The Complainant is La Sirena Alimentacion Congelada, S.L. of Viladecavalls, Spain, represented by Oficina Ponti, S.L., Spain.
The Respondent is Tom Fisher of Miami, California, United States of America, appearing pro se. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2011. On March 31, 2011, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the Disputed Domain Name. On March 31, 2011, Network Solutions, 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 Complainant filed an amended Complaint] on April 5, 2011.
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 April 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2011. The Response was filed with the Center on April 26, 2011.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on May 5, 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 Complainant, La Sirena Alimentacion Congelada, S.L., is a Spanish company with more than 25 years experience in the food distribution industry. The Complainant is the holder of a many trade mark registrations for LA SIRENA in Spain, Andorra and the European Union, dating back to 1936. The Complainant does not own any trade mark registrations for LA SIRENA in the United States of America, where the Respondent is located. The Complainant is the holder of several domain names incorporating the trade mark LA SIRENA, including their first domain name incorporating the LA SIRENA mark, , which the Complainant registered in 1997. The Complainant’s LA SIRENA mark has been recongised as well-known by the Spanish Patent and Trade Mark Office.
The Respondent is an individual resident of the United States. The Respondent registered the Disputed Domain Name on September 6, 1996. As at the date of this decision, the Disputed Domain Name does not resolve to an active webpage. The Complainant asserted that the website at the Disputed Domain Name has always been inactive. However, the Wayback Machine Internet archive reveals that the Disputed Domain Name resolved to various websites from at least 1997 to 2006, mainly relating to scuba diving services. The last snapshot available on Wayback Machine is September 3, 2006, and the Disputed Domain Name must have ceased resolving to an active website some time following this date. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
(a) The Disputed Domain Name is identical to the Complainant’s LA SIRENA trade mark:
(i) The Complainant has been the legitimate owner of the LA SIRENA mark since 1936 when it first registered the mark in Spain.
(ii) The Disputed Domain Name incorporates the Complainant’s trade mark in its entirety. The LTD element “.com” and the absence of space between the two words “La Sirena” in the Disputed Domain Name are of no relevance.
(iii) The Disputed Domain Name is identical to and wholly incorporates the Complainant’s registered trade mark.
(b) The Respondent does not have rights or legitimate interests in the Disputed Domain Name:
(i) The Disputed Domain Name was registered on September 6, 1996, only a number of months after the Complainant first registered the LA SIRENA trade mark in the European Union on April 1, 1996.
(ii) Since the date of registration of the Disputed Domain Name, there has been no use or no indication of any plans or preparations to use the Disputed Domain Name. Under these circumstances, the Disputed Domain must have been registered for the sole purpose of reselling it and taking unfair advantage of the Complainant’s reputation in the mark.
(iii) The absence of use of the Disputed Domain Name is evidence supporting the conclusion that the Respondent has no rights or legitimate interests in the Disputed Domain Name and may amount to passive holding, i.e., bad faith use.
(iv) The Respondent is not commonly known by the denomination LA SIRENA and is not duly authorised by the Complainant to use the trade mark LA SIRENA. Hence, the Respondent cannot be considered as having rights or legitimate interests in the Disputed Domain Name.
(c) The Disputed Domain Name was registered and is being used in bad faith:
(i) There has been no use of the Disputed Domain Name since its registration and no indication of any plans or preparation to use it.
(ii) The Respondent is the holder of at least 133 other domain names. Accordingly, it is fair to infer that the Respondent’s real business is to acquire domain names and to re-sell them for profit.
(iii) The Complainant’s trade mark LA SIRENA is well-known in Spain. Given the notoriety of the Complainant’s trade mark, there is a prima facie presumption that the Respondent registered the Disputed Domain Name for the purpose of selling it to the Complainant or to one of its competitors. Registration of a well-known trade mark suggests opportunistic bad faith.
(iv) The Respondent failed to respond to the cease and desist letter sent by the Complainant, which has been considered to constitute bad faith in numerous UDRP decisions.
(v) The Respondent provided the wrong contact information for the WhoIs data for the Disputed Domain Name, which also supports a finding of bad faith. The Respondent has intentionally provided incorrect contact information to evade service, hide its true identity and thus to obstruct the Complainant’s investigation and legal steps.
