Complainant is Esteban Ceca Magán of Madrid, Spain, represented by Ceca Magán Abogados, S.L., Spain.
Respondent is John Gray of San Jose, California, United States of America. 2. The Domain Name And Registrar
The disputed domain name is which is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2011. On July 14, 2011, the Center transmitted by email to GoD, Inc., a request for registrar verification in connection with the disputed domain name. On July 16, 2011, GoD, Inc., transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name. On July 19, 2011, in response to an email communication from the Center, the Center received an email communication from Complainant whereby Complainant sent the Complaint and annexes to Respondent and the Registrar.
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 Respondent of the Complaint, and the proceedings commenced on July 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 10, 2011.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on August 16, 2011. This Panel finds that it was properly constituted. This 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
Complainant is Mr. Esteban Ceca Magán, an individual from Spain and a licensed attorney that provides legal services under his own name. Further, Complainant is partner of Ceca Magán Abogados, S.L., a limited liability company which provides legal services.
Complainant has rights over the marks CECA MAGÁN and CECA MAGÁN ABOGADOS. Further, Complainant’s law firm, Ceca Magán Abogados, S.L., has rights over the registered mark CECA MAGÁN ABOGADOS and design, registration No. 2968026 with the Spanish Patents and Trademarks Office, registered on June 6, 2011, classes 16, 35, 36, 41 and 45; and over the trade name CECA MAGÁN.ABOGADOS. and design, registration number 257577 with the Spanish Patents and Trademarks Office, registered on November 10, 2004, class 42.
The disputed domain name was created on January 10, 2010. 5. Parties’ Contentions A. Complainant
Complainant’s assertions may be summarized as follows:
Since 1976 Complainant started to identify his legal practice using CECA MAGÁN and CECA MAGÁN ABOGADOS.
Even though Complainant, among others, incorporated in 1988 the law firm Consultoría Técnico Profesional, S.A., Complainant has always presented and published his legal services as CECA MAGÁN and/or CECA MAGÁN ABOGADOS. In that respect, Complainant has used the domain name registered in 2003. In December 2007, Complainant, along with his wife and sons, incorporated the law firm Ceca Magán Abogados, S.L., in Madrid, Spain.
As a result of major efforts and excellent reputation, Complainant’s legal practice CECA MAGÁN ABOGADOS has become well-known in most of the countries around the world, including Spain, being an international leader in legal services. Complainant’s law firm has an annual net profit that amounts to two million Euros, and the annual advertising expenditure amounts to twenty five thousand Euros.
Complainant´s law firm has grown and become a leader in all legal areas. Nowadays, Complainant’s law firm provides legal services to more than one hundred national and international companies. Complainant’s law firm also collaborates with Cicero League of International Lawyers, an established network of international independent law firms that provides links to high quality law firms mainly in the corporate, commercial and property areas.
On May 10, 2010, Complainant tried to buy the disputed domain name from the Registrar GoD, Inc. On the same date, GoD, Inc. sent an email informing that the disputed domain name appraisal was complete and available. On May 12, 2010, GoD, Inc. sent another email to Complainant stating that the registrant of the disputed domain name was interested in selling it for an amount of USD50,000.00. Finally, on May 13, 2010, GoD sent an email stating that its services were closed and complete because Complainant and the seller (Respondent) were not able to agree to an acceptable price.
On February 11, 2011, Complainant communicated again with GoD, Inc. with the purpose of acquiring the disputed domain name. GoD, Inc. informed Complainant that they could start negotiations for the same price (USD69.99) if Respondent was willing to negotiate, but if that was not possible they would have to work with the amount of USD50,000.00.
The disputed domain name is confusingly similar to the mark CECA MAGÁN ABOGADOS over which Complainant has rights.
The disputed domain name is confusingly similar, almost identical, to Complainant’s mark since the disputed domain name incorporates the most distinctive part of Complainant’s mark which is CECA MAGÁN; such term is not a fanciful term and it has no other common meaning than the last name of Complainant. ABOGADOS is a descriptive and clear reference to the legal services provided by Complainant.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent is not affiliated with Complainant and has not been authorized to use Complainant’s mark. Further, Respondent has not acquired any trademark or service mark rights over CECA MAGAN.
