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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hola S.A. v. Ajax Private Holdings Inc. and Worldwide Journey Inc.
Case No. D2000-1555
1. The Parties
The Complainant is Hola S.A., a company having its registered office at Velazquez, 98 Madrid, Spain.
The First Respondent is Ajax Private Holdings Inc. with an address at Cuba Avenue, 34th Street East, Building 34-20, Panama PA5, Panama and the Second Respondent is Worldwide Journey Inc. with an address at No. 2 Commercial Centre Square, P.O. Box 71, Alofi, Niue.
2. The Domain Name and Registrar
The domain name at issue is <ohla.com>. The domain name registrar is iholdings.com, Inc.
3. Procedural History
Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") which was received by email on November 10, 2000, and in hard copy on November 14, 2000.
On November 20, 2000, the Center transmitted a request for register verification to iholdings.com, Inc. in connection with this case.
On December 4, 2000, iholdings.com, Inc. sent via email to the Center a verification response confirming that the Second Respondent is the registrant and the contact for administrative, technical and zone is Vladimir Martirosov in Moscow, Russia.
On December 7, 2000, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution (the "Supplemental Rules").
On December 7, 2000, the Center formally commenced this proceeding and notified Respondents that its Response would be due by December 26, 2000. The notification was sent to the First Respondent by courier and by email. The email appears to have been transferred without receipt of any "undeliverable" notice. The notification was sent to the Second Respondent by courier and by email. The Center received an "undeliverable" notice indicating that the email was not transferred successfully. The courier appears not to have been delivered to the Second Respondent until December 21, 2000 due to an incorrect address.
Respondents did not file a Response by the due date. The Center sent a notification of respondent default to the Respondents by email on December 29, 2000. The Center received an "undeliverable" notice indicating that the email was not transferred successfully.
Complainant elected a three-member Panel. On February 2, 2001, after clearing for potential conflicts, the Center appointed Thomas H. Webster as the Presiding Panelist,
Ms. Isabelle Leroux and Mr. Jonas Gulliksson as Panelists and set February 15, 2001 as the deadline for issuance of a decision.
On February 13, 2001, the Panel, pursuant to paragraph 10 of the Rules, requested that the Center re-notify the Respondents of the Complaint by email and set another date for a Response. On February 14, 2001, the Center formally recommenced this proceeding and notified Respondents that its Response would be due by March 5, 2001.
On February 19, 2001, Complainant in an email to the Center raised the issue of whether delivery of the hard copy alone of the Complaint constitutes sufficient notice. The Panel considers that it has already decided this issue in its February 13, 2001 request.
Respondents did not file a Response by the rescheduled due date. The Center sent a second notification of respondent default to the Respondents by email on March 7, 2001.
4. Factual Background
Because there is no Response, the following facts are taken from the Complaint and are generally accepted as true in the circumstances of this case.
"The Complainant is the publisher of the successful French entertainment magazine, "Oh La!", with a circulation of 602,000. It is also responsible for publishing the Spanish and UK editions, "Hola!" and "Hello"…Oh La! can be accessed on line at www.ohla.net, the domain name registered by the Complainant."
"The Complainant is the registered owner of the Community trade mark, OH LA!, registered number 000999128."
"The [First Respondent’s] website was an active site in that it was operating as a hypertext link that instantaneously connected browsers arriving at the site to another site operated by the First Respondent, www.adultpornosex.com (Annex 4). This is an adult pornographic site containing highly explicit and offensive material of a textual and visual nature.
[O]n August 11, 2000 the Complainant sent a letter to the First Respondent notifying it of its intellectual property rights and goodwill in the name "Oh La" (Annex 5)…
Following the Complainant’s communications to the First Respondent the Complainant became aware that the domain name was no longer operating as a hypertext link to www.adultpronosex.com. In fact, the site became inactive (Annex 7). The site remained inactive until October 6, 2000…when it began hosting a Russian site called "Online Humour Links & Archives" (Annex 8). The Russian site, www.ohla.com, has a banner link through to an English Site, www.zerkalo.com, and both sites appear to act as portal sites hosting various types of Russian chat and entertainment sites, some of which are of an erotic nature (Annex 9).
On October 5, 2000 the Complainant received by post a response from solicitors to the First Respondent…stating that the First Respondent "is in the business of building and developing websites" and had registered the domain name for the purpose of developing the www.ohla.com site for the company Online Humour Links & Archives…
An internic search revealed the new registrar of the domain name as iholdings.com, Inc. A Whois Search of its Whois Server, dotregistrar.com, revealed the registered owner as of October 2, 2000 to be the Second Respondent (Annex 1). The administrative and technical contact given is a Russian person/entity and one of the contact emails is given as email@example.com, the same domain name as the English site now accessed through www.ohla.com.
