The Complainant is Elektra Trading & Consulting Group, S.A. de C.V. of Mexico City, Mexico, represented by Olivares & Cia, Mexico.
The Respondent is Domains by Proxy, LLC of Scottsdale, Arizona, United States of America (“US”) / LeaseD of Palos Park, Illinois, US. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2013. On February 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 1, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 7, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 12, 2013.
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 March 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2013.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on April 12, 2013. 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 a company incorporated in Mexico which, under the ITALIKA brand, has been selling and maintaining motorcycles since 2005. According to the Complainant, it has become the leading motorcycle manufacturer in Mexico, selling more than 300,000 units a year and serving more than one million clients in Mexico and Latin America. The Complainant holds seven trade mark registrations for ITALIKA in Mexico for products and services relating to motorcycles, with the oldest registration dating back to November 26, 2004. The Complainant registered the domain names and on April 20, 2005 and July 13, 2009 respectively.
The Respondent is a company based in the US. It registered the Disputed Domain Name on December 13, 2001 under a proxy service. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
(a) Disputed Domain Name is identical or confusingly similar to the Complainant’s ITALIKA trade mark, in which the Complainant has rights:
(i) Complainant is the holder of seven trade mark registrations for ITALIKA in Mexico, covering products and services relating to motorcycles. The first of these registrations date back to November 26, 2004;
(ii) Disputed Domain Name is identical to the Complainant’s ITALIKA trade mark and incorporates the ITALIKA trade mark in its entirety; and
(iii) the generic top-level domain name (“gTLD”) extension is irrelevant in determining identity or confusing similarity to the trade mark.
(b) Respondent does not have rights or legitimate interests in the Disputed Domain Name:
(i) Respondent does not own any trade marks for ITALIKA, is not commonly known by the name ITALIKA, and has not done business under that name;
(ii) Complainant has not authorised the Respondent to own or use any domain name incorporating the ITALIKA trade mark;
(iii) Disputed Domain Name is not being used in connection with a bona fide offering of goods or services or for legitimate fair use purposes. Since 2009, the Disputed Domain Name contained hyperlinks advertising third party websites (“Links”), including websites of companies unaffiliated with the Complainant selling motorcycles and their parts; and
(iv) Complainant’s ITALIKA trade mark has been well known in Mexico since 2006. The Respondent must have been aware of the Complainant’s rights to the ITALIKA trade mark in 2009, when it started to link the Disputed Domain Name to third party websites relating to motorcycles and their parts.
(c) Disputed Domain Name has been registered and is being used in bad faith:
(i) Linking the Disputed Domain Name to third party websites which relate to motorcycles and their parts, the Respondent has been using the Disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website; and
(i) Respondent's use of a privacy or proxy registration service to conceal its true identity. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) 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 ITALIKA trade mark on the basis of its various registrations in Mexico dating back to 2004.
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 should be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Disputed Domain Name is identical to the ITALIKA trade mark. The Panel accordingly finds that the Disputed Domain Name is identical or confusingly similar to the ITALIKA trade mark in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied. 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 trade mark 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 trade mark or service mark at issue.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the 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 accepts that the Respondent is not a licensee nor associated with the Complainant in any way that could give rise to any licence, permission or other right by which the Respondent could own or legitimately use the Complainant’s ITALIKA trade mark. The Panel further accepts that the Respondent has not provided any evidence to demonstrate a registration of an ITALIKA trade mark anywhere in the world nor any evidence that it has become commonly known by the Disputed Domain Name (paragraph 4(c)(ii) of the Policy). Accordingly, the Panel is of the view that a prima facie case is established and it is for the Respondent to prove it has rights or legitimate interests to the Disputed Domain Name. As the Respondent did not submit a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
The Respondent “parked” the Disputed Domain Name with advertisements automatically generated by a parking company. If the Links are genuinely based on the generic value of a domain name, that generally would be a fair use because there are no trade mark rights implicated by the landing page (Landmark Group v. DigiM, L.P., NAF Claim No. 285459). However, if the parking pages or Pay-Per-Click links on the Disputed Domain Name resolve to websites where goods or services competitive with those of the Complainant are shown, the use of a Disputed Domain Name would not confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415).