Respondent has no relation with Complainant´s name nor with his law firm. Respondent’s name is John Gray, and there is no evidence that Respondent has been commonly known by the disputed domain name. In addition, Respondent has never provided evidence of his rights or legitimate interests in registering or using the disputed domain name; on the contrary, Respondent has offered to sell the disputed domain name for an amount of USD50,000.00.
Complainant carried out a search in the United States Patent and Trademark Office (USPTO) data base under the key words CECA MAGAN, and the search did not show any results for CECA MAGAN, or any of those words in favor of Respondent. Complainant also carried out a search in the Spanish Trademark and Patent Office data base for the words CECA MAGAN; the results from such search corresponded to Complainant’s registrations.
The disputed domain name was registered and/or maintained for the sole purpose of selling it to Complainant, its competitors or other interested parties.
Respondent’s offer to sell the disputed domain name for the amount of USD50,000.00, which constitutes an offer in excess of Respondent´s out-of-pocket costs, constitutes bad faith use within the Policy. Furthermore, Respondent’s rejection of all offers below such amount is further evidence of Respondent´s exclusive desire to profit in bad faith from the transfer of the disputed domain name. Prior UDRP panel decisions have found that the offering to sell a domain name by advertising it to the public in general is evidence of bad faith and is properly considered as an offer to Complainant or a competitor. Respondent, through the Registrar GoD, Inc., offered to sell -independently of the buyer- the disputed domain name for an amount of USD50,000.00, this evidences Respondent´s intention to offer the disputed domain name to the public at large.
By using the disputed domain name, Respondent has intentionally attempted to attract for commercial gain, Internet users to another website, by creating a likelihood of confusion with Complainant´s mark and common law marks. The disputed domain name contains links to other websites of Spanish law firms. Respondent is making a non-legitimate use of the disputed domain name by using it with the intent to mislead and for commercial gain by diverting consumers, through links to competing Spanish law firms. Such has been considered by prior panel decisions as an illegitimate unfair use of the disputed domain name since Respondent obviously knew or should have known of Complainant’s rights in the disputed domain name.
Furthermore, Respondent owns about 599 other domain names, thus, it is expected that someone dealing with domain names on a regular basis should be familiar with the due process related to domain names and trademarks in order to avoid the use of someone else’s rights in connection with a domain name. Thus it is reasonable to expect that Respondent knew or at least should have known of Complainant’s rights conflicting with the disputed domain name. It is a clear case of willful blindness from Respondent in relation with the disputed domain name.
Complainant requests that the disputed domain name be transferred to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion And Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of a proper response from Respondent does not automatically result in a favorable decision for Complainant1. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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. A. Identical or Confusingly Similar
Complainant asserts he has used CECA MAGÁN and CECA MAGÁN ABOGADOS since 1976 to identify his legal practice2.
It is very common that legal services are marketed under the last name of the individual that renders such services, particularly where such individual is a solo practitioner. Further, many firms of professional services (for instance, accountants and lawyers) bear on the last names of their founders or principals and market their services under such last names.
Complainant has established that CECA MAGÁN identifies him and the legal services he provides (personally and through his law firm Ceca Magán Abogados, S.L.) and that both he and CECA MAGÁN are widely known in the legal arena in Spain and internationally.
It is undisputed that Complainant has rights over the mark CECA MAGÁN, which Complainant has used to identify and promote the legal services he provides personally and through his law firm Ceca Magán Abogados, S.L. (the latter being the holder of the mark registration for CECA MAGÁN ABOGADOS and the domain name registration ). Thus it may be validly inferred that the public has come to recognize CECA MAGÁN as a mark that identifies and distinguishes the legal services provided by Complainant and his law firm from the legal services provided by others3.
The disputed domain name entirely incorporates CECA MAGAN which are also Complainant’s last name. Further, such words are the distinctive part of the registered mark CECA MAGÁN ABOGADOS4. Such words have no meaning other than being Complainant’s last name.
Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant’s marks. B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that Respondent is not affiliated with Complainant or his law firm and that neither Complainant nor his law firm has authorized Respondent to use CECA MAGAN. Further, Complainant asserts that Respondent has never been commonly known by the disputed domain name. Complainant has established that Respondent does not have any mark registration for CECA MAGAN in Spain or the United States of America (country where Respondent is domiciled as per the Registrar’s report).
