Complainant is Sociedad Anónima Importadora y Exportadora de la Patagonia, Ituzaingo, Argentina, represented by Noetinger & Armando, Argentina.
Respondent is Moniker Privacy Services of Lauderdale, Florida, United States of America (“United States” or “US”) / Leonardo Ciriani of Beccar, Buenos Aires, Argentina. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2017. On March 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 13, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 17, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 21, 2017.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2017. Respondent sent several email communications on March 17, 23, 24, and 25, 2017. The final Response was filed with the Center on April 13, 2017.
The Center appointed Roberto Bianchi as the sole panelist in this matter on May 11, 2017. 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
Complainant operates in Argentina since 1908, when two companies that operated in Patagonia in the south of Argentina merged. The company began its activities with general stores, farms and its own shipping fleet. Since the beginning, due to the length and complexity of the name “Sociedad Anónima Importadora y Exportadora de la Patagonia”, Patagonian residents referred to the new company as “La Anónima”. In 1942, the company went public, listing its shares on the Buenos Aires Stock Exchange. In the mid-sixties, the company sold its shipping fleet, farms and real estate, and converted its general stores into supermarkets. Presently, Complainant is the fourth company in the supermarket sector in Argentina, and the second company of Argentine origin. The company has 159 supermarkets and hypermarkets in 80 cities, with 11,500 employees. Its annual exports reach about USD 80 million.
Complainant’s registrations with the “Instituto Nacional de la Propiedad Industrial” (INPI) for the trademark LA ANONIMA in Argentina are as follows:
TRADEMARK
REG. NO.
INTNTL.
CLASS
FIRST REGISTERED ON
EXPIRING ON
LA ANONIMA
2851234
3
October 31, 1995
June 1, 2026
LA ANONIMA
2354405
4
July 1, 1985
March 22, 2020
LA ANONIMA
2851752
5
October 31, 1995
June 1, 2016
LA ANONIMA
2207468
7
July 1, 1985
January 3, 2018
LA ANONIMA
2207471
8
July 1, 1985
January 3, 2018
LA ANONIMA
2251686
9
October 3, 2008
October 3, 2018
LA ANONIMA
2250378
10
September 24, 2008
September 24, 2018
LA ANONIMA
2851751
11
October 31, 1995
June 1, 2026
LA ANONIMA
2225365
16
January 5, 1987
April 15, 2018
LA ANONIMA
2745587
16
August 31, 1994
March 14, 2025
LA ANONIMA
2207474
17
July 1, 1985
January 3, 2018
LA ANONIMA
2745586
18
August 31, 1994
March 14, 2025
LA ANONIMA
2851750
18
October 31, 1995
June 1, 2026
LA ANONIMA
2250380
19
September 29, 2008
September 24, 2018
LA ANONIMA
2231331
21
January 7, 1986
May 19, 2018
LA ANONIMA
2231332
24
February 5, 1986
May 19, 2018
LA ANONIMA
2851749
25
October 31, 1995
June 1, 2026
LA ANONIMA
2851748
28
October 31, 1995
June 1, 2026
LA ANONIMA
2185294
29
January 2, 1986
October 2, 2017
LA ANONIMA
2851243
30
October 31, 1995
June 1, 2026
LA ANONIMA
2851241
31
October 31, 1995
June 1, 2026
LA ANONIMA
2851240
32
October 31, 1995
June 1, 2026
LA ANONIMA
2851239
33
October 31, 1995
June 1, 2026
LA ANONIMA
2192045
35
March 14, 1985
October 30, 2017
LA ANONIMA
2203618
36
March 14, 1985
December 17, 2017
LA ANONIMA
2191605
37
March 14, 1985
October 29, 2017
LA ANONIMA
2191604
38
March 14, 1985
October 29, 2017
LA ANONIMA
2851237
39
October 31, 1995
June 1, 2026
LA ANONIMA
2191603
40
March 14, 1985
October 29, 2017
LA ANONIMA
2191620
41
March 14, 1985
October 29, 2017
LA ANONIMA
2191622
43
March 14, 1985
October 29, 2017
The record on the WhoIs database for the disputed domain name was created on November 22, 2006.
In March 2016, Respondent acquired the disputed domain name in an auction through SnapNames. The disputed domain name resolves to a Registrar’s parking page.
Respondent is an individual having dual citizenship: Argentine and Italian. He has close links to Argentina. Until 1994, Respondent and his family had a company in Argentina, which they sold in 1994. Respondent is listed as an individual with voting rights in the coming Argentine national elections of August 2017, with a registered domicile in Beccar, Province of Buenos Aires, Argentina. Respondent has a home in San Isidro, Province of Buenos Aires, Argentina. He states that he has a residence in Italy for fiscal purposes. 5. Parties’ Contentions A. Complainant
Complainant contends as follows:
Since at least March 1985, Complainant has rights in the trademark LA ANONIMA for a wide range of products and services. The disputed domain name is identical to the trademark LA ANONIMA. This fact does not require further explanation, since the addition of the generic Top-Level Domain (gTLD) “.com” is not sufficient to modify such identity.
