1. The Parties
1.1 The Complainants are Danzas Holding AG, Switzerland and Danzas AEI Intercontinental, United States.
1.2 The Respondent is Euro Plus Cargo SLU, Spain.
2. The Domain Name and Registrar
The domain name upon which this Complaint is based is <danzas.biz> (the "Disputed Domain"). The registrar of the Disputed Domain is Speednames Inc., Denmark.
3. Procedural History
The Complaint was submitted for decision in accordance with the Start-up Trademark Opposition Policy ("STOP") for ".BIZ", adopted by NeuLevel, Inc. and approved by Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, in accordance with the Rules for Start-up Trademark Opposition Policy for ".BIZ", adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the "STOP Rules"), and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for ".BIZ" (the "WIPO Supplemental STOP Rules").
The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") in hard copy on January 22, 2002. On January 25, 2002, the Center sent the Complainants via email an Acknowledgement of Receipt of Complaint and requested an electronic copy, which was subsequently sent. The fees prescribed under the STOP Rules and the WIPO Supplemental STOP Rules and the STOP Schedule of Fees have been paid by the Complainants. The Complainants stated that a copy of the Complaint together with the cover sheet had been sent or transmitted to the Respondent in accordance with paragraph 2(a) of the WIPO Supplemental STOP Rules.
The Center sent the Notification of STOP Complaint and Commencement of Administrative Proceeding on February 5, 2002, to the Respondent as required by Paragraph 2(a) of the STOP Rules and to the Complainants' representative by e-mail setting a deadline of February 26, 2002, to file a Response. The Center sent a copy of the Complaint (without attachments) to the Internet Corporation for Assigned Names and Numbers (ICANN) and the Registrar, Speednames Inc.
The Respondent filed a Response February 26, 2002.
The Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center by fax on March 20, 2002, and the Notification of Appointment was sent to all parties on March 23, 2002.
In accordance with Paragraph 4(a) of the STOP Rules, the Center has verified that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules. The Panel has reviewed the Complaint and is satisfied with the Center’s assessment that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.
All other procedural requirements appear to have been satisfied.
4. Factual Background
This Complaint is based on the following grounds:
Complainants' rights and activities
Danzas Holding AG is the legal owner of the DANZAS trademark, which is registered as a word mark in Switzerland, Spain, the USA, as well as an International Trademark under the Madrid system covering several other countries. The registrations cover classes regarding logistics and alike goods and services, mainly in classes 36 and 39. Copies of the registration certificates were enclosed as Annex to the Complaint.
The Complainants are affiliated companies whereby the US company is a subsidiary of the holding company situated in Switzerland. The US company attempted to register the ".biz" domain in question <danzas.biz>, and learned of the Respondent’s activities. The holding company, however, is the owner of all DANZAS trademarks, which are licensed to its subsidiary firms, therefore this Complainant owns the rights to the trademarks, while the US company only has rights in the trademarks. Both companies therefore file the Complaint.
Activities of the Respondent
The Complainants assert that the Respondent is a company that is engaged in the same field of activities as Complainants. The Panel notes that the websites of the Respondent, as well as the name of the Respondent confirms this.
Respondent has not commented on this information in the Response.
5. The Parties Contentions
Contentions of the Complainants
The Complainants assert that each of the elements specified in Paragraph 4(a) of STOP are made out.
In reference to the element in Paragraph 4(a)(i) of STOP, the Complainants asserts that the substantive portion of the Disputed Domain is identical to Complainants' trademarks.
In reference to the element in Paragraph 4(a)(ii) of STOP, the Complainants assert that the Respondent has no rights or legitimate interests in respect of the Disputed Domain.
The Complainants have carried out searches and surveys of trademarks and have never learnt of any DANZAS-trademark filed by the Respondent; thus the Respondent is deemed not to own any trademark or other rights with regard to a denomination "Danzas".
In reference to the requirements of Paragraph 4(a)(iii) of STOP, the Complainants asserts that the Respondent has registered the Disputed Domain in bad faith.
When noting the domain name of the Respondent, the Complainants searched for a web site of the Respondent and got to "www.geocities.com/europluscargo/contact.html" or "www.europluscargo.com". These sites show that the Respondent offers services identical to those of the Complainants: transportation and logistic services. They also show that Respondent obviously copied the denomination EuroCargo (also a trademark of Danzas Holding AG) to create its business name, a denomination which the Complainants are using for one particular part of their business, as well as having copied the colours used worldwide by the Complainants and filed as a trademark in many countries of the world.