There is evidence in the file showing that Respondent is using the disputed domain name in order to divert Internet users to a website with advertisements of, and links leading to, other law firms and thus Respondent is clearly taking advantage of Complainant’s reputation with the purpose of diverting Internet users to other websites unrelated to Complainant. Such use of Complainant’s mark by Respondent does not establish rights or legitimate interests of Respondent in the disputed domain name.5
In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using the disputed domain name which incorporates Complainant’s last name and mark, this Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name6.
Based on the aforesaid, this Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith.
There is ample evidence in the file showing that Complainant has been widely known under his last name since many years before Respondent acquired the disputed domain name and that his surname has acquired substantial prestige in the legal field identifying Complainant and the legal services he renders. Here again, the fact that Complainant’s law firm has registered CECA MAGÁN ABOGADOS (and design) after the creation of the disputed domain name is irrelevant since Complainant has been widely known under his last name (in which he acquired trademarks rights) many years before the creation of the disputed domain name.
The website associated to the disputed domain name shows advertisements of other law firms. Taking into consideration that Complainant provides legal services, his recognition, his published works, listings in specialized directories, and the fact that CECA MAGÁN corresponds exactly to Complainant’s last name with no other meaning, this Panel considers that Respondent should have been aware of the existence of Complainant and Complainant’s law related services at the time it acquired the disputed domain name.
Likewise, using a disputed domain name, which entirely incorporates another’s mark, and the website associated to it to show links to, and to advertise services of Complainant’s competitors and other legal service providers, constitutes an improper use of Complainant’s mark and is evidence of Respondent’s bad faith.7
Furthermore, Respondent’s attempt to sell (through the Registrar) the disputed domain name for an amount well in excess of its registration cost is also indicative of bad faith registration and use8.
In light of the above, this Panel finds 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, this Panel orders that the disputed domain name be transferred to Complainant.
Gerardo Saavedra
Sole Panelist
Dated: August 30, 2011
1 See Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465: “[…]the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
2 The term in Spanish abogados means attorneys-at-law, lawyers.
3 See Steven Rattner v. BuyThisDomainName (John Pepin),WIPO Case No. D2000-0402; Luis Cobos v. West, North (Nick Handle: JNMTOKTCQD),WIPO Case No. D2004-0182.
4 The fact that Complainant’s law firm has registered CECA MAGÁN ABOGADOS (and design) after the creation of the disputed domain name is irrelevant for purposes of the analysis under paragraph 4(a)(i) of the Policy. See Valve Corporation v. ValveNET, Inc., ValveNET, Inc., Charles Morrin,WIPO Case No. D2005-0038.
5 See Pfizer Inc v. The Magic Islands,WIPO Case No. D2003 0870; Champagne Lanson v. Development Services/MailP, Inc.,WIPO Case No. D2006-0006; and Deloitte Touche Tohmatsu v. Supervision Audio Video Inc Search-U,WIPO Case No. D2011-0187.
6 See INTOCAST AG v. LEE DAEYOON,WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given [...] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.
7 See Microsoft Corporation v. Gioacchino Zerbo,WIPO Case No. D2005-0644: “It may be inferred that the Respondent did register the domain name in dispute on purpose, to disrupt the Complainant’s business, as it used the domain name with sponsored links to competitors”. Bartercard Ltd & Bartercard International Pty Ltd . v Ashton-Hall Computer Services,WIPO Case No. D2000-0177: “the Domain Name has been used to host a website offering competing products to those offered by the Complainant [...] this suggests that the Respondent registered the Domain Name with the primary intention of disrupting the business of a competitor [...] It also indicates that the Respondent has used the Domain Name to attract Internet users to its website for commercial gain by virtue of confusion with the Complainant’s mark [...] Under the Policy, both of these are sufficient to show registration and use of the Domain Name in bad faith”.
8 See, BellSouth Intellectual Property Corporation v. Jaclyn aka Jaclyn Thoms,WIPO Case No. D2001-1409; CBS Broadcasting, Inc. v. Gaddoor Saidi,WIPO Case No. D2000-0243; Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304.
Full & Egal Universal Law Academy