Respondent has no rights or legitimate interests in respect of the disputed domain name. Inquiries made by Complainant show that there is no demonstrable use or preparations to use the domain name in connection with a bona fide offering of goods and services. Furthermore, Respondent has not used the disputed domain name, nor it is commonly known by the disputed domain name. The disputed domain name is not being used. On the website at the disputed domain name there is a silent page informing that the disputed domain name is for sale.
The disputed domain name was registered and is being used in bad faith. Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling or otherwise transferring the disputed domain name registration to Complainant, for valuable consideration in excess of Respondent`s documented out-of-pocket costs directly related to the disputed domain name.
Respondent has repeatedly tried to sell the disputed domain name to Complainant. On March 28, 2016, an email was sent from the email address “[name]@” to the email address of the President and CEO of Complainant, in which the domain name registration was offered for sale at the price of USD 10,000. The email indicated that a reply could be sent to “[name]@”. The email was written in Spanish and contained comments indicating that the sender had good knowledge of Complainant. A similar email was sent on April 19, 2016 to the IT Manager of Complainant.
On July 15, 2016 another email was sent to the email address of the President and CEO of Complainant, as well as to another member of his family, offering the disputed domain for sale for USD 18,000. The email also indicated that Respondent was receiving many emails intended for Complainant. On August 1, 2016, and August 24, 2016, Complainant received new emails offering again the domain name registration for USD 18,000. A few days later, on August 31, 2016, Respondent sent a new email, in which the price was increased to USD 20,000.
On October 4 and October 14, 2016, new emails were sent from “[name]@” to the CEO and to the IT Manager of Complainant, as well as to other shareholders, indicating that if they wished to initiate serious negotiations for the transfer of the disputed domain name they should send an email to “[name]@”.
Again, on October 20, 2016, a new email was received. It began: “Dear [CEO of Complainant], directors, managers and shareholders of S.A. lmportadora y Exportadora de la Patagonia…”, and insisted on the offer for sale of the disputed domain name. The email was in Spanish, and pretended that the domain name registration was lawful, arguing that Complainant did not have trademark rights over the disputed domain name.
Once again, on November 2, 2016, a new email was sent from “[name]@” to the IT Manager of Complainant, in a more threatening language, stating,
“Having the opportunity of getting LAANONIMA.COM, and thus gain hugely in prestige in comparison to your competitors, it would be stupid not to have it, or to speculate that one day we will stop renewing it (that will never happen). On the other hand, while you may find this unpleasant, what we are offering is absolutely lawful […] Any inquiries or guidance on how to proceed, to find out the price and get this domain transferred to you (within 5 to 7 business days it can be yours), just reply here, or, if you want to check that the domain really belongs to us, send an email to this address and we will receive it: [name]@”.
Only two days later, a new email was sent, stating,
“In case you still haven’t noticed, there are umpteen emails with important contents (supplier invoices in .pdf format, etc.) that we are receiving and you do not even see them, because people, your customers, and even yourselves enter the wrong email address and use the (that you do not own) instead of . (that you do have). When you decide to change the childish and naive attitude you are having on this matter and start acting as a serious and modern businessmen, let us know and we will forgive so much stupidity.”
On December 19, 2016, a leakage occurred in the ceiling of one of the manufacturing plants of Complainant. An employee, when informing to other members of the company of such fact and asking for its repair, made a mistake when writing down the email address of one of her colleagues, addressing it to “[name]@” instead of “[name]@.ar”. Immediately thereafter, she received a reply threatening:
"Forget it, [name] they do not even have enough money to buy the domain name LAANONIMA.COM, less they will fix the leaks. Unless the news "leaks" to the media and this creates a scandal and clients disappear". And another email was received stating: "We are sending all the TV reporters there”.
Some additional circumstances reinforce the certainty of the bad faith of Respondent:
- Nearly all the emails received were written in Spanish, showing that the sender knew Complainant well enough, and was perfectly aware that LA ANONIMA is the tradename and trademark of Complainant;
- Respondent knew the email addresses of the President and CEO of Respondent, as well as the email addresses of some of its shareholders and of some of its key officers, such as the IT manager.
- The price asked for the disputed domain name was increased as time went by.
- Simultaneously, Respondent changed the tone of its emails and used a more menacing tone.