It would therefore appear the First Respondent has now sold the domain name to the Second Respondent…
On November 7, 2000…the site www.ohla.com …was now defaulting immediately to the website www.top.one.ru (Annex 10). This is a Russian website that contains an English link to the site www.3p.com. This English website appears to act as a host for various media and entertainment portal sites. www.3p.com is registered by the Second Respondent through the registrar, iHoldings.com, Inc."
5. Parties Contentions
Complainant makes the following allegations. The factual elements of such allegations are generally accepted as true in the circumstances of this case in light of the Complainant's supporting documents and in the absence of a Response from the Respondents. The legal issues are discussed in the next section of this decision.
In respect of the domain name being identical or confusingly similar to a trademark or service in which the Complainant has rights, Complainant alleges that:
"The disputed domain name is identical to the Complainant’s registered trade mark and its domain name registered in the generic Top Level Domain, .net."
Complainant contends that the Respondents have no rights or legitimate interests in the domain name and relies on the following elements:
"The Complainant has acquired substantial goodwill in the name "Oh La" that has become clearly associated in the minds of the public with the Complainant’s publication."
"The Complainant believes it has been mislead over events surrounding the recent sale of the domain name and does not believe that the actions of the First Respondent, in inviting the Complainant to make an offer for the purchase of the domain name, demonstrates it had any genuine commercial interest in developing the site and registering the domain name for the Second Respondent. If either of the Respondents had a legitimate interest in the domain name, they would not have been so willing to offer it for sale to the Complainant. Equally, the Complainant is surprised that the Second Respondent, whom it is assumed is commercially related to Online Humour Links & Archives, would have allowed such a sale to go ahead if its commercial interests in the domain name were also of a genuine and legitimate nature."
Complainant further alleges that the domain name was registered and used in bad faith by the Respondents based on the following elements:
"The Complainant asserts that the First Respondent initially registered the domain name in bad faith in an attempt to increase the volume of traffic to its pornographic site, www.adultpornosex.com. At this time, the domain name was, although theoretically hosting an active website, doing little more than acting as a hypertext link to the wholly unrelated pornographic site.
During this period, the Complainant’s goodwill obtained in the name, "Oh La", was being seriously damaged. The Complainant finds it offensive and commercially embarrassing to have been associated with such a questionable website as that operated by the First Respondent. The Complainant contends that the First Respondent knowingly traded on the Complainant’s goodwill and only ceased to do so upon the receipt of the Complainant’s first letter dated August 11, 2000…the First Respondent, realising it could not legitimately defend its registration of the name specifically in light of its dubious commercial interests, sought in bad faith to sell the name to a third party – the Second Respondent.
…The First Respondent emphasised in the letter of September 28, 2000 that a lot of time and financial investment had been involved in developing the website and its associated domain name, ohla.com, which is an acronym of the name, Online Humour Links & Archives. However, despite this assertion and, it is assumed with the consent of the Second Respondent, the First Respondent made it clear it would entertain a reasonable offer from the Complainant for the domain name recognising the commercial significance the name has for the Complainant."
…the new registered owner [is] the Second Respondent. The registration information shows that the details were amended on October 2, 2000 which has led the Complainant to assume that the First Respondent proceeded to sell the domain name to the Second Respondent on or before that date. The Complainant contends that the First Respondent acted in bad faith in proceeding to sell the domain name to a third party after it had been alerted to the rights of the Complainant in the name, Oh La.
As of November 7, 2000 when www.ohla.com is accessed it briefly connects to the site displayed at Annex 8 and then automatically defaults to a Russian site, www.top.one.ru (Annex 10). The Complainant believes that this alteration to the website is a further attempt by the Respondents to mislead the Complainant as to the intended use for the domain name and further evidence of bad faith in retaining a domain name in which they have no legitimate commercial interest…
The Complainant believes that both Respondents have acted in bad faith and have acted in collusion against the Complainant firstly, in an attempt to deprive it of the legitimate use of the domain name, secondly to trade upon the Complainant’s goodwill in the name and thirdly, to seek to extort from the Complainant a substantial payment for the transfer of the name…"
The Respondents did not file a response contesting the allegations of the Complainant.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the domain name registered by the Respondents is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondents have no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and used in bad faith.
