad faith in the sense of the Policy. D. Reverse Domain Name Hijacking
Since the Panel finds in favor of the Complainants, it dismisses the request for a finding of reverse domain name hijacking. 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. The request for a finding of reverse domain name hijacking is dismissed.
Richard Hill
Sole Panelist
Dated: April 6, 2011
1 The Respondent alleges that he registered the disputed domain name with the full knowledge and consent of one of the Complainants, as a trading vehicle to market the Complainants’ products (in particular real estate properties) in the United Kingdom, in accordance with the business agreement between the parties. The Panel will discuss this issue further in the Decision.
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