The DNS records provided by WhoIs indicate that the disputed domain name is delegated to Sedoparking Services. On the website at the disputed domain name, the domain name is offered for sale. Annex 5 and 6 to the Complaint contain certifications issued by a Notary Public of the emails received by the CEO and by the IT Manager of Complainant from “[name]@”. The Notary had each email printed in readable form, as well as in HTML language and certified each printout. Sworn translations into English of the Notary Public's certifications are provided in Annexes 7 and 8. Annex 9 contains the WhoIs search result dated March 9, 2017 showing the delegation of the DNS to Sedo Parking and its offer for sale of the domain name. B. Respondent
Respondent makes the following contentions1 :
Respondent is not a lawyer. He has a BA/BS in Political Science (Government) with said degree from one the world's most prestigious universities. He is not in the business of buying or selling domains. He dedicates himself to the stock market, and has always done so since 1996. He runs a small hedge fund that he founded many years ago. Respondent is of Italian ancestry and nationality. His native language is Italian. Respondent has his main residence in Italy for fiscal purposes, and pays his taxes in Italy. He also owns a home in Argentina, and a house in the United States. Respondent is not an Argentine national.
The disputed domain name is not an Argentine domain name (.), subject to Argentine laws and jurisdiction. The disputed domain name is international/US-based. .com domains are ultimately under US law. The disputed domain name was bought at SnapNames, an American auctions company, and paid for with Respondent`s American debit card issued by its American online broker, and is managed by Respondent`s American domain registrar Moniker, and prior to Moniker it was at the American company Network Solutions.
Complainant’s mark LA ANONIMA is registered only in Argentina. The mark is registered neither in the United States, nor in numerous other countries. In order to obtain protection internationally, Complainant should have registered the trademark in other countries. The Center should not even accept this particular Complaint, and reject it on those grounds alone. Trademarks are filed in different jurisdictions/countries and in different “classes” for a reason. If that were not the case, there would be a single global repository of trademarks, perhaps run by WIPO, where all companies worldwide would file their trademark. That is not the case. Trademarks are filed and should be filed in each jurisdiction/country where the company intends to operate. Trademarks are given, in those specific locations/countries, only for specific classes or industries where the company does its business. Trademarks are not a blank slate that let you operate in any industries, and they are not a “license to steal” domains from other people left and right.
Complainant wrongly believes that its trademark in Argentina gives it “buccaneer” rights anywhere else in the world, and that it - like pirates - can attack any ship even if it sails in other oceans at the other end of the world. Complainant`s Argentine trademark does not give Complainant "Buccaneer rights". Complainant cannot claim "infringement" of something that does not exist. How can Respondent`s American domain name infringe on something that does not exist? For something to be infringed, it needs to exist first.
Complainant does not have a case outside Argentina, the only place where it is granted protection in the limited classes where it operates. Complainant has not found or proven any evidence of Argentine trademark infringement in Argentina. Complainant has not found, much less proven, “passing off” or “misrepresentation” on the part of Respondent, so that its Argentine trademark could be taken into account even if unregistered.
The disputed domain name is 100% generic, composed of the article “la” (“the” in English) and “anonima” (“anonymous” in English). “Anonymous” is a generic term in English, and in Spanish too. “La Anonima” translates literally in English as “The Anonymous”. “Anonymous” means “without a name”. It is ironic that the domain name itself is almost synonymous with “generic” or “without a specific name”. The disputed domain name has the same meaning in Italian: “the anonymous”.
The fact that there is no trademark should be more than enough to reject the groundless Complaint. The fact that the term is generic should be a second powerful reason.
Respondent submits that the owners of Complainant have a dark, black, rapacious, criminal past. They own very large tracts of land in the south of Argentina, for which they did not pay a single cent, land that was in part stolen from the local populations, and in part given free of charge by corrupt Argentine government officials.
Complainant cannot prove that any relationship exists between the email address “[name]@], from which Complainant claims that the offers for sale were sent to Complainant, and Respondent’s email address. Respondent says he can confirm that those emails were from a Sedo broker. Respondent also states, “Whether I know this Sedo broker or not is irrelevant.”
Respondent also submits that even if the disputed domain name were for sale, considering that the term both then and to this date is un-trademarked in the relevant American (USA) jurisdiction where Respondent’s “.com” domain belongs, it can be sold 100% legally and Sedo would not have added it into their database otherwise. Sedo rejects a domain, does not accept the listing, if they find a relevant trademark in the domain’s relevant jurisdiction.
As to the “leak” episode, something very embarrassing happened in one of Complainant’s mini-markets in Patagonia, where there were water leakages, and an email reached Respondent’s inbox, and Complainant was extremely embarrassed that someone else, outside their organization, learned about it, and they were frightened that this embarrassing information about their operations would “leak” to the media.
The fact that Complainant may (or not) sell some products with the LA ANONIMA mark in Patagonia is completely irrelevant to this case, since Respondent doesn’t sell any similar products, and doesn’t run any mini-markets in Argentina, using the disputed domain name. Respondent does not do any of this for-profit commerce via their domain name elsewhere either.