(vi) The Respondent appears to have already been involved in a UDRP proceeding where it was held that he has registered the domain name in bad faith namely because he had no rights or legitimate interests in the domain name, he had not been authorised by the Complainant to use its trade mark, he provided false contact details and the website at the domain name was not active (i.e., passive holding). B. Respondent
The Respondent only submitted a very brief Response, which failed to address a lot of the allegations set out in the Complaint. The Respondent’s contentions can be summarised as follows:
(a) The Respondent was not aware of the incorrect contact information in his WhoIs information. Upon becoming aware of this, he took steps to update his contact information by contacting his registrar.
(b) The Respondent requests to retain registration and use of the Disputed Domain Name and contends that he has had this domain name for many years. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the LA SIRENA trade mark on the basis of its many registrations for the LA SIRENA in Spain, Andorra and the European Union.
The Disputed Domain Name incorporates the Complainant’s LA SIRENA mark in its entirety. It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case “.com” should be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd.,WIPO Case No. D2006-0762).
The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the LA SIRENA mark in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that there is no evidence to show that the Respondent has any rights or legitimate interests in any trade marks or service marks which are identical, similar or related to the Disputed Domain Name. Therefore, the Panel will assess the Respondent’s rights or legitimate interests in the Disputed Domain Name (or lack thereof) based on the Respondent’s use of the Disputed Domain Name in accordance with the available record.
The Panel accepts that the Complainant has not authorised the Respondent to use the LA SIRENA trade mark. The Panel further accepts that there is insufficient evidence to suggest that the Respondent has not become commonly known by the Disputed Domain Name.
Accordingly, the only way for the Respondent to acquire rights or legitimate rights in the Disputed Domain Name for the purposes of 4(a)(ii) of the Policy would be through use of the Disputed Domain Name for legitimate noncommercial or fair purposes or in connection with bona fide offerings of goods or services.
At the time of the Complaint, the Disputed Domain Name did not resolve to an active website. However, Internet archives show that the Disputed Domain Name resolved to active websites between at least 1997 and 2006. For most of this time, the Disputed Domain Name resolved to a number of diving websites, some of which were operated using the name “La Sirena Divers” and featured pictures of mermaids (the Panel notes that “la sirena” is Spanish for “mermaid”).
The majority of the Complainant’s arguments relating to rights or legitimate interests revolve around the Respondent’s passive holding of the Disputed Domain Name (based on the fact that the Disputed Domain Name does not currently resolve to an active website). However, the Internet archives indicate that this is not the case, and that the Respondent used the Disputed Domain Name to host a series of diving websites for almost 10 years.
While the Respondent did not point this out in his Response, the Panel notes that Paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that “a panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name . . . consulting a repository such as the Internet Archive (at ) in order to obtain an indication of how a domain name may have been used in the relevant past...”.
Given that much of the Complainant’s arguments rely on the notion of passive holding, the Panel deems that it is necessary in the present case to take the archived records into consideration when reaching its decision. These records indicate that the Respondent used the Disputed Domain Name in connection with a bona fide offering of services over a period of almost 10 years. The Panel accordingly finds that the Respondent has a legitimate interest in the Disputed Domain Name, and the fact that the Disputed Domain Name does not currently resolve to an active website does not of itself serve to extinguish such lengthy interest in the circumstances of this case. See for example Maureen A. Healy v. Andreas Kuhlen,WIPO Case No. D2000-0698, where the panel found that the respondent’s preparation to use the disputed domain name prior to being notified of the complaint constituted rights or legitimate interests in the disputed domain name, irrespective of the fact that the domain name was not in use at the time that the complaint was filed, and Warm Things, Inc., Inc. v. Adam S. Weiss,WIPO Case No. D2002-0085, where the use of the disputed domain name for a period of 2 years was held to constitute use of the disputed domain name in connection with a bona fide offering of goods or services, irrespective of the fact that the disputed domain name was not in use at the time that the complaint was filed.
The Panel accordingly finds that the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith
As the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy, the Complaint thus fails and the Panel does not need to consider the third requirement under paragraph 4 (a) (iii) of the Policy. Moreover, it follows from the Panel’s reasoning under the previous element that the Panel finds it more probable than not that the Respondent registered the Disputed Domain Name for the apparently bona fide purpose to which it was subsequently put (i.e., mainly to host a series of dive sites), and not for the primary purpose of targeting and capitalizing on the Complainants trade mark. In such circumstances, the Complainant’s passive holding argument must similarly fail. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Gabriela Kennedy
Sole Panelist
Dated: May 16, 2011
Full & Egal Universal Law Academy