A. Similarity of the Domain Name and Trademark.
Complainant has established its rights in the trademark "OH LA!" with a Community trademark registration on February 2, 2000.
This Panel finds that <ohla.com> is confusingly similar to the trademark "OH LA!". The deletion of the space between the words "OH" and "LA" and the exclamation mark, the use of lower case letter format and the addition of the gTLD ".com" are not significant in determining whether the domain name is identical or confusingly similar to the mark: see CBS Broadcasting Inc. v. Worldwide Webs, Inc., Case No. 2000-0834 (WIPO, Sept. 4, 2000).
Therefore, the Complainant has satisfied the first requirement.
B. Respondent's Rights and Legitimate Interests.
The Complainant has established that the trademark has been registered in the Community.
The Complainant does not appear to have licensed or otherwise authorized the Respondents to use its trademark or to apply for any domain name incorporating the trademark. Therefore prior to any notice of this dispute, the Respondents had not used the domain name in connection with any bona fide offering of goods or services within the meaning of Paragraph 4(c)(i) of the Policy.
Nor is there any evidence that the Respondents are commonly known by the domain name or are making a legitimate noncommercial or fair use of the domain name within the meaning of Paragraph 4(c)(ii) or (iii) of the Policy. As discussed below, the Complainant’s evidence suggests that the Respondents have attempted to use the domain name for commercial gain.
By not submitting a Response, the Respondents have failed to demonstrate, pursuant to paragraph 4(c) of the Policy, that they have rights or a legitimate interest in the domain name.
Therefore, this Panel concludes on the basis of the evidence of the Complainant that the Respondents have no rights or legitimate interests in the domain name.
C. Bad Faith Registration and Use.
Registration by the First Respondent
Based on the facts as outlined above, it appears that the First Respondent registered and used the domain name in question to attract consumers so that they will access the web site operated by the First Respondent.
That site in turn was a hypertext link to what appear to be a pornographic site.
Therefore, it appears clear to the Panel that the First Respondent has sought to increase the number of "hits" to its site by using the trademark "OH LA!" as a domain name. That increases the commercial value of the First Respondent's site, but at the expense of misuse by the First Respondent of the trademark in which the Complainant hold rights. That is evidence of bad faith within the meaning of Paragraph 4(b)(iv) of the Policy.
Therefore, the panel is satisfied that the First Respondent registered the domain name in bad faith which meets the first branch of the bad faith test.
Bad Faith Use by the Second Respondent
The First Respondent appears to have transferred the domain name in dispute to the Second Respondent in October 2000. That was after the dispute between the parties had arisen with respect to the domain name but before these administrative proceedings were commenced.
Such transfer does not affect the fact that the domain name was registered in bad faith by the First Respondent, but it requires us to examine the use of the domain name since that date to determine whether the domain name "is being used in bad faith" by the Second Respondent.
As noted above, the Complainant contends and the Respondents have not contested that on November 7, 2000, <ohla.com> site apparently defaulted to another site which appears to be owned by the Second Respondent and that this site is apparently linked to various commercial sites.
If that use had continued, in the absence of an explanation by the Respondents it would be taken as an attempt to attract Internet users to the Second Respondent's sites and to other on-line locations for commercial gain by "creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement" of the web sites. This constitutes evidence of bad faith under paragraph 4(b)(iv) of the Policy.
It is not clear whether this use has in fact continued. For example, the chairman was unable to access "ohla.com" on March 13, 2001. However, it is well settled that in certain circumstances the holding of a domain name may amount to bad faith use of such domain name. (See Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003, (WIPO, February 18, 2000)).
In the circumstances of the present case, that is an appropriate finding given (1) the fact that the domain name was used in bad faith at various times in 2000 and (2) the First Respondent transferred the domain name to the Second Respondent after notice of the dispute (but before these proceedings were brought). Therefore, the panel is also satisfied that this holding of the domain name constitutes use in bad faith within the meaning of paragraph 4 (b) (iv) of the Policy.
The Panel therefore concludes that the Respondents registered and are using the domain name in bad faith in accordance with the criteria set out under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, the Panel holds:
(a) that the domain name is confusingly similar to the trademark "OH LA!" in which the Complainant has rights;
(b) that the Respondents have no rights or legitimate interests in respect of the domain name; and
(c) the Respondents registered and have used the domain name in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel decides that the domain name <ohla.com> must be transferred to the Complainant.
Thomas H. Webster
Dated: March 21, 2001