The Complainants are Corporación Gestamp, S.L., Gestamp Automoción, S.A. both of Madrid, Spain (referred to individually or collectively as the “Complainant”), represented by Sugrañes, S.L., Spain.
The Respondent is VistaPrint Technologies Ltd of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2015. On April 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center received email communications on behalf of Respondent on April 15, 2015 and April 20, 2015 offering to transfer the disputed domain name to Complainant. On April 16, 2015, the Center informed Complainant of the possibility of submitting a suspension request to explore a possible settlement between the parties. However, Complainant filed an email communication with the Center on April 20, 2015 indicating that it did not want to suspend the proceedings.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2015. Respondent did not submit any substantive response. Accordingly, the Center notified the parties of the commencement of the Panel appointment process on May 13, 2015.
The Center appointed Francisco Castillo-Chacón as the sole panelist in this matter on May 21, 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
Complainant is in the automotive industry; it designs, manufactures and distributes automotive components in nearly 100 production facilities worldwide.
Complainant is the owner of the trademark GESTAMP, first registered in 1991, and has since then obtained registrations for the trademark GESTAMP in several jurisdictions.
Complainant’s trademark has become well-known at least in Spain and has presence worldwide.
Respondent is apparently domiciled in Bermuda and registered the disputed domain name on March 11, 2015, well after Complainant had registered its trademark. The disputed domain name resolves to a Vistaprint landing page. 5. Parties’ Contentions A. Complainant
Complainant has rights in GESTAMP by reason inter alia of its multiple registered trademarks for the GESTAMP marks dating well before registration of the disputed domain name. The disputed domain name is confusingly similar to this trademark. The addition of the generic Top-Level Domain (“gTLD”) “.co” does nothing to diminish that confusion.
Complainant has been using the trademark around the world for a number of years, having used the trademark since 1991. The disputed domain name is confusingly similar to Complainant’s trademark GESTAMP.
Respondent registered the disputed domain name long after Complainant had well-established rights in the GESTAMP trademark. Respondent registered the disputed domain name on March 11, 2015 without Complainant’s authorization; the disputed domain name currently acts as a landing page for Vistaprint.
Given the worldwide presence of Gestamp, and the fact that the disputed domain name is identical to Complainant’s trademark, the disputed domain name will lead consumers and Internet users to confusion, which includes likelihood of association. It is clear that the disputed domain name is identical to the Complainant’s registered rights. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel accepts Complainant’s statement that Corporación Gestamp, S.L., the holding company and Gestamp Automoción, S.A., one of the companies belonging to such company group, both have legitimate interests and prior registered trademark rights regarding GESTAMP and finds the consolidation appropriate in this case.
There is a consensus that a respondent’s default does not automatically result in a decision in favor of the Complainant, the Complainant must still establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 2.2). Notwithstanding this, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Panel has not found any exceptional circumstances to justify Respondent’s failure to submit a response and the Panel therefore infers that Respondent does not deny the facts asserted and contentions made by Complainant. Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation,WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact,WIPO Case No. D2003-0994.
With that being said, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that derive from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC. v. Matthew Smith,WIPO Case No. D2005-0540. A. Identical or Confusingly Similar
Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Respondent registered the disputed domain name well after Complainant established rights in its GESTAMP trademark, (see, e.g., Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent,WIPO Case No. D2009-1033). Complainant has clearly demonstrated that it had registered GESTAMP in several jurisdictions including the European Union and the United States of America well before 2015 when the disputed domain name was registered. Complainant further evidenced its rights in the domain name .
Previous UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark, this is sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation Limited v. Barry Cheng Kwok Chu,WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd.,WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S.r.l.,WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M,WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0282. In the Panel’s view, if this is true as a general principle, it is even more so, when the disputed domain name wholly incorporates a well-known trademark in a particular industry such as that of Complainant. The Panel has found no facts or arguments that could justify a dissent from the consensus view, therefore in consent with previous panels; the Panel finds that the mere addition of a gTLD like “.co”, does not eliminate the confusing similarity between Complainant’s trademark and the disputed domain name.
Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant’s GESTAMP trademark. B. Rights or Legitimate Interests
Complainant has made its prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent failed to respond or to offer any evidence to demonstrate that Complainant has ever authorized it to use the GESTAMP trademark.
The Panel concurs with prior UDRP decisions holding that, in circumstances similar to this, there is no bona fide offering of goods or services where the disputed domain name incorporates a trademark which is not owned by the Respondent, nor is the Respondent known by the name “Gestamp”. See Barclays Bank PLC v. Stanislaw Krzenszczynski, WIPO Case No. D2012-1458; Photographic Solutions v. Fariborz R-Dehghan,WIPO Case No. D2008-0333.
It is the view of the Panel that Complainant has satisfied its burden and provided the Panel with sufficient evidence to meet the prima facie requirement showing that Respondent has no rights or legitimate interests in the disputed domain name. By defaulting, Respondent has not provided the Panel with any evidence to demonstrate rights or legitimate interests in the disputed domain name as set forth in paragraph 4(c) of the Policy. Therefore the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name, Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465. This holding is consistent with the WIPO Overview 2.0, paragraph 2.1, pursuant to which “once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
For all of these reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied by Complainant. C. Registered and Used in Bad Faith
Complainant contends that Respondent is aware of the existence of the trademark GESTAMP, and that Respondent has registered multiple domain names that are similar to prior registered wellknown trademarks. Respondent registered and is using the disputed domain name in bad faith by incorporating Complainant’s registered GESTAMP trademark intentionally to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion as to Complainant acting as the source, sponsor, affiliate or endorser of Respondent’s website in violation of the Policy.
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of bad faith (Policy, paragraph 4(b)):
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product.
As previous panels have concluded the four criteria set forth in the Policy paragraph 4(b) are non-exclusive, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.
The Panel concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name may be evidence of bad faith. See PepsiCo, Inc. v. “null” aka Alexander Zhavoronkov,WIPO Case No. D2002-0562; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435.
Absent some exceptional justification from Respondent, it is reasonable to infer that Respondent registered the disputed domain name with the primary intention of either confusing visitors as to the source of the domain name or simply benefiting from Complainant’s well-established trademark.
In this case Respondent is using the entire trademark owned by Complainant without a plausible good faith explanation. The Panel can also infer a bad faith registration out of the evidence submitted by Complainant which leaves no doubt to the Panel that Respondent knew about Complainant’s trademark and it was out of the knowledge and the fame of Complainant’s trademark that it decided to register the disputed domain name.
The Panel finds that Complainant has satisfied paragraph 4(a)(iii) 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 Corporación Gestamp, S.L.
Francisco Castillo-Chacón
Sole Panelist
Date: June 1, 2015
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