There can be no "confusion" stemming from similarity because Respondent never has operated in Complainant`s home country, Argentina, nor in their line of business for which their Argentine trademark provides protection there, and there only. The Complaint could perhaps be understandable if Respondent operated, for example, a chain of minimarkets in the US, or sold food/s in the US or Europe, using this domain, but this never happened, is not happening now and will never happen.
Respondent further argues that the disputed domain name has never been used in commerce. The disputed domain name has never been used in commerce in the industry of Complainant, much less in Argentina. No goods or services have been sold through the disputed domain name to date. There can be no possible “confusion”. Thus, nothing could possibly have been infringed, even if Complainant had a relevant trademark in a relevant WIPO class, which it does not have. The disputed domain name has never been used for anything even remotely unlawful. Ergo, there is nothing to mediate and nothing to dispute. Respondent is still thinking how to better employ it.
Complainant claims that Respondent bought the disputed domain name with the sole intent to sell it to them. The disputed domain name was bought by Respondent to use it. Respondent`s project is developing and still needs maturing.
Respondent says he legally acquired the disputed domain name in March 2016 via Snapnames. Since then only 12 months have passed. None can judge what Respondent`s "sole intent" was after such a brief period of time. Is Respondent allowed to take a few months in order to prepare the domain name or an official, proper, and professional website launch, whether it is commercial or noncommercial? Did WIPO force or to become what they would eventually become in just 12 months, or else have their domains taken away?
Respondent adds that putting up a basic page can be done in a day, but building a professional website takes time, effort, technical help, and capital. Respondent could have put a basic page until a professional website was ready, but he chose instead to list it on Sedo, because Sedo provides a basic placeholder page until Respondent finish his professional project. No webhosting costs to pay until the website is ready. It would be a novel concept to hear that WIPO can take away an un-trademarked American domain name sitting in a jurisdiction where there is no trademark, only because it shows up at Sedo and just because some gunslingers from Patagonia complained.
Respondent submits that Complainant is not famous outside of Patagonia, the main region where they operate. They have no operations outside their home country. Even there they are not as large, not as well known, and not as geographically ubiquitous within Argentina as they falsely pretend to be. Complainant`s minimarkets are nonexistent in the rest of Argentina. Complainant is literally dwarfed by its infinitely larger competitors.
Complainant`s legal and business name is not “la anonima” but “Sociedad Anonima Importadora Y Exportadora De La Patagonia” (“SAIEP”). This company trades in the small-company section of the Argentine stock market, as a penny stock, under the ticker symbol SAIEP (not “LaAnonima”). It is a very inactive stock. None seems to care about them, they just languish there. The Company executives' email addresses end with “@saiep.”. Why “La Anonima”? The founder and current CEO always hated that name, as shown on videos in YouTube where he says to a small group of students somewhere. “I always hated the La Anonima name”.
Respondent is not obstructing Complainant`s business. Complainant already owns the domain names , , and .
Complainant through their system admin, like Respondent himself, had an account at NetworkSolutions too, and probably through some “social engineering” tricks managed to cheat NetworkSolutions employee into doing an “internal transfer” of the disputed domain name, from Respondent’s NetSol account, into his/theirs. That internal transfer took indeed place without anyone asking Respondent for approval. After Respondent found out - a few days later - of what had occurred, he complained and NetworkSolutions returned the disputed domain name to Respondent, its rightful and legal owner.
Respondent also submits that Sedo is a reputable domain name broker. Domain name brokers act in many ways like real estate brokers, and that is natural, since domain names are, after all, just online real estate and valuable locations. There is nothing illegal if there are no trademarks in the relevant domain jurisdiction. Having a domain name listed in the world's largest domain broker (Sedo) does not necessarily mean, “It is for sale”. It only means it “may be for sale”, perhaps, someday in the future, given certain conditions. C. Parties’ submissions of May 17, 2017
On May 17, 2017, Complainant, with regard to Respondent´s statements about his Italian nationality, stated that according to the information provided by the Registrar of the disputed domain name, Moniker Online Services LLC, the address of Respondent is in Argentina. Complainant added that, similarly to a great number of persons born in Argentina, Respondent may be a descendent of Italians and therefore, he may have two nationalities. Complainant added that in the photocopy of Respondent`s passport submitted before the Center, the place of birth of Respondent has been deliberately deleted, but that as shown by the seal stamped on the passport, the document was issued by the Italian Consulate in Buenos Aires. Lastly, Complainant stated that according to the electoral roll published in May 2017 by the Argentine Government, Respondent is a registered voter for the national elections to be held on August 2017 in Argentina.
Also on May 17, 2017, Respondent stated that he and his family had a company in Argentina that they sold in 1994, and moved on. Respondent adds that he has “indeed dual nationality, Argentine and Italian”, but that he has been living in Italy since then and that for tax purposes Italy is his official residence.
