The Complainant is Training Channel, S.A of Coruña, Spain, represented by an internal representative.
The Respondent is Domain Asset Holdings of Maryland, United States of America, represented by Brian H. Leventhal, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with TierraNet d/b/a DomainDiscover (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2011. On May 23, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 24, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on May 26, 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 May 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 22, 2011. However, the Center received an email from the administrative contact for the disputed domain name on June 22, 2011.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on July 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.
On July 19, 2011, the Panel issued Procedural Order No. 1 requesting the Complainant to file evidence relating to the ownership and registration of the TRAINING CHANNEL trademark (which appeared to be registered to Vettera Channel S.A.). The Respondent was also allowed to file submissions and supporting evidence in reply.
On July 21, 2011, the Complainant submitted evidence of the change of name of the Complainant’s legal entity from Vettera Channel S.A. to Training Channel S.A.
No submission pursuant to the Order was received from the Respondent.
As indicated in the Order, the decision due date was extended to August 3, 2011.
The decision was rendered on August 3, 2011 and notified to the parties on August 16, 2011. The decision ordered that the disputed domain name be transferred to the Complainant.
On August 23, 2011, the Respondent’s authorized representative informed the Center that the original notification of the Complaint by email in this matter appears to have included an error in the email address for the technical contact information for the disputed domain name. In particular, the email address to which the Complaint was sent included an extra “n”, being sent to “admin@” and not to the correct address “admin@”.
On August 25, 2011, the Center communicated to the Registrar that the Respondent had raised an issue with respect to the efficacy of the notification process in these proceedings, which the Center was investigating. The Registrar was requested to suspend any implementation of the Panel’s issued decision pending further instruction from the Center on the matter.
After investigating the matter, the Center found the Respondent to be correct in this matter, and that a material issue was raised about whether notice in accordance with the UDRP Rules paragraph 2(a)(ii) – which requires email notice to be sent to available technical contact information for the registrant – was properly served in the case.
In light of this, the Panel, on August 26, 2011, exceptionally rescinded its previously issued decision dated August 3, 2011, which was issued on the basis of a Respondent default and the Center was instructed to remove that published decision from its website.
The Center forwarded a copy of the Complaint (including any annexes) to all available email addresses for the Respondent (including the correct email address for the technical contact, and for the Respondent’s new identified representative in this matter, Mr. Leventhal) and granted the Respondent a further 20 days to submit any Response.
The new Response due date was September 15, 2011. No formal Response was filed. 4. Factual Background
The Complainant is Training Channel S.A. a Spanish corporation created in 1998 located in Coruña, Spain. It appears that the Complainant’s services include editing theme channels for e-learning online and offering such content to companies.
In any event, the Complainant owns Community Trade Mark No. 005203005 for TRAINING CHANNEL with a registration date of June 5, 2007 for classes 9, 38 and 41. On May 5, 2011, the Complainant changed its former company name from Vettera Training S.A. to Training Channel S.A.
The Complainant owns also the domain name. The domain name was applied for and obtained on January 23, 2006, and has been in use in connection with the services provided by the Complainant.
The Respondent is located in Maryland, United States of America. 5. Parties’ Contentions A. Complainant
The Complainant maintains that it is the owner of the European Community trademark TRAINING CHANNEL, and contends that the disputed domain name is confusingly similar to its trademark.
The Complainant asserts that the addition of the suffix “.com” does not sufficiently render the disputed domain name different from the Complainant’s TRAINING CHANNEL trademark.
The Complainant argues that its activities go beyond the territorial Spanish scope because it provides its services to users located throughout the European Union and Latin America, that is, it operates with an international character and needs a top-level domain according to the activity undertaken.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent has not used or has not made any demonstrable preparation for their use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant also adds that the Respondent is not known by the disputed domain name, nor has it acquired any product or service trademark.
With regard to registration and use in bad faith, the Complainant submits that the Respondent registered or acquired the disputed domain name to sell, rent or otherwise transfer the domain name registration to the owner of the product or service trademark for valuable consideration in excess out-of-pocket costs that are directly related to the domain name. In this respect, the Complainant states that Respondent only uses the disputed domain name to offer for sale the domain name for USD 5,000. B. Respondent
The Respondent did not reply to the Complainant’s contentions. The Panel notes that the Center received on June 22, 2011 an email communication from the administrative contact for the disputed domain name indicating as follows:
“Thank you for your email. In order for to proceed, please respond with confirmation of our missing actions. The domain is still currently administratively locked and has not expired or been deleted.”
The Panel also notes that the Respondent did not submit a Response by the stipulated new Response due date of September 15, 2011, pursuant to the Panel’s above-referenced email communication of August 26, 2011.
Therefore in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The complainant must satisfy that:
(i) the 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 such domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in TRAINING CHANNEL as evidenced by the EU trademark registration submitted with the Complaint, as mentioned above.
The Panel likewise finds that the disputed domain name is confusingly similar to the Complainant’s trademark TRAINING CHANNEL, noting that the additional element (“.com”) is functional element of the domain name.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial 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.
By its allegations in the Complaint, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and, as such, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating such rights or legitimate interests.
The Respondent has not done so and the Panel is entitled to find, based on the case record, that the Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
At the time of the filing of the Complaint the disputed domain name was not being used for any particular purpose. It contained a notice stating: “TrainingC This domain is for sale, call us at 1-888-694-6735, email sales@ or Request a Price Now!”. In addition, as the Complainant has stated, and the Respondent has not denied, the disputed domain name was being offered for sale at a price of USD 5,000 on the web site of Respondent.1
As there is no evidence on the record that the Respondent has undertaken any act regarding the disputed domain name other than to offer it for sale, the Panel infers that the offering for sale was the Respondent’s purpose for the registration. If the Respondent’s offer for sale is determined to be in bad faith, then the registration will also be deemed to be in bad faith (Educational Testing Service v. TOEFL,WIPO Case No. D2000-0044). In view of the Panel, the language at the website to which the disputed domain name resolves i.e. – “This domain is for sale” – clearly suggests that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant or to one of its competitors for valuable consideration in excess of the Respondent’s out-of-pocket expenses (see Royal Bank of Canada v. N,WIPO Case No. D2004-0642).
For the reasons discussed, the Panel finds that the Complainant has successfully established that the disputed domain name was registered and is being used in bad faith. 7. Decision
For 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.
Pablo A. Palazzi
Sole Panelist
Dated: September 29, 2011
1 At the time of writing this decision, the Panel notes that disputed domain name does not contain anymore the offer for sale.
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