The Complainant is Mapfre S.A. y Fundación Mapfre of Madrid, Spain, represented by Elzaburu, Spain.
The Respondent is Josep Sitjar of Middle River, United States of America, represented by Traverse Legal, PLC, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2011. On April 20, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On April 20, 2011, GoD, Inc. 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”).
On April 27, 2011, the Center sent an email communication to the parties regarding the language of the proceedings. On April 29, 2011, the Complainant requested that Spanish be the language of the proceedings. On the same day, the Respondent requested that English be the language of the proceeding.
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 May 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2011. The Response was filed with the Center on May 21, 2011.
The Center appointed Luca Barbero as the sole panelist in this matter on June 24, 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 (“Mapfre”) is the leading insurance company in Spain and the largest non-life insurance company in Latin America. Its name derives from the old mutual origin of the company (Mutua de Accidentes de Propietarios de Fincas Rústicas de España), which was founded in Spain in 1933. Today, Mapfre is present in Spain with 438 offices and, through 151 companies, in other 42 countries, covering great part of Asia, Europe and Northern Africa.
The Mapfre foundation was created in 1975 with the aim to contribute to achieving objectives of general interest to society. Today, the Complainant is also the majority shareholder of the Mapfre Group.
The Complainant is the owner, inter alia, of the following trademark registrations for MAPFRE:
- Spanish Trademark No. 999195 (word mark), filed on March 3, 1982, registered on October 18, 1982 and duly renewed, in class 36;
- Spanish Trademark No. 2516462 (word mark) filed on March 3, 1982, registered on December 17, 2002 and duly renewed, in classes 38, 40, 41 and 42;
- Spanish Trademark No. 2544270 (word mark) filed on March 3, 1982, registered on June 4, 2003 and duly renewed, in classes 16 and 35.
- United States Trademark No. 1548608 (word mark), filed on April 11, 1988, registered on July 18, 1989 and duly renewed, in class 36;
- European Community Trademark No. 104133 (word mark), filed on April 1, 1996, registered on September 10, 1998 and duly renewed, in classes 16, 35, 36, 37, 41 and 42;
- European Community Trademark No. 385278 (figurative mark), filed on October 28, 1996, registered on October 14, 1998 and duly renewed, in classes16, 35, 36, 37, 41 and 42;
- European Community Trademark No. 1246818 (figurative mark), filed on July 20, 1999, registered on September 25, 2000 and duly renewed, in classes 16, 35, 36, 37, 39, 41 and 42.
The Respondent registered the disputed domain name on August 26, 2002. 5. Parties’ Contentions A. Complainant
The Complainant points out that Mapfre is one of the leaders among insurance companies and informs the Panel that it was already present with 2422 offices in Spain in 2001, the year before the disputed domain name was registered, with investments in advertising amounting to EUR 14 million between 1999 and 2000.
The Complainant also states that the well-known character of the Complainant’s mark was expressly recognized by several famous brand rankings, including “Las Marcas Renombradas Españolas”, 2001 edition, and other brand charts published on economic magazines between 1998 and 2001.
The Complainant points out that the Respondent, in light of his Spanish origins, could not ignore the existence of the Complainant’s trademark at the time of the registration.
The Complainant states that the disputed domain name has not been actively used in connection with any relevant active web site. The screenshots attached to the Complaint show that the disputed domain name was initially pointed to a web site where apparently some information about a company managed by the Respondent were displayed, and that it was subsequently pointed to a web site under construction and then to a sponsored pay-per-click web site. The Complainant also highlights that, since September 2010, the disputed domain name was also offered for sale by the Respondent through Sedo.
The Complainant informs the Panel that it sent a cease and desist demand letter to the Respondent on October 9, 2002 and that, following a subsequent telephone conversation, the Respondent published on his site the statement “futuro sitio web de la empresa Mallorquina de Fresados”. The Complainant addressed another letter to the Respondent on December 13, 2010, to which the Respondent’s representative replied acknowledging the confusion among the disputed domain name and the Complainant’s main domain name and offering the disputed domain name for sale.
The Complainant contends that disputed domain name is confusingly similar to the trademark in which Complainant has rights as it substantially reproduces the well-known trademark MAPFRE in its entirety, with the mere deletion of the letter “p”.
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is not owner of any registered trademarks for MAFRE and that he has not been authorized to use the disputed domain name by the Complainant. The Complainant underlines that the Respondent’s selection of the disputed domain name cannot be ascribed to a mere coincidence and that the Respondent had no reasons to register the disputed domain name for his commercial activity. The Complainant emphasizes that the Respondent’s argument that “mafre” would stand for “Mallorquina de Fresados” is not convincing, also in light of the fact that the Respondent is not the owner of any registered trademark or trade name corresponding to “Mallorquina de Fresados”.
With reference to the circumstances evidencing bad faith, the Complainant indicates that the disputed domain name is substantially identical to the Complainant’s mark and that the Respondent’s conduct constitutes “typosquatting”.