The Panel, in exercise of its powers under Rules, paragraphs 10(a) and 12, admits the additional submissions of the Parties. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has submitted printouts of certificates of registration for LA ANONIMA mark issued by INPI. See Section 4 above.
Respondent argues that Complainant’s rights in this mark are limited to Argentina only. Notably, says Respondent, Complainant does not have any trademark registrations for LA ANONIMA in the United States, where according to Respondent the disputed domain name belongs.
In this regard, the Panel notes that a complainant can prove its rights in a mark pursuant to Policy paragraph 4(a)(i) if it owns a registered trademark, as Complainant in the present case, or a common law mark. In order to prove rights for purposes of Policy paragraph 4(a)(i), the jurisdiction where the trademark registration was granted or the common law is recognized is irrelevant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), section 1.1 (“What type of trademark rights are encompassed by the expression “trademark or service mark in which the complainant has rights” in UDRP paragraph 4(a)(i)? 1.1.1 The term “trademark or service mark” as used in UDRP paragraph 4(a)(i) encompasses both registered and unregistered (sometimes referred to as common law) marks. 1.1.2 Noting in particular the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element.”) (Panel’s italic)
Complainant contends that the disputed domain name is identical to its trademark LA ANONIMA. Respondent does not contest this, and argues that this mark and the disputed domain name are generic, because their component terms, “la” and “anónima” (meaning “the” and “anonymous” respectively) are generic.
The Panel notes that Complainant’s mark obtained registration in Argentina in practically all international classes. Although the component elements of a mark may be generic, this does not mean that the resulting compound be non-distinctive as a whole. See Cooperativa Central de Crédito de Minas Gerais Ltda - Sicoob Central Crediminas v. T,WIPO Case No. D2012-2356 (“Complainant has registration for several word marks for CREDIMINAS, which gives it exclusivity over this expression for every service/product claimed by Complainant with its trademark registrations, including, especially, services/products related to financial activities. Thereby, Respondent’s allegation that CREDIMINAS is a combination of two generic terms cannot have weight in this case, since Complainant has in fact exclusive rights over this expression.[ …] It is not uncommon for the combination of two generic terms to form a new, distinctive term, and this is the case of Complainant’s trademark CREDIMINAS.”) See also Isoterm AS v. BusinessService Ltd and FirmaOnline Ltd,WIPO Case No. D2009-1376 (“The Complainant has registered the trademark ISOTERM in Norway and Denmark. The Complainant submits that the disputed domain name is confusingly similar to the trademark ISOTERM as the domain name incorporates the whole of the trademark, this being a registered trademark. The Respondents submit that the trademark ISOTERM is a combination of two generic terms and also question whether trademark registration should have been permitted to such a term. The Panel has no jurisdiction to decide the validity of trademark registrations and cannot accept the arguments of the Respondents on that basis. The Panel refers to Hola S. A. v. Idealab, WIPO Case No. D2002-0089: “It is not for the Panel to decide whether registration of the marks should or should not have been granted. The holding of a registered mark is sufficient for the purposes of the Policy. Any claim that the registration should not have been granted or should be revoked falls to be decided by the Courts of the relevant country.”)
In sum, Complainant has proved to the satisfaction of the Panel that it owns trademark rights in the mark LA ANONIMA.
A panel’s finding under the first element normally is the result of a direct comparison between the domain name at issue and the mark. See WIPO Jurisprudential Overview 3.0, section 1.7 (“What is the test for identity or confusing similarity under the first element?”. It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. […] While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing [….] Panels view the first element as a threshold test concerning a trademark owner’s standing to file a UDRP complaint, i.e., to ascertain whether there is a sufficient nexus to assess the principles captured in the second and third elements.”)
In this case, the side-by-side comparison between the identifiers shows that the disputed domain name comprises the LA ANONIMA mark in its entirety, except for the missing space between “la” and “anonima”, and the addition of the gTLD “.com”. It is well established that the omission of spaces, as well as the addition of the gTLD, being technical requirements for the creation of domain names, are irrelevant when comparing a mark and a domain name. See Grant Thornton International v. Martin Schmitz,WIPO Case No. D2006-1085 (“It is commonly known that technically the letters in domain names cannot be separated by spaces, so many companies that have trade names or trademarks that consist of two or more words, use them as domain names without spaces in between. Therefore, the lack of space between the parts “grant” and “thornton” in the Domain Name cannot, in all likelihood, make any Internet user distinguish the Domain Name from the trademark.”) See also Valor Econômico S.A. v. Daniel Allende,WIPO Case No. D2001-0523 (“[T] he domain name is practically identical or at least confusingly similar to the Complainant`s mark. The only - and immaterial - differences are the lack of the space between VALOR and ECONÔMICO and the technically necessary addition of the gTLD “.net” in the domain name registration.”)
