The Complainant is YPF S.A. of Buenos Aires, Argentina, represented by Richards, Cardinal, Tutzer, Zabala & Zaeferrer, Argentina.
The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America (“United States”) / Daniel Omar Almada of Buenos Aires, Argentina. 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 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 November 20, 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 November 20, 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 November 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2014. The Respondent did not file a formal response. The Center received informal communications from the Respondent on November 20, 2014, and on November 21, 2014.
The Center appointed Antonio Millé as the sole panelist in this matter on January 12, 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 A. Complainant
It is a fact of public knowledge for any Argentinean that YPF is short for “Yacimientos Petrolíferos Fiscales” (“State Oilfields”) and that this entity it is an old oil company with gas stations practically in all the locations and routes of the country. It is hard to imagine a person in Argentina ignoring such circumstance and that those that buy products or services in these gas stations receive point for a “rewards program” or “loyalty program” called “Serviclub”.
As per the Complainant’s allegations, YPF “has a market share of 35% in Argentina in the oil and gas segment and employs almost 45.000 people directly and indirectly. YPF Trademarks are extremely well known in Argentina and other South American countries […] appears in TV commercials, advertisements in newspapers, webpages and magazines, billboards in the streets, etc.” As stated by the Complainant, the YPF Serviclub Program “is very popular and widely known in Argentina […] it includes more than 700,000 active participants […] YPF had a significant number of gas stations across the country holding the YPF trademarks, as well as an intense deployment of advertising for the corporate name and the YPF Serviclub program.”
With the copies annexed to the Complaint, the Complainant proved that it is the owner of YPF, SERVICLUB and YPF SERVICLUB / SERVICLUB YPF trademarks, duly registered in Argentina, as the following chart shows:
Trademark
Class
Registration No.
Date of registration
YPF
9
2413953
December 6, 2000
YPF
14
2413970
December 6, 2000
YPF
4
2427354
March 9, 2001
YPF
31
2241493
August 5, 2008
YPF
32
2241494
August 5, 2008
YPF
35
2241497
August 5, 2008
YPF
36
2241498
August 5, 2008
YPF
38
2241499
August 5, 2008
YPF
39
2241500
August 5, 2008
YPF
37
2241501
August 5, 2008
YPF
43
2241505
August 5, 2008
YPF
45
2241506
August 5, 2008
YPF
28
2245509
August 27, 2008
SERVICLUB
16
1805681
October 2, 2000
SERVICLUB
35
1805682
October 2, 2000
SERVICLUB
36
1805683
October 2, 2000
SERVICLUB
42
1805684
October 2, 2000
SERVICLUB YPF
42
2055378
December 1, 2005
SERVICLUB YPF
43
2055379
December 1, 2005
SERVICLUB YPF
44
2055380
December 1, 2005
SERVICLUB YPF
45
2055381
December 1, 2005
SERVICLUB YPF
16
2128862
November 21, 2006
SERVICLUB YPF
35
2128863
November 21, 2006
SERVICLUB YPF
36
2128864
November 21, 2006
SERVICLUB YPF
41
2128865
November 21, 2006
YPF SERVICLUB GNC
35
2125770
November 8, 2006
YPF SERVICLUB GNC
37
2125772
November 8, 2006
YPF SERVICLUB PROFESIONAL
35
2125773
November 8, 2006
YPF SERVICLUB PROFESIONAL
36
2125774
November 8, 2006
YPF SERVICLUB PROFESIONAL
37
2125775
November 8, 2006
The Complainant also alleges and demonstrates that they have registered the YPF trademark in Bolivia, Brasil and Paraguay, as well as the registration and use of different domain names containing their registered trademarks.
The Registrar confirmed to the Center that the disputed domain name was registered by the Respondent on July 9, 2014.
As per the Complainant’s assertions and the material evidence they provide, at the time of filing of the Complaint the disputed domain name resolved to a webpage displaying content similar to those of the official website of YPF “Serviclub” consumer rewards program. The Panel verified this circumstance by visiting the webpage to which the disputed domain name resolves. B. Respondent
In this case, the Complaint was originally brought against “Whois Agent, Whois Privacy Protection Service, Inc.”, a services provider for anonymity regarding domain names registrants. Then, the name “Daniel Omar Almada” was disclosed by the Registrar as that of the actual Registrant of the disputed domain name. The Panel has examined the circumstances and following the practices of the Center in privacy cases, has decided to consider both, the entity and the individual as the Respondent (hereafter referred to as the “Respondent”).
