The Complainant is Unidad Editorial S.A., Unidad Editorial Informacion Deportiva S.L.U of Madrid, Spain represented by Balder IP Law, SL, Spain.
The Respondent is Rami Obeidat, YOOPixel of Amman, Jordan. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2012. On October 31, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 1, 2012, 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 November 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2012.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on December 13, 2012. 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 is the owner of several registrations of the trademark MARCA, including inter alia
- Spanish trademark nº 1140609 MARCA (wordmark), registered for “an illustrated weekly magazine” (class 16) as of December 10, 1938;
- Spanish trademark nº 2,951,990 MARCA (device in red), registered for “publications, magazines and newspapers” (class 16), as well as “radio and television broadcast services” (class 38) as of June 5, 1990.
These are referred to in this decision as the Trademarks.
The Respondent registered the Domain Name on April 9, 2012 and the Domain Name on July 9, 2012. 5. Parties’ Contentions A. Complainant
The Complainant states that it is a leading multimedia group within the global communications sector in Spain and owns almost fifty mass media outlets, reaching an estimated 20 million people. Its publications include the leading Spanish sports newspaper MARCA which has in excess of 2.8 million readers, and its digital version under the domain name , which has 2.8 million unique daily visitors.
According to the Complainant, the Trademarks and the Domain Names are confusingly similar, in that they are composed of the trademark MARCA and the descriptive word "Arabic", suggesting that it is an Arabic version of or a website linked to the MARCA newspaper.
Respondent has no rights or legitimate interests in the Domain Names. It does not have a trademark to the name “Arabicmarca” in the European Union, while the website linked to the Domain names offers sports information, mainly concerning European countries, including Spain.
The Domain names have been registered in bad faith since the Respondent could have been aware of the Complainant's rights to the Trademarks when registering the Domain Names in 2012. They are being used in bad faith, since the website under the Domain Names is similar in lay out, use of colours and contents to the Complainant's website under ”www.” and even displays a copy of the Marca sports newspaper. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has shown that it has rights in the MARCA trademarks.
MARCA and the Domain Names are confusingly similar, because they only differ by the generic word “arabic”, while the suffix “.com” and the suffix ".net" are generally recognized as denoting generic top level domains and are therefore generic or descriptive elements which do not change the confusing similarity. Therefore, the Panel concludes that the Domain Names are confusingly similar to Complainant’s trademark. B. Rights or Legitimate Interests
Once a Complainant establishes a prima facie case against a respondent in relation to this element, the burden is on the Respondent to provide concrete evidence of its rights or legitimate interests under paragraph 4(c) of the Policy: Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.
The Complainant has inferred that it has not licensed or otherwise authorized the Respondent to use the Domain Names. Furthermore, there is no evidence that Respondent was known by the Domain Names, or that it has a right to a trademark or company name "Arabicmarca".
Based on the evidence submitted, the Panel concludes that the Domain Names (which are currently not connected to a website) at some stage connected to a website displaying information on European sports (including Spanish soccer) in a lay out which is similar to that of the Complainant's website at “www.”. The Panel notes that, since the link with the website currently is not active, it relies on the documentary evidence provided by the Complainant, which has not been refuted by the Respondent.
This evidence shows that the Domain Names are not being used (and were not used in the past) in connection with a bona fide offering of goods or services.
Therefore, the Panel concludes that Respondent has no rights or legitimate interests in the Domain Names. C. Registered and Used in Bad Faith
The registrations of the Trademarks predate the registration of the Domain Names by at least 21 years. The Panel deems it likely that Respondent was aware of the Trademarks when registering the Domain Names. A simple trademark register search would have informed the Respondent of the existence of the Complainant’s trademarks, while a Google search on “marca” as carried out by the Panel, gives as the first result the Complainant’s website under “www.” and, as the second result, an entry in Wikipedia referring to the sports newspaper Marca and the Complainant.
Therefore, even if the Respondent had not actually been aware of the Trademarks, a small effort on its part would have revealed those rights. If the Respondent has not made that effort, this comes for its accord, since that would imply that the Respondent has been willfully blind to such rights.
Taking also into account the circumstances referred to under section B above, in particular the fact that the website under the Domain Names displayed, at least until recently, information on European sports (including Spanish soccer) in a lay out similar to that of the Complainant's website under “www.”, while even displaying a cover of the Marca sports newspaper of the Complainant, the Panel concludes that the Respondent has registered and uses the Domain Names to attempt to attract Internet users to its website, by creating a likelihood of confusion with the Complainant's Trademarks as to the source, affiliation, or endorsement of the Respondent’s website. The Panel also deems it likely that the fact that no website is currently connected to the Domain Names – which connection apparently was undone after the Complaint was filed – is to obscure this previous use of the Domain Names from the Panel's view.
Under these circumstances, the Panel concludes that the Domain Names were registered and are 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 Names and be transferred to the Complainant.
Wolter Wefers Bettink
Sole Panelist
Date: December 27, 2012
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