The Complainant is YPF S.A. of Buenos Aires, Argentina, represented by Richards, Cardinal, Tutzer, Zabala & Zaeferrer, Argentina.
The Respondent is Joseba Menoyo of Barcelona, 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 November 17, 2014. On November 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2014, 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 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2014.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on January 8, 2015. 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 stock corporation organized under the laws of Argentina, dedicated to the exploration and production of oil and gas and to the transportation, refining and marketing of gas and petroleum products.
The Complainant has a network of gas stations with market shops that sell consumer goods in Argentina.
In 1998 the Complainant developed a commercial program called “YPF serviclub” in which consumers that made purchases at the Complainant’s gas station, using its YPF serviclub card, received reward points that could be exchanged for discounts, or that could be used to purchase of certain products.
The Complainant owns the following trademark registrations, among others: Registration No. Trademark Country Class Registration Date
2125770
YPF SERVICLUB GNC (stylized)
Argentina
35
November 08, 2006
2125772
YPF SERVICLUB GNC (stylized)
Argentina
37
November 08, 2006
2055381
SERVICLUB Y P F
Argentina
45
May 31, 1995
2055379
SERVICLUB Y P F
Argentina
43
May 31, 1995
2128865
SERVICLUB Y P F
Argentina
41
May 08, 1996
3035431
SERVICLUB (stylized)
Argentina
36
October 02, 2000
The Complainant has filed sufficient evidence to demonstrate that it also owns other trademark registrations in Argentina comprising the term “serviclub”.
In addition, the Complainant owns the following domain name registrations: Domain Name Registration Date
October 14, 1998
May 3, 2002
May 3, 2000
The disputed domain name was registered on April 16, 2014. 5. Parties’ Contentions A. Complainant
The Complainant argues the following:
(i) Identical or Confusingly Similarity
That it uses several trademarks related to the YPF Serviclub program.
That it owns a number of trademarks related to its corporate name “YPF” in Latin America, evidencing the notoriety of YPF in said region.
That the YPF serviclub program currently includes more than seven hundred thousand active participants.
That at the time of registration of the disputed domain name, the Complainant had a significant number of gas stations across Argentina with advertisements of its corporate name and the YPF serviclub program.
That the disputed domain name is confusingly similar to the Complainant’s SERVICLUB and YPF SERVICLUB trademarks because it is related to the main element of the YPF serviclub program, which is its catalogue of benefits.
That Internet users may believe that there is a connection between the disputed domain name and the YPF serviclub program and its catalogue of benefits.
That the word “catálogo” (Spanish for catalogue) is a key word in the YPF serviclub program because by means of the catalogues of the YPF serviclub program, its participants can find out how many points are needed to obtain their rewards (such as discounts, or products).
That the “common man” surfing the web in search for the YPF serviclub catalogue is likely to confuse the disputed domain name with an official site of the Complainant.
That the great majority of the results (obtained from searches conducted inside engines such as Google, Yahoo or Bing) for the words “serviclub” and “catalogo” are related with the Complainant.
That the content of the web page to which the disputed domain name resolves, resembled and imitated an official YPF website, a fact that adds to the confusing similarity.
(ii) Rights or Legitimate Interests
That the Respondent is not the owner of any trademark similar to YPF, SERVICLUB YPF or SERVICLUB and that the Complainant has never authorized the use of its trademarks to the Respondent.
That there is convincing evidence (mainly a notarial deed of the content of the web page to which the disputed domain name resolves) demonstrating that the Respondent was trying to imitate the website of the YPF serviclub program.
That from said notarial deed it is shown that on the website to which the disputed domain name resolves: a) the Respondent reproduced without any authorization from the Complainant, the trademarks YPF SERVICLUB and SERVICLUB; b) the Respondent provided information related to the YPF serviclub program giving a false impression to the users as if he, the Respondent and her site were associated to the Complainant; c) the Respondent tried to resemble a website that looked as similar as possible to the official site of the Complainant; d) the Respondent is making a profit by displaying several advertisements on said web page.
That it is evident that the Respondent has never been known as YPF SERVICLUB or as SERVICLUB and is not making a legitimate noncommercial or fair use of the disputed domain name.
(iii) Bad Faith
That, since the Respondent is plagiarizing the Complainant’s copyrighted material and trademarks on the website to which the disputed domain name resolves, there is no plausible way in which the Respondent could argue that he did not know about YPF, or the YPF serviclub program when registering the disputed domain name.
That the Respondent is preventing the Complainant from reflecting its trademark in the disputed domain name and has engaged in a pattern of such conduct.
That there is convincing evidence showing that the Respondent has registered thirty three other domains in potential infringement of the intellectual property of other companies.
That the Respondent’s use of the disputed domain name suggests opportunistic bad faith.
That by registering the disputed domain name, the Respondent intentionally attempted to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant is requested to prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to a trademark 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) The disputed domain name has been registered and is being used in bad faith.
As the Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all (or some) of the Complainant’s reasonable allegations (Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487). A. Identical or Confusingly Similar
The Complainant is the owner of trademark registrations that cover the YPF SERVICLUB GNC, SERVICLUB Y P F brand, and the SERVICLUB brand.