“Daniel Omar Almada” is supposedly an individual domiciled in Argentina. C. The Disputed Domain Name
The disputed domain name was registered on July 9, 2014. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint:
a) The disputed domain name “incorporates the trademarks ‘YPF’ and ‘SERVICLUB’ and ‘SERVICLUB YPF’, being such terms the only distinctive elements of the Domain Name” that “is confusingly similar to the YPF’s trademarks and creates a high level of confusion among the Internet users that see this domain name and reasonably believe that it belongs to an official YPF website, causing a high risk that Internet users may actually believe there to be a real connection between the Domain Name and the YPF Serviclub Program and its catalogue of benefits.” Adding that the Spanish word “catalogo” (“catalogue” in English) “is not only a common term but […] a fundamental one within the framework of the YPF Serviclub Program.”
b) “[…] there is a malicious and unlawful conduct by the Respondent who included – without any consent or authorization granted by YPF – YPF’s Trademarks, in order to achieve some sort of ‘pirate’ website of the YPF Serviclub Program. […] The Respondent has not used the Domain name in connection to a bona fide offering of goods and services […] since the Respondent is neither the owner nor the administrator of the YPF Serviclub Program and has no right to use YPF’s Trademarks or advertise the YPF Serviclub Program in any way. […] The only unfair purpose of the Respondent is gain money from deceiving consumers and from the unlawful use of YPF’s trademarks.”
c) “The trademark ‘SERVICLUB YPF’ was first registered three decades ago and nowadays it is still registered by YPF under several trademark classes […] the circumstance that both YPF and the Respondent have addresses […] in Argentina clearly show that the Respondent knew the existence of the aforementioned trademarks before registering the Domain Name […] There is not plausible way in which the Respondent could argue that he did not know about YPF or the YPF Serviclub Program, especially when he plagiarizes YPF’s copyright and trademark material all over his/her website. […] The Respondent developed an entire website using YPF’s Trademarks and logos and incorporated YPF’s ‘look and feel’ to make Internet users believe that the Domain Name was hosting an official YPF’s website.”
d) The Complainant makes reference to a request for a temporary injunction filed in the Federal Civil and Commercial Court of the City of Buenos Aires, which was allegedly granted on September 30, 2014. B. Respondent
The Respondent, and its administrative contact, sent on November 20 and 21, 2014 informal communications in Spanish to the Center by electronic mail, condemning the disclosure by the Registrar of their “private data” and an alleged invasion to their “privacy”, and requesting to be removed from the dispute. The Center acknowledged these communications and informed the parties that in relation to the notification of the Complaint the Center is obliged to notify the Complaint to “the listed registrant of record and contact details as listed in the WhoIs data, or such as may be provided by the applicable Registrar”. The Respondent did not submit any further comments and their referred communications do not accomplish the formal requirements of a Response, nor did their content include any substantive response to the Complainant’s contentions in matter of facts or of rights. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant has used and registered its trademark in different countries and for a long period of time, predating all the trademark registrations date the date of registration of the disputed domain name.
The relevant part of the disputed domain name wholly incorporates the Complainant’s trademarks, and the addition of the word “catalogo” does not make any difference to eliminate the confusing similarity, as per the doctrine consistently held by UDRP panels. See:
- Complainant has shown that it owns numerous MICHELIN trademark registrations for products, including tourist guides and maps, in a considerable number of countries around the world. MICHELIN is a famous trademark, and its tourist guides are notorious. The word “guia” is the Spanish term that corresponds to the English word guide and is, therefore, a generic term for tourist guides. The addition of a generic term to a famous mark is not sufficient to avoid confusion. Chanel, Inc. v. Estco Group,WIPO Case No. D2000-0413; and Parfums Christian Dior v. Netpower,WIPO Case No. D2000-0022. The Panel therefore finds that the Domain Name at issue is confusingly similar to Complainant’s trademark. Compagnie Générale des Etablissements Michelin-Michelin & Cie. v. Tgifactory,WIPO Case No. D2000-1414; and
- The distinctive part of the Complainant’s trademark, “ARMANI”, constitutes the core element of the Domain Name. It is indeed obvious that although the Respondent’s Domain Name is composed out of the word “armani” and the (descriptive) word “boutique”, the first of these terms is incontestably the principal part of the Domain Name. In this view, the Administrative Panel finds that the Domain Name is confusingly similar to the Complainant’s trademarks. Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. GA Modefine S.A. v. Mark O'Flynn,WIPO Case No. D2000-1424.
