The Complainant is Panrico S.A. of Barcelona, Spain, represented by Curell Suñol, S.L.P., Spain.
The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America ("US") / Arcelia Rivas Segovia of Valencia, Spain. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 28, 2014. On March 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 1, 2014, 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 April 7, 2014 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 April 11, 2014.
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 April 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on May 12, 2014. 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 Spanish corporation that acts in the field of food products and is one of the leaders in the Spanish market of pastry products.
The Complainant is the holder of a number of trademarks registrations such as:
- Spanish trademark No. 0948629, filed on July 18, 1980 and registered on September 5, 1981 to cover goods under International Class 30;
- Spanish trademark No. 1211248, filed on September 25, 1987 and registered on December 5, 1989 to cover goods under International Class 30;
PANRICO, Community trademark No. 002960144, filed on December 11, 2002 and registered on May 3, 2006, to cover goods under International Class 30.
The PANRICO trademark is to be considered well-known in Spain.
The disputed domain name was registered on March 13, 2014. 5. Parties' Contentions A. Complainant
The Complainant states that the disputed domain name is identical to the Complainant's trademark PANRICO. The Complainant also notes that the addition of a suffix corresponding to a generic top level domain (gTLD) such as ".net" is not relevant to appreciate this requirement.
With regard the second element, the Complainant alleges that it has never licensed, authorized or otherwise permitted the Respondent's use of the PANRICO's mark, that the Respondent is not the owner of any trademark application or registration for the term "panrico" and that the Respondent is not known under the name of "panrico" which does not coincide with the Respondent's name or surname.
The Complainant notes that the use of the disputed domain name to offer a pornography-related website cannot constitute a legitimate use.
With respect to the third element, the Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant's mark PANRICO is so distinctive that no one, especially in Spain, could legitimately choose it unless trying to trade off the Complainant's trademark rights. Thus, the disputed domain name was registered with the intention of taking unfair commercial advantage out of the fame associated with the Complainant's name and trademark so Internet users would be trapped when browsing information about the Complainant.
The Complainant also states that the domain name was registered in an attempt to disrupt the business of the Complainant.
In terms of the use of the disputed domain name by the Respondent, the Complainant argues that the Respondent is using the disputed domain name in bad faith to divert consumers seeking for the Complainant's website and therefore in an attempt to attempt to attrack, for commercial gain, Internet users to its website. Besides, the Complainants states that Respondent's use of the disputed domain name in connection with explicit pornographic images tarnishes the Complainant's trademark and reputation by suggesting to Internet users that the Complainant endorses, sponsors or is otherwise affiliated with the disputed domain name.
Finally, the Panel notes that the Complainant has evidenced in its Complaint that it has received an email from the Respondent on March 20, 2014 (before the Complaint was filed) where the Respondent argued not to be aware of the PANRICO trademark. B. Respondent
The Respondent did not file a Response to the Complaint. 6. Discussion and Findings
In order for the Panel to grant the remedy requested by the Complainant it is necessary that the Complainant proves, as required by paragraph 4(a) of the Policy, that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the 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.
The fact that the Respondent has not provided a Response to the Complaint does not relieve the
Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to "decide the dispute based upon the complaint". Under paragraph 14(a) of the Rules in the event of such a default the Panel is still required "to proceed with a decision on the complaint", whilst under paragraph 14(b) it "shall draw such inferences there from as it considers appropriate".
Thus, where a party fails to present its case with supporting evidence which is in its control, the panel may draw inferences based on the evidence available and particular circumstances of the case (see Mary-Lynn Mondich and American VintageWine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques,WIPO Case No. D2000-0004; State of Wisconsin v. Pro-Life Domains, Inc.,WIPO Case No. D2003-0432; La Caixa D'Estalvis I Pensions de Barcelona v. José Antonio Bernal,WIPO Case No. D2006-1637). Here, the Respondent has defaulted, and it is appropriate in the present case for the Panel to accept the reasonable assertions made by the Complainant and to draw adverse inferences of fact against the Respondent where appropriate. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
In the present case, the Complainant has presented evidence that it is the owner of registered trademarks for PANRICO and the disputed domain name incorporates the Complainant's PANRICO trademark in its entirety. Thus, and given that it is possible to disregard the Top-Level Domain ".net", the Panel finds that the disputed domain name is identical to Complainant's registered and incontestable mark.
The Panel, therefore, concludes that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. In this respect, the Complainant has established that it has not licensed or otherwise permitted the Respondent to use any of its trademarks, neither is the Respondent the owner of a corresponding trademark, nor is the Respondent known under the name "panrico".
Besides, the Panel finds that no right or legitimate interest can be recognized to the Respondent when the disputed domain name matches with the Complainant's well-known mark and yet is linked to a pornography-linked website.
The Respondent had the opportunity to file a formal Response to the Complaint in this administrative procedure but decided not to do so. The Panel is therefore entitled to draw the appropriate inferences against the Respondent. In any event, the PANRICO trademark is a well-known mark in Spain and the Panel does not believe that the Respondent was not aware of the PANRICO trademark before registering the disputed domain name, despite what has been alleged in the email sent to the Complainant on March 20, 2014.
In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the domain name and that the Complainant has therefore satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As indicated previously, the Complainant's trademark PANRICO has a strong reputation and recognition in Spain where both parties reside and the Panel finds implausible that the Respondent was unaware of the Complainant's trademark before registering the disputed domain name. Neither the Respondent's name nor its activities has any conceivable connection with the Complainant or its trademark. The registration of a well-known trademark of which the Respondent must reasonably have been aware may be considered as bad faith (see e.g Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163, Ints It Is Not The Same, Gmbh v. Carlos Gil BelmonteWIPO Case No. D2010-0456).
According to the Complainant's evidence, the Respondent's choice of the disputed domain name is designed to tarnish Complainant's mark PANRICO. The Panel notes that the disputed domain name itself has no pornographic or erotic connotations, and therefore finds that the Respondent's intention must have been either to attract the attention of Internet users interested in the Complainant, disrupt the Complainant's business or, to damage the Complainant's reputation and notoriety.
Moreover, the Panel would like to call attention to WIPO Overview of WIPO Panel Views on selected UDRP Questions (the "WIPO Overview 2.0"), second edition point 3.11, in which it is indicated that "[i]ntentional tarnishment of a complainant's trademark may in certain specific circumstances constitute evidence of registration and/or use of a domain name in bad faith. […] Tarnishment in this context normally refers to such conduct as linking pornographic images or wholly inappropriate information to an unrelated trademark.[…]".
In light of the above mentioned, the Panel finds that the Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration and use under the Policy. 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 disputed domain name be transferred to the Complainant.
Manuel Moreno-Torres
Sole Panelist
Date: May 22, 2014
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