The Panel concludes that the disputed domain name is identical or confusingly similar to the mark LA ANONIMA, in which Complainant has rights. The first requirement of the Policy is met. B. Rights or Legitimate Interests
Complainant says the Co-Respondent Moniker Privacy Services is not commonly known by the disputed domain name. In this regard, the Panel notes that on March 13, 2016, in its reply to the Center, the Registrar stated that the registrant of the disputed domain name is Mr. Leonardo Ciriani. In addition, Respondent himself has stated that his name is Leonardo Ciriani, and provided a scanned copy of his Italian passport, where it is stated that his surname is Ciriani, while his given names are Sergio Leonardo. Accordingly, there is no allegation or evidence on the casefile that co-Respondents Moniker Privacy Services / Leonardo Ciriani or Sergio Leonardo Ciriani be known, commonly or otherwise, by the disputed domain name. The Panel concludes that Policy paragraph 4(c)(ii) has not been established.
Complainant further says that there is no evidence of use or demonstrable preparation to use the domain name in connection with a bona fide offering of goods and services. Complainant adds that on the website at the disputed domain name there is a single page informing that the disputed domain name is for sale. Thus, Complainant considers that the second requirement of the Policy has been met.
For its part, Respondent states that the disputed domain name has never been used in commerce, or in the industry of Complainant, much less in Argentina. He contends that no goods or services have been sold through the disputed domain name. Respondent further says he is still thinking how to better employ the disputed domain name. Contrary to Complainant’s claims that Respondent bought the disputed domain name with the sole intent to sell it to them, Respondent says he bought it to use it. Respondent adds that his project is “developing and still needs maturing”. Lastly, Respondent says that he could have put a basic page until a professional website was ready, but he chose instead to list it on Sedo, because Sedo provides a basic placeholder page until Respondent finishes his professional project.
The Panel notes that Respondent did not provide any explanation about his project, even if one year has already passed since he acquired the disputed domain name. The Panel also notes that the Policy contemplates that effective use might not begin immediately following registration. In fact, Policy paragraph 4(c)(i) sets three – in the view of the Panel, quite reasonable – conditions to allege use as evidence of rights or legitimate interests: a) the respondent must prove either use, or demonstrable preparations to use the domain name or a name corresponding to it, b) such use must be in connection with a bona fide offering of goods or services, and c) the use or demonstrable preparations to use should have begun before any notice to the respondent of the dispute.
In the present case, Respondent failed to provide any of the evidences generally accepted as proof of use, or of demonstrable preparations to use. In fact, he failed to provide any details about how his project would look like. 2 Consequently, the Panel believes that neither the bona fide use of Policy paragraph 4(c)(i), nor the fair or legitimate noncommercial use of Policy paragraph 4(c)(iii) can possibly apply. Complainant’s contentions together with the existing evidence about the past use of the website at the disputed domain name, and Respondent’s above statements about his lack of any past or present use, and silence about his future use of the disputed domain name, are sufficient for this Panel to conclude that Respondent lacks any rights or legitimate interests in the disputed domain name.
The second element of the Policy is also met. C. Registered and Used in Bad Faith
The Panel notes that, as shown by Complainant, Respondent Mr. Leonardo Ciriani, holder of an Argentine national document of identity, is listed as a voter on the National Register of Voters for the coming National Primary Elections to be held on August 13, 2017. On this Register, Mr. Ciriani is listed with the same address in Beccar, Province of Buenos Aires, in coincidence with the corresponding WhoIs data that the Registrar disclosed to the Center.
In this regard, the Panel also notes that according to Article 1 of the Argentine National Electoral Code, the only individuals with voting rights in national elections are Argentineans, either by birth in Argentina, or by choice if born abroad from Argentine parents (in both cases, aged 16 and older), or by naturalization (for individuals aged 18 and older). This means that foreign citizens (i.e., non-naturalized as Argentineans) have no voting rights in Argentine national elections. This also means that Respondent is likely an Argentinean, which would contradict his statement that he is not an Argentine national. In this regard, the Panel also notes that, as pointed out by Complainant, Respondent had stated that he has the Italian nationality, and submitted a scanned image of his Italian passport. Also, as underlined by Complainant, on the photocopy of Respondent`s passport, the “place of birth” field has been covered with white paint in order presumably to hide Respondent`s place of birth.
The question arises immediately, why would Respondent want to hide his place of birth (considering that Argentine nationality is mainly based on the principle of jus soli)? In the opinion of this Panel, considering that the seal stamped on Respondent’s passport reads “CONSOLATO GEN. D’ITALIA – BUENOS AIRES” (General Consulate of Italy – Buenos Aires), it likely is because he was born in Argentina. Thus, Respondent would possess – like this panelist – dual citizenship (Argentine and Italian).