The disputed domain name is confusingly similar to the Complainant’s trademarks because it entirely incorporates the SERVICLUB trademark and a part of the YPF SERVICLUB GNC, and the SERVICLUB Y P F trademarks.
The addition of a generic term such as “catalogo” (Spanish for “catalogue”) has little effect on the confusing similarity between the disputed domain name and the Complainant’s trademarks, due to the fact that the mere addition of generic or descriptive terms does not prevent the likelihood of confusion (see Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
Moreover, the Complainant has shown that the catalogues of the Complainant are an important part of the YPF serviclub campaign (see Exhibit 5 to the Complaint).
This Panel notes that the “YPF serviclub catalogues” display all the products that the Complainant offers to the corresponding users as a reward for using the YPF serviclub service.
Therefore, the term “catalogo” increases the possibilities of confusion between the disputed domain name and the Complainant’s trademarks due to the fact that an average Internet user might think that the website to which the disputed domain name resolves, is associated with, or sponsored by the Complainant.
The addition of the generic Top-Level Domain (“gTLD”) suffix “.com” in this case is immaterial for purposes of assessing confusing similarity. To carry into effect the confusing similarity analysis, a UDRP panel will generally not take into account the gTLD “.com”, because it has no legal significance (see Diageo p.l.c. v. John Zuccarini,WIPO Case No. D2000-0541).
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The first requirement of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name:
(i) Before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to 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; or
(ii) The respondent (as individual, business, or other organization) has been commonly known by the disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence showing that the Complainant has granted any license to the Respondent, or authorized the Respondent to use the trademarks YPF SERVICLUB GNC, SERVICLUB YPF and SERVICLUB in any manner.
The Respondent did not provide any evidence showing actual rights or legitimate interests, a situation that further indicates the apparent lack of rights or legitimate interests on the part of the Respondent (see Beyoncé Knowles v. Sonny Ahuja,WIPO Case No. D2010-1431; Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272).
The Respondent did not submit any evidence showing any bona fide use, or preparations to use the disputed domain name with a bona fide offering of goods and services, nor has the Respondent demonstrated that she has been commonly known as , or that she is making a legitimate noncommercial or fair use of the disputed domain name.
Moreover, the Respondent was apparently making a commercial use of the disputed domain name most likely by profiting from the advertisements that were displayed on the website to which it resolved.
Exhibit 13 to the Complaint, also shows that the Respondent was displaying the Complainant’s trademarks on the website to which the disputed domain name resolved, and posted on said site content that made it look like it was the official site of the Complainant, thus attracting and diverting Internet users for commercial gain (see Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413).
As previous UDRP panels have stated “An infringing use of Complainant’s trademark cannot give rise to a legitimate right or interest on the part of Respondent (the Policy 4(a)).” (see The Chase Manhattan Corp. et al. v. Whitely,WIPO Case No. D2000-0346; AutoNation, Inc. v. Paul Schaefer, WIPO Case No. D2001-0289).
Since the Respondent is making a commercial use of the disputed domain name without permission or consent of the Complainant, and considering that the Respondent knows about the existence of the Complainant’s trademarks, the Panel finds no rights or legitimate interests on the side of the Respondent.
The second requirement of the Policy has been fulfilled. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to it’s website or other on-line 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 Complainant argues that the Respondent has registered thirty three other domain names that potentially infringe the intellectual property of other companies, and that the Respondent has engaged in a pattern of registering the corporate or trade names of third parties with which the Respondent has no connection, a situation that constitutes bad faith under paragraph 4(b)(ii) of the Policy.
However, the Complainant did not provide sufficient evidence to support these allegations, which is why this argument is dismissed.
However, from the evidence found in the case file, it is safe to conclude that the Respondent knew about the Complainant´s trademarks when registering the disputed domain name.
The disputed domain name is currently inactive. However, Exhibit 13 to the Complaint shows that the disputed domain name resolved to a web page that resembled the official site of the Complainant, which is likely to have caused confusion among Internet users by making them believe that the website associated to the disputed domain name was sponsored or endorsed by the Complainant.
The Respondent knew or should have known that by registering the disputed domain name, she would create confusion among Internet users searching for the Complainant’s’ websites, programs and catalogues.
The notarial deed found in Exhibit 13 shows that on the web site to which the disputed domain name resolved, the Respondent displayed some advertisement links that most likely generated pay per click revenue in her favor.
The fact that the web site to which the disputed domain name resolved gave the impression of being an “official website” or at least a site that was endorsed by, or affiliated with the Complainant, and the fact that this activity likely resulted in profits for the Respondent, show that the Respondent by registering and using the disputed domain name ) has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name, with the purpose of attracting Internet users to her web sites for commercial gain (see Produits Berger v. Romana Go,WIPO Case No. DPH2005-0001; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, supra; Asian World of Martial Arts Inc. v. Texas International Property Associates, supra; Owens Corning v. NA,WIPO Case No. D2007-1143).
In light of the above, the Panel concludes that the Respondent registered and used the disputed domain name in bad faith. The third element of the policy has been fulfilled. 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.
Kiyoshi Tsuru
Sole Panelist
Date: January 22, 2015
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