Regarding the use of the disputed domain name, the Complainant underlines that the Respondent also pointed the disputed domain name to parking page with links to competitors’ site and has offered it for sale. B. Respondent
The Respondent states that “mafre” is the acronym for “Mallorquina de Fresados”, the Respondent’s “defunct laser routing company”, and that he made preparations to advertise and offer laser services under the disputed domain name. However, in light of the high investments costs involved in laser routing, the Respondent decided to interrupt his project.
The Respondent states that he started receiving emails from individuals that were attempting to reach the Complainant at addresses hosted on the Complainant’s domain name , including email communications regarding insurance-related issues, and that, in light of the above, the Respondent offered the disputed domain name for sale to the Complainant for EUR 25,000. The Respondent also states that, since the Complainant did not accept the Respondent’s request, he decided to offer the disputed domain name for sale on Sedo’s web site, temporarily redirecting it to a parking page with pay-per-click links related to insurance services.
The Respondent contends that he should retain the disputed domain name since it is constituted by an assortment of letters that, at the time of registration, was served as a short and memorable abbreviation for his business, which was not competitive with the Complainant. The Respondent also highlights that the use of the sign “mafre” as an acronym for non-competing business is unlikely to cause confusion.
The Respondent also states that he made bona fide steps to create his laser routing company and that it was named Mallorquina de Fresados in light of the fact that “fresado” means “routing” in Spanish and because the Respondent’s business was located in Majorca Island. The Respondent informs the Panel that, in the past, he was also the owner of an industrial and commercial manufacturer in Majorca, named Concord Impresion, which was also involved in “fresado” and therefore, the laser routing was the natural extension of his pre-existing skills. However, since both projects did not provide sufficient return of his investments, the Respondent opted for terminating this latter project and to sell his company.
In replying to the Complainant’s letter, the Respondent explained that he had not yet listed Mallorquina de Fresados at the domain name or created a dedicated web site under the disputed domain name since he did not want to provide his local competitors with his plans to enter the laser routing field. Soon after, the disputed domain name was directed to an “under construction” web site.
The Respondent contends that he has a legitimate interest in the disputed domain name since he made perfunctory preparations to use it for a bone fide offering of goods or services and the disputed domain name is constituted by a generic term or a generic acronym. The Respondent also states that the Complainant’s delay in bringing the Complaint would show the Complainant’s lack of rights in the disputed domain name and its knowledge of the Respondent’s rights and legitimate interests in it.
The Respondent rebuts the Complainant’s contentions as to his asserted bad faith at the time of registration, reiterating that the disputed domain name is constituted by a generic five-letter acronym and that he did not intend to trade off of the notoriety of the Complainant’s trademark to cause confusion among users or unfairly compete with the Complainant. The Respondent also points out that the Complainant’s mark is constituted by an acronym which has little distinctiveness and that similar acronyms are used across the world in association with non-competing goods and services.
With reference to the Respondent’s request of “$32000 USD or 25000 Euro” to the Complainant, the Respondent states that such amount corresponds to the out of pocket costs for the registration and maintenance of the disputed domain name.
Regarding the use of the disputed domain name, the Respondent points out that, in light of the fact that the Complaint had refused to accept his request, he redirected it to the Complainant’s web site while trying to determine if the Complainant might be interested in transferring the disputed domain name. Since the Complainant did not respond, he then redirected the disputed domain name to a Sedo parking page but, when contacted again by the Complainant, modified the site to ensure that it did not display advertisements competing with the Complainant.
The Respondent also contends that the Complainant has failed to prove that the Respondent’s registration was made in bad faith with the intention to offer it for sale to Complainant, since the Complainant first contacted the Respondent demanding to transfer the disputed domain name. The Respondent further states that the Complainant did not submit evidence that the registration was made by the Respondent in order to prevent the Complainant from reflecting its mark in the disputed domain name or to disrupt the Complainant’s business.
The Respondent therefore requests that the Complaint be denied. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or a service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Preliminary issue: the language of the proceeding
According to paragraph 11(a) of the Rules, “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel, according to paragraph 11(b) of the Rules, “may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding”.
In the case at hand, the Complaint has been submitted in Spanish while, according to the verifications conducted with the concerned registrar, GoD, Inc., by the Center, the language of the Registration Agreement is English. The Center notified both parties of the potential language issue, inviting the Complainant to either translate the Complaint or to submit a supported request (e.g., by reference to prior party communication, web site language, or respondent identity) that the Complaint be accepted in language filed, and that such be the language of proceedings, and similarly providing the Respondent with an opportunity to comment on or object to any such language request that may be made by the Complainant.
The Complainant submitted a request for Spanish to be the language of the proceeding, stating the Respondent is Spanish native and communicated with the Complainant in Spanish prior to the filing of the Complaint.
The Respondent, instead, requested that English be the language of the proceeding, since the Respondent’s representative does not understand Spanish, and requested that the Panel orders the Complainant to translate the Complaint into English.
To determine the language of the proceeding the Panel considers that, in application of Article 10(b) and (c) of the Rules, the Panel shall ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case; on the other hand, the administrative proceeding must take place with due expedition.