As demonstrated by the Complainant’s evidence, the Links resolve to websites of the Complainant’s competitors. Furthermore, the Links are not in relation to the term “italika”, but rather, are specifically targeted to the advertisement and promotion of products and services relating to motorcycles, the exact type of product and service sold by the Complainant under its ITALIKA mark. Since the term “italika” has nothing to do with motorcycles, the fact that the hyperlinks are in relation to the Complainant’s products make clear that the Links are based on the value of the Complainant’s trade mark. As a result, the Panel is of the opinion that the Disputed Domain Name was not being used by the Respondent in connection with a bona fide offering of goods and services (paragraph 4(c)(i) of the Policy).
Lastly, it is also clear that no legitimate noncommercial or fair use is being made of the Disputed Domain Name without intent for commercial gain (paragraph 4(c)(iii) of the Policy). There is a hyperlink on the bottom of the Disputed Domain Name indicating that the Disputed Domain Name is for sale. The hyperlink resolves to ”www.god” which announces that the Disputed Domain Name is up for auction until May 29, 2013. As of April 17, 2013, the price for the Disputed Domain Name was USD 48,800. Given the above, it is evident that there is commercial gain involved.
Consequently, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The third requirement that the Complainant must demonstrate to succeed is that the Disputed Domain Name has been registered and used in bad faith.
Under paragraph 4(b) of the Policy, the following circumstances shall be evidence that a respondent has registered and used a domain name in bad faith if:
(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.
As addressed in the preceding heading, the Disputed Domain Name is “parked” and used to automatically generate sponsored links. Previous UDRP panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content as in the case with automatically generated hyperlinks. Whether the presence of advertising or links under such arrangement would constitute evidence of bad faith would depend on whether or not the Respondent can show some good faith attempt toward preventing inclusion of links which profit from trading on the Complainant’s mark (Owens Corning v. NA, WIPO Case No. D2007-1143).
In this case, the Panel finds that the sponsored Links create a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Disputed Domain Name, as established by the fact that the Disputed Domain Name is confusingly similar to the Complainant’s ITALIKA trade mark and the Complainant’s own domain names. Given that the website at the Disputed Domain Name includes hyperlinks to sites offering competing products to the Complainant aggravates the likelihood of confusion. As a result, the Panel accepts that the Respondent is using the Disputed Domain Name in bad faith.
However, for a complainant to succeed under the paragraph 4(a)(iii) of the Policy, it is incumbent to show that the relevant domain name was both registered in bad faith and used in bad faith. Often it is possible to infer bad faith registration from bad faith use. Nevertheless, each of these aspects of the Policy is distinct and both must be shown.
Paragraph 3.1 of the WIPO Overview 2.0 states that generally speaking, although the Complainant’s trade mark can form a basis for a UDRP action under the first element irrespective of its date, when a domain name is registered by the respondent before the complainant's relied-upon trade mark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.
The Disputed Domain Name was registered on December 13, 2001, which is three years before the Complainant first registered its ITALIKA trade mark in 2004, and almost four years since the Complainant first registered the domain name in 2005. The Complainant has not submitted any evidence to show that it has been using the ITALIKA mark prior to its trade mark registration in 2004 when it started using the ITALIKA mark on a new line of motorcycles. Accordingly, the Panel is of the view that the Respondent did not register the Disputed Domain Name in bad faith since it could not have been aware of the Complainant’s then non-existent mark (See Witmer Public Safety Group, Inc. v Kwang Pyo Kim, WIPO Case No. D2011-0075).
Lastly, the Complainant asserts that bad faith exists because the Respondent used a privacy or proxy registration service. The extent that a privacy or proxy registration service would amount to bad faith depends on the manner in which such service is used. For example, bad faith may be established if the Respondent used a privacy service in combination with incomplete contact information or continued concealment of the true registrant upon a UDRP provider’s request for information (The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438). in this case, while the Respondent used a proxy service to register the Disputed Domain Name, in the Panel’s view, the Respondent did not deliberately continue to conceal its identity upon the institution of this UDRP proceeding. Consequently, the Panel does not find that the Respondent’s mere use of a proxy service is enough to amount to bad faith.
On balance, the Panel concludes that the Complainant fails to provide sufficient evidence to conclude that the Disputed Domain Name was registered in bad faith. The Complaint therefore fails to fulfill paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Gabriela Kennedy
Sole Panelist
Date: April 26, 2013
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