ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION INFIAUTO, S.A. v. Domain Administrator, Domain Sales - (Expired domain caught by auction winner) c/o Dynadot Case No. D2023-2366 1. The Parties The Complainant is INFIAUTO, S.A., Spain, represented by J.D. Núñez, Patentes y Marcas, S.L., Spain. The Respondents are Domain Administrator, United States of America, and Domain Sales - (Expired domain caught by auction winner) c/o Dynadot, United States of America. 2. The Domain Names and Registrar The disputed domain names , , , , , , , , , , , , , , and (the "Domain Names") are registered with Dynadot, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 30, 2023. On June 1, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 2, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names, which differed from the named Respondent (Dynadot Privacy Service) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 12, 2023, 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 June 14, 2023. 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 the Respondents of the Complaint, and the proceedings commenced on June 19, 2023. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2023. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on July 27, 2023. page 2 The Center appointed Willem J. H. Leppink as the sole panelist in this matter on July 31, 2023. 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 following facts are undisputed. The Complainant is a Spanish company operating for more than eighty years. The Complainant is running a network of vehicle dealerships in Spain. As such, the Complainant provides different services related to vehicles, such as, the purchase, sale, hire, technical support and insurance of vehicles. The Complainant is the owner of several trademark registrations, including but not limited to, the Spanish trademark registration Q QUADIS (word/device mark), with registration no. M2048183 and with an application date of September 20, 1996 and a registration date February 1, 1998, for goods and services in class 12 (the "Trademark"). The Domain Names were registered on either February 10, 2023, February 12, 2023, or March 3, 2023. The Domain Names all redirect to websites indicating that the particular domain name is being offered for sale (the websites will hereinafter be referred to in singular as the "Website"). 5. Parties' Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Names. Notably, the Complainant contends that the Domain Names are all identical or at least confusingly similar to the Trademark in which the Complainant has rights. More specifically, the Complainant applied for sixteen different trademark registrations of which each registration incorporates the term "Quadis". In turn the sixteen Domain Names each identically reproduce one of these sixteen different trademark applications. Moreover, the Respondents have no prior rights or legitimate interests in the Domain Names. The Complainant has not licensed or otherwise permitted the Respondents to use any of its trademarks or to register domain names incorporating its Trademark. In addition to this, the Respondents are not making a legitimate noncommercial or fair use of the Domain Names, and has also not shown proof of any preparations thereof. The Domain Names have been registered and used in bad faith. The Respondents registered the sixteen Domain Names every time immediately following the Complainant's application for the corresponding trademark and after each registration of a Domain Name, the Respondents offered the Domain Name immediately for sale. In other words, the Respondents acquired the Domain Names for the sole purpose of selling them to the Complainant or to a competitor for valuable consideration in excess of the Respondents' own out-of-pocket costs. B. Respondents The Respondents did not reply to the Complainant's contentions. page 3 6. Discussion and Findings 6.1 Preliminary Matter: Consolidation of Multiple Domain Names The present proceeding involves the Complainant bringing a single Complaint relating to sixteen domain names against two Respondents. The Complainant has made a request for consolidation and, in accordance with section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), thus bears the onus of establishing that such a consolidation is justified. The Panel is satisfied that such consolidation is justified, based on the evidence brought forward by the Complainant. The Complainant believes that the Domain Names are under common control, whereas all sixteen Domain Names have been registered in a coordinated pattern. All sixteen Domain Names have been registered every time on the exact same day as the Complainant applied for each corresponding trademark registration. Moreover, the Domain Names were all put for sale immediately through the same portals. In addition to this, the Complainant has also put forward that both Respondents have provided the same address and the same telephone number. Lastly, the Panel also considers that the Respondents have not taken the opportunity to rebut the allegations made by the Complainant. In light of these considerations, and it particular that the Respondents are most likely the same person, the Panel will hereafter refer to them in singular as the "Respondent". 6.2 Substantive Matter A. Identical or Confusingly Similar 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. WIPO Overview 3.0, section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in the Trademark. WIPO Overview 3.0, section 1.2.1. Based on the available record, the Panel finds the Complainant has established unregistered trademark or service mark rights for the purposes of the Policy. WIPO Overview 3.0, section 1.3. The Panel finds the entirety of the Trademark is reproduced within the Domain Names. Accordingly, the Domain Names are identical or confusingly similar to the Trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel finds the Trademark is recognizable within the Domain Names. Accordingly, the Domain Names are confusingly similar to the Trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. While the addition of other terms in the Domain Names may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the Domain Names and the Trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. page 4 While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has not rebutted the Complainant's prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Names such as those enumerated in the Policy or otherwise. The Panel considers that the record of this case reflects that: - Before any notice to the Respondent of the dispute, the Respondent did not use, nor has it made demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services. Paragraph 4(c)(i) of the Policy, and WIPO Overview 3.0, section 2.2. - The Respondent is not making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the Trademark. Paragraph 4(c)(iii) of the Policy, and WIPO Overview 3.0, section 2.4. - Regarding the fair use assessment, the Panel notably considers the fact that the Respondent has engaged in a pattern of registering domain names corresponding to marks held by the Complainant. WIPO Overview 3.0, section 2.5.2. - The record contains no other factors demonstrating rights or legitimate interests of the Respondent in the Domain Names. Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Panel considers that the record of this case reflects that: - the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names to the Complainant who is the owner of the corresponding trademarks or to a competitor of the Complainant, for valuable consideration likely in excess of its documented out-of-pocket costs directly related to the Domain Names. - the Respondent has registered the Domain Names in order to prevent the Complainant, as the owner of the corresponding trademarks, from reflecting its trademarks in corresponding domain names. All the more so, because the Respondent has shown to have engaged in a pattern of such conduct. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent's registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. page 5 In the present case, the Panel notes that the Respondent registered sixteen domain names that are identical to the sixteen trademark registrations the Complainant applied for. Accordingly, in the Panel's view, the Respondent must have been aware of the existence of the Complainant's activities and rights at the time the Respondent registered the Domain Names. The Respondent even registered the Domain Names on the very same day as the corresponding trademark registrations were applied for. After which, the Respondent immediately offered the Domain Names for sale. In doing so, the Respondent is intentionally cybersquatting the Domain Names and is trying to induce the Complainant to buy the Domain Names (consisting solely of its trademark registrations) from the Respondent for prices that, more likely than not, exceed the out-ofpocket costs. Consequently, the Respondent has registered and is using the Domain Names in bad faith. Having reviewed the record, the Panel finds the Respondent's registration and use of the Domain Names constitutes bad faith under the Policy. Certainly lacking a Response, the Panel finds that there is no other plausible explanation than that the Respondent was aware of the existence of the Complainant's rights and activities at the time the Respondent registered the Domain Names. Furthermore, the Panel takes into consideration that the Respondent has been hiding behind a privacy shield. In accordance with section 3.6 of the WIPO Overview 3.0 this also supports a finding of registration and or use in bad faith. Having reviewed the record, the Panel finds the Respondent's registration and use of the Domain Names constitutes bad faith under the Policy. Based on the available record, the Panel finds the third element of the Policy has been established. 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 Domain Names, , , , , , , , , , , , , , , , , be transferred to the Complainant. /Willem J.H. Leppink/ Willem J. H. Leppink Sole Panelist Date: August 8, 2023
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