In the case at hand, the Panel finds that both parties would be disadvantaged by a request for translation of their documents and statements. The Panel determines that English be the language of the procedure but does not deem necessary to require a translation of the Complaint, since the Panel has adequate command also of Spanish to fully understand the Complainant’s statements and to review the annexes attached thereto. A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a number of trademark registrations for MAPFRE, such as the Spanish Trademark No. 999195 (word mark), filed on March 3, 1982, registered on October 18, 1982 and duly renewed, in class 36; the United States Trademark No. 1548608 (word mark), filed on April 11, 1988, registered on July 18, 1989 and duly renewed, in class 36; the European Community Trademark No. 104133 (word mark), filed on April 1, 1996, registered on September 10, 1998 and duly renewed, in classes 16, 35, 36, 37, 41 and 42.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark since the Respondent has merely eliminated the letter “p” from the trademark, which is certainly not sufficient to exclude the confusingly similarity (Fry’s Electronics, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1435).
See along these lines Fry’s Electronics, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1435: "VRL International Ltd. v. Domaincar,WIPO Case No. D2006-0240 where the deletion of letter ‘s’ in domain name was found not to alter the confusing similarity between the domain name and complainant’s marks SUPERCLUBS BREEZES, in Hershey Foods Corporation and Hershey Chocolate & Confectionery Corporation v. DRP Services,WIPO Case No. D2003-0841 where the “deletion of the letter ‘s’ in domain name confusingly similar to complainant’s domain name” and in Pop Smear, Inc. v. Craig Singer, NAF Case No. FA0006000094945 (deletion of single letter “s” from complainant’s registered mark 1800POSTCARDS.COM creates a confusingly similar domain name)”; and Pfizer Inc., A Delaware Corporation v. RE THIS DOMAIN FOR SALE – EMAIL, WIPO Case No. D2002-0409 stating: “Further, merely substituting "f" and "z" in the mark "PFIZER" with "h" and "s", respectively, to yield the contested domain name, that is phonetically equivalent to the mark, are changes that are so de minimus that the only purpose which the Panel envisions behind the Respondent having done so is to cause and opportunistically exploit inevitable user confusion. There can be no question that this is the Respondent's goal. Otherwise, why would the Respondent have chosen a domain name that, given its slight alterations, remains phonetically equivalent to the Complainant's mark "PFIZER"?”.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of evidence on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA0611000852581).
In the case at hand, the Complainant has made a prima facie case and the Respondent has failed to raise any convincing circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
Furthermore, there is no indication before the Panel that the Respondent is actually commonly known by the disputed domain name, has made preparations to use it in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the disputed domain name and the Respondent has not provided in the Response any convincing evidence to the contrary.
The Respondent stated that his registration of the disputed domain name was meant to refer to the first letters of the Respondent’s “Mallorquina de Fresados”. However, the Panel has not been provided with any documental evidence showing rights on or actual use of such denomination by the Respondent beyond the mere Respondent’s assertions.
The description of the facts and correspondence between the parties prior to the filing of the Complaint, on the contrary, suggest that the Respondent was not seriously interested in actively using the disputed domain name since few months after the registration the Respondent offered it for sale to the Complainant.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 the holder’s web site or location or of a product or service on the holder’s web site or location.
As to bad faith at the time of the registration, the Panel notes that, in light of the well-known character of the Complainant’s trademark in Spain since at least the early 2000, supported by a pervasive presence of the Complainant’s offices and significant advertising investments, the Respondent, who is Spanish native, was likely aware of the Complainant’s trademark MAPFRE.
Moreover, the documents and statements submitted by the parties and the contents of the correspondence sent by the Respondent to the Complainant (acknowledging that several email communications directed to the Complainant were, by error, sent to the Respondent’s address based on the disputed domain name) suggest that the Respondent, by using the disputed domain name, has likely intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his web site.
Furthermore, in view of the mere one letter difference between the domain name registered by the Respondent and the Complainant’s registered trademark, there is clearly confusing similarity here. The Panel considers such activity a classic example of typosquatting (Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044). This conclusion was also reached in Allied Building Products Corp v. A c/o Whois Identity Shield,WIPO Case No. D2006-0833 (“it is therefore a reasonable inference from this that the Respondent knew of the Complainant’s business and wanted to exploit the name to divert Internet traffic from it, probably to benefit from pay-by-click arrangements with alternative suppliers).”
As an additional circumstance evidencing bad faith, the Panel finds that also paragraph 4(b)(i) of the Policy is applicable to the present case since the Respondent offered for sale the disputed domain name to the Complainant for the amount of EUR 25,000, which is well over the out-of-pocket costs directly related to the domain name. See i.e., Wal-Mart Stores, Inc. v. Brad Tauer,WIPO Case No. D2000-1076, where it was found “the amount sought, $475, far exceeds the domain name registration fee and Respondent did not present any documentation as to any other "out-of-pocket costs directly related to the domain name."
In view of the above, the Panel finds that the disputed domain name was registered and is being used 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.
Luca Barbero
Sole Panelist
Dated: July 10, 2011
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