The fact is that on May 17, 2017, Respondent admitted that he has the Argentine nationality, together with the Italian nationality. In other words, Respondent had lied before in order to conceal that he is closely connected with Argentina, Complainant`s country of incorporation, operation, and registration and use of the LA ANONIMA mark. The Panel considers that even if Respondent were not an Argentine citizen, he has undeniably close links to Argentina. As seen above, Respondent has an address and a home in Argentina. He and his family had a company in Argentina, which they sold in 1994. In addition, Respondent, in his numerous communications and submissions in this proceeding, made a number of descriptions and comments about Complainant’s business and history that speak of his knowledge of Complainant and its LA ANONIMA mark. Further, Complainant operates in Argentina since 1908, and it owns multiple registrations in Argentina for the LA ANONIMA trademark that predate the registration of the disputed domain name by many years.
All these circumstances, together with the fact that the only real use of the disputed domain name was offering it for sale to Complainant for a high price, lead the Panel to infer that Respondent knew quite well of, and had Complainant, its business and LA ANONIMA trademarks in mind at the time of registering the disputed domain name. In the circumstances of this case, this means that the disputed domain name was registered in bad faith.
As to the present use of the disputed domain name, on May 18, 2017, the Panel, in exercise of its general powers under Rules, paragraph 10, visited the website at the disputed domain name.3 The only content of the website was a list of “related links”, including “Send your CV”, “Employments”, “Curriculum Vitae CV”, “I look for jobs”, “SAP offer of jobs”, “Fashion Accesories”, “Water activities”, “Property Administration”, “Textile Art and Fibers”, “Technical Assistance and Repairs”. These links re-direct to third-party webpages. At the bottom of the webpage, there is text stating that the page was generated by the domain’s owner by using Sedo Domain Parking. There is also a disclaimer in Spanish, stating that Sedo does not maintain any relationship to the advertisers, and that the reference to any specific service or mark is not controlled by Sedo, and does not imply its association, approval or endorsing.
As for the past use of the disputed domain name, on May 24, 2017, the Panel visited the Wayback Machine at , looking for “www.”’s pages archived since March 2016 until presently.4
The results of the Panel’s visit were as follows:
March 7, 2016: The webpage`s only content is a legend stating,”L. Coming soon.”
September 13 and October 7, 2016: Each webpage shows a legend stating, “Page cannot be displayed due to robots.txt.”
March 2, 2017: The webpage displays under the title “LAANONIMA.COM” a text stating, “The owner of is offering it for sale for an asking price of 22000 USD”. This text is repeated within a frame entitled “BUY THIS DOMAIN”, which is signed by Sedo. At the bottom of the webpage there is a text stating, “This webpage was generated by the domain owner using Sedo Domain Parking.” Finally, there is a disclaimer stating, “Sedo maintains no relationship with third party advertisers. Reference to any specific service or trade mark is not controlled by Sedo nor does it constitute or imply its association, endorsement or recommendation.”
In the view of the Panel, this means that the website at the disputed domain name was mainly used to offer it for sale.
Complainant has shown that some of its shareholders, officers and even members of the family of Complainant’s shareholders received multiple offers for sale of the disputed domain name to Complainant sent from the email address “[name]@”. For its part, Respondent says that Complainant cannot prove that any relationship exists between such email address and Respondent’s email address.
The Panel observes that Respondent could probably be right if the applicable standard of proof of such relationship were the standard called “beyond reasonable doubt”, as typically applied in criminal proceedings. However, there is a consensus that in domain name disputes under the UDRP, the applicable standard of proof is the “balance of probabilities”. See WIPO Jurisprudential Overview 3.0 (“4.2 What is the applicable standard of proof in UDRP cases? The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”; some panels have also expressed this as an “on balance” standard. Under this standard, a party should demonstrate to a panel’s satisfaction that it is more likely than not that a claimed fact is true. While conclusory statements unsupported by evidence will normally be insufficient to prove a party’s case, panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case e.g., where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”)
The proper question is rather whether or not Respondent is related to the offers for sale sent from “[name]@”. In the opinion of the Panel the following facts and circumstances reveal, more likely than not, that such relationship existed, and that it was a close one:
a) The author of the messages containing the offers for sale felt sure enough that Respondent would back him or her because he or she invited Complainant to initiate negotiations for the transfer of the disputed domain name by sending an email to “[name]@”, i.e., an address at the disputed domain name presumably controlled by Respondent.
b) The highest amount demanded in the offers for sale sent from “[name]@” basically coincides with the amount demanded by Respondent on its website on March 2, 2017. (See above result of the Panel’s visit to the Wayback Machine conducted on May 24, 2017.
c) Respondent fails to flatly deny that he has anything to do with the offers for sale sent from “[name]@”. He just says that Complainant cannot prove that any relationship exists between “[name]@” and Respondent’s email address.
