The Complainant is Sociedad Anonima Damm, Spain, represented by González-Bueno SLP, Spain.
The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / jhon doe, Belarus. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2021. On May 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2021, 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 June 1, 2021, 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 amendment to the Complaint on June 3, 2021. The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2021. The Center appointed Knud Wallberg as the sole panelist in this matter on July 20, 2021. 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, Sociedad Anónima Damm, is a Spanish brewery that was founded in Barcelona, and is presently a multinational company with operations in over 120 countries. One of the Complainant’s best known beers is Estrella Damm, which has been brewed since 1876 and is now distributed internationally. The Complainant is the owner of numerous ESTRELLA DAMM trademark registrations, including International Trademark Registration No, 924729 for ESTRELLA DAMM mark, registered on February 26, 2007, for goods in class 32 and designating various countries, including Iceland and Belarus. The Complainant also owns several ESTRELLA DAMM domain names, including The disputed domain name was registered on March 2, 2021 and does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends that disputed domain name is confusingly similar to the Complainant’s trademarks since it incorporates the ESTRELLA DAMM mark in its entirety. The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no affiliation with the Complainant, nor has the Respondent been authorized by the Complainant to register or use a domain name that includes the Complainant’s mark. The Complainant finally contends that the Respondent registered and is using the disputed domain name in bad faith. Given the fame of the ESTRELLA DAMM marks the Respondent must thus have had knowledge of the mark at the time of the registration of the disputed domain name. Also, albeit that the disputed domain name is inactive the Complainant argues that UDRP panels have found that the non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that a complainant must prove each of the following: (i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar The Panel finds that the disputed domain name The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name. B. Rights or Legitimate Interests It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not produced, and there is no evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings. Consequently, the Panel finds that the condition in paragraph 4(a)(ii) of the Policy is also fulfilled. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith: (i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith. Given the circumstances of the case, including the evidence on record of the use and reputation of the Complainant’s trademark ESTRELLA DAMM, and the distinctive nature of this mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name, which could attract Internet users in a manner that is likely to create confusion for such users. The Panel therefore finds that the disputed domain name was registered in bad faith. The disputed domain name does not resolve to an active webpage nor does it seem to have been actively used in other ways. However, as first stated in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and repeated in many subsequent decisions under the UDRP: “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by Respondent to amount to the domain name being used in bad faith”. See section 3.3 of the WIPO Overview 3.0. Noting that the disputed domain name incorporates the Complainant’s distinctive and reputed trademark ESTRELLA DAMM and the gTLD “.icu”, that no Response has been filed, that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, that the Respondent’s registration prevents the Complainant from reflecting its ESTRELLA DAMM mark in a corresponding domain name under the “.icu” gTLD, and considering all the facts and evidence of the case, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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 Knud Wallberg
Sole Panelist
Date: August 3, 2021
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