Moreover, in determining the similarity of two marks, points of similarity are weighed more heavily than points of difference. See GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1206 (9th Cir. 2000); Brookfield Communs, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054-55 (9th Cir. 1999).
The Panel therefore finds that because the disputed domain name contains the dominant elements “ypf” and “serviclub”, it is confusingly similar to the Complainant’s YPF, SERVICLUB, SERVICLUB YPF, YPF SERVICLUB GNC and YPF SERVICLUB PROFESIONAL trademarks and holds that the Complainant fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, rights or legitimate interests in a domain name may be demonstrated by showing that:
(i) before any notice of the dispute, the respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) the respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain or to misleadingly divert customers or to tarnish the trademark at issue.
In the present case, the Respondent has not answered to the Complaint and therefore, it has not given any basis to a right or legitimate interest in respect of the use of the trademarks YPF and SERVICLUB, SERVICLUBYPF, or YPFSERVICLUB in the disputed domain name. The use of the disputed domain name to lead Internet users to a “look alike” website and the evident possibility of confusion for those Internet users have been alleged by the Complainant and supported by convincing evidence.
Furthermore, the Panel has taken into consideration: a) the complete difference between the Respondent’s name and the disputed domain name; b) that the Respondent does not appear to be using the disputed domain name in connection with a bona fide offering of goods or services; c) that there is no evidence that the Respondent is commonly known by a denomination similar to the disputed domain name; and d) that all the factual circumstances suggest that the Respondent is making a commercial use of the disputed domain name, with the intent for commercial gain by means of misleadingly diverting consumers.
It is well established that the Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, after which the burden of production shifts to the Respondent (see, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent files no response (see Accor v. Eren Atesmen,WIPO Case No. D2009-0701 citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005). Previous UDRP panel decisions in cases where no sign of rights or legitimate interests in the domain name was apparent, and the respondent did not make any attempt to rebut the prima facie case made by the complainant, have stated that the panel may decide the dispute on the basis of the complainant’s undisputed contentions of facts. Although the respondent’s default does not automatically result in a decision in favour of the complainant, the panel may draw negative inferences from the same (see Unilever N.V. v. Kentech,WIPO Case No. D2005-1021).
On this basis, the Panel finds that the Respondent failed to produce any evidence to establish rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the second requirement of paragraph 4(a) of the Policy is met. C. Registered and Used in Bad Faith
The Complainant based the Complaint on this point on the existence of the circumstances set out in paragraph 4(b) of the Policy regarding the registration and use of the disputed domain name in bad faith.
The disputed domain name was registered by the Respondent long after the Complainant’s trademarks were registered in different countries.
The registration and use of a well-known trademark as domain name seems to the Panel a typical expression of the conduct of those that “intentionally attempted to attract, for commercial gain, Internet users to a web site 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 this web site or location or of a product or service on such web site or location” (Policy, paragraph 4(b)(iv)). This conviction is reinforced by the fact alleged by the Complainant and verified by the Panelist, Internet users entering the disputed domain name as address in a browser, access to a website disguised to seem the official one of the Complainant’s consumer rewards program. In the Panel’s view, this is an archetypal and clear attempt of Internet-user confusion.
Moreover, as previous UDRP panels have considered, the use of resources to hide one’s identity reinforces the conviction with respect to the Respondent’s bad faith (see Groupama SA vs. Med / Med filali,WIPO Case No. DMA2010-0003; Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598).
In these circumstances, and considering that the Respondent did not provide any plausible good faith reason for registering and using the disputed domain name , the Panel cannot find any justification for such registration and use of the disputed domain name, which clearly and univocally evokes the Complainant’s trademark and suggests the existence of a place to find information about the prizes obtainable exchanging point (or “kilometers”, as the Complainant said) for merchandise or services.
Based on the above, the Panel finds that the Complainant has met the third requirement under paragraph 4(a) of 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.
Antonio Millé
Sole Panelist
Date: January 21, 2015
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