d) Respondent says that he can confirm that the emails offering the disputed domain name for sale “were from a Sedo broker”. However, he does not provide the least element in support of such assertion. He even states, “Whether I know this Sedo broker or not is irrelevant.” The Panel must disagree: if a party is in possession of evidence that supports its contentions, this party should provide it.
e) Importantly, Respondent does not state that the offers purportedly sent by this unknown “Sedo broker” were sent without his authorization or knowledge. Nothing would be easier for Respondent than denying any connection with the offers.
f) The “leak episode” evoked by Respondent indicates that a close relationship exists between the author of the offers to Complainant and Respondent. An employee of Complainant intending to send an internal communication to her superior to report a leak in a ceiling, wrongly sent her email to an address at “@”, instead of Complainant’s “@.ar”. (Panel’s Italic). Immediately thereafter, she received two unsigned emails from “[name]@”, with some sarcastic comments about the incident. In this respect, the Panel notesthat these emails to Complainant`s employee were not sent from an email address at the disputed domain name, that is where the email sent by Complainant’s employee arrived, but from the address used to send the offers for sale to Complainant. This fact clearly indicates that a close relationship - if not an identity – exists between those controlling the “[name]@” email address and those controlling the disputed domain name.
From all these facts and circumstances, the Panel infers that Respondent, more likely than not, was related to, and controlled, the unsigned offers for sale of the disputed domain name to Complainant, sent from the “[name]@” email address, and that Respondent`s main purpose in registering the disputed domain name was selling it for a substantial profit to the owner of the LA ANONIMA trademark, a famous mark in Argentina. The Panel also believes that Respondent must have known this mark well because he has close links to Argentina. He was a resident in Argentina. He is listed as a registered voter in the coming national elections in Argentina to be held in August 2017. Moreover, on May 17, 2017, he even admitted he had the Argentine nationality (although he previously had denied that), and a home in Argentina, and that his family owned a company in Argentina until they sold it in 1994.
Therefore, the Panel finds that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling or otherwise transferring the registration of the disputed domain name to Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name. This is evidence of registration in bad faith of the disputed domain name pursuant to Policy paragraph 4(b)(i).
Considering that Respondent effectively offered, or controlled the offering of the disputed domain name for sale to Complainant’s shareholders or other persons related to Complainant, for substantial profit, the Panel finds that the disputed domain name is being used in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman,WIPO Case No. D1999-0001 (“Because respondent offered to sell the domain name to complainant “for valuable consideration in excess of” any out-of-pocket costs directly related to the domain name, respondent has “used” the domain name in bad faith as defined in the Policy”)
Lastly, the Panel cannot disregard the fact that Respondent blatantly lied in this proceeding when he stated that he was not an Argentine national, in an attempt to to conceal his multiple links to Argentina. Although Respondent did not certify that the information contained in his submissions was to the best of his knowledge complete and accurate, and that that his submissions in this proceeding were not presented for any improper purpose, as the Rules, paragraphs 3(b)(xiii) and 5(c)(viii) require from any complainant or respondent, 5 the Panel believes that Respondent’s late admissions in contradiction with his own previous statements are an additional evidence of bad faith.
The Panel finds that Respondent’s conduct with regard to the disputed domain name is a clear case of cybersquatting, and that the third element of the Policy is also met. 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 Complainant.
Roberto A. Bianchi
Sole Panelist
Date: May 25, 2017
1 The Panel reflects the essence of Respondent`s submissions made before the Center until April 13, 2017.
2 See WIPO Jurisprudential Overview 3.0. (“2.2. What qualifies as prior use, or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services? As expressed in UDRP decisions, non-exhaustive examples of prior use, or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services may include: (i) evidence of business formation-related due diligence/legal advice/correspondence, (ii) evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards (iii) proof of a genuine (i.e., not pretextual) business plan utilizing the domain name, and credible signs of pursuit of the business plan, (iv) bona fide registration and use of related domain names, and (v) other evidence generally pointing to a lack of indicia of cybersquatting intent. While such indicia are assessed pragmatically in light of the case circumstances, clear contemporaneous evidence of bona fide pre-complaint preparations is required. Acknowledging that business plans and operations can take time to develop, panels have not necessarily required evidence of such use or intended use to be available immediately after registration of a domain name, but the passage of time may be relevant in assessing whether purported demonstrable preparations are bona fide or pretextual. If not independently verifiable by the panel, claimed examples of use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services cannot be merely self-serving but should be inherently credible and supported by relevant pre-complaint evidence.”)
3 See WIPO JurisprudentialOverview 3.0, (“4.8. May a panel perform independent research in assessing the case merits?”. “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.”)
4 See Footnote 3.
5 The Panel notes that Complainant has complied with this requirement at section XIII, paragraph 21 of its Complaint.
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