The Respondent is not using any denomination "danzas". However, the mere registration of the domain name <danzas.biz> must be considered as unfair and thus initiated in bad faith. The only intention must be to acquire clients attempting to get to the Complainants’ site and deceiving them about the real owner of the site in question using additionally identical colours and very similar denominations ("EuroCargo"). The Respondent is himself a competitor of the Complainants.
Contentions of Respondent
The arguments put forth by the Respondent’s were as follows:
It is not true that the domain is identical to the Complainants' trademark and service marks as the domain's name is <danzas.biz>, and the Complainants' trademark is Danzas Eurocargo.
The Respondent is the owner of the <danzas.biz> domain as a result of the launching of a marketing campaign for the opening of an Internet service website in Spain and South America, with the aim to offer the typical services of an Internet website electronic marketing and commerce.
The Respondent has never acted in bad faith, because, after checking Spanish and South American registers, Danzas did not appear in the relevant Internet website registers.
The fact that the <danzas.biz> domain belongs to Euro Plus Cargo SLU, does not imply, by any means, that it is acting in bad faith or that it is trying to use the Danzas trademark for the purposes indicated by the Complainants' registered social purpose, since the activity the Respondent would carry out under this domain would be totally different.
The Respondent, nevertheless, has contacted the Complainants' representatives in order to try to solve this dispute amicably, and he offers to give up the contested domain name as long as the Complainants agrees to pay for the expenses incurred by Euro Plus Cargo SLU for the launching of the campaign aimed at the startup of the <danzas.biz> Internet website, which will enable the Respondent to meet the costs of a new campaign. It must be taken into account that there has not been a reasonable solution due to the lack of a suitable reply by the Complainants.
6. Discussions and Findings
The Panel notes that the Complaint has been lodged despite the Respondent’s current offer to transfer the Disputed Domain. Such an offer does, however, not preclude the holder of an IP-claim from filing a STOP Complaint. The Complaint is therefore properly pursued.
The Domain Name is identical to Complainants' trademark
The Complainants owns or has rights in the trademark registrations for DANZAS. The Disputed Domain Name <danzas.biz> is identical to this mark, except for the gTLD denomination ".biz", which part shall be disregarded for the purpose of these proceedings.
Accordingly, the Panel finds that the Complainant has proven Paragraph 4(a)(i) of STOP.
The Respondent has no rights or legitimate interests in the Domain Name
The Complainants asserts that the Respondent has no legitimate rights or interest in the Disputed Domain. Paragraph 4(c) of STOP lists a number of circumstances which, if proven to exist by the Respondent, can be taken to demonstrate a Respondent’s rights or legitimate interests in the Disputed Domain.
The Complainants has made it clear that no agreement between the parties exist, which could give the Respondent rights to use the trademark DANZAS.
The Respondent claims that it had the intention of using the contested domain name for some unspecified type of electronic marketing and commerce, but no proof has been furnished in support of this. The Panel notes that the name is neither registered nor used by Respondent as a trademark or as any other type of business identifier. Further, the fact that the domain name appeared vacant when it was registered can not be regarded as proof or indication of a legitimate interest.
The Respondents has thus not put forward any evidence that they have any legitimate interest, and accordingly the prerequisites of Paragraph 4(a)(ii) of STOP are met.
The Domain Name in dispute has been registered or is being used in bad faith.
The Panel notes that Paragraph 4(c)(iii) of STOP requires the Complainants to demonstrate that the Disputed Domain was registered or used in bad faith.
In order to show bad faith registration by the Respondent, the Complainants asserts that the Disputed Domain must have been registered for the primary purpose of attracting traffic to the Respondent's website and thus disrupting Complainants' business.
The Panel further notes that the Respondent seems to be engaged in the same area of business as Complainants. The Complainants' trademark is registered and used in Respondents' home country Spain. Given the distinctive nature of the mark DANZAS, it seems unlikely that Respondent had no knowledge of the name or of the Complainants' activities under said name. In addition, as stated above, Respondent has not furnished any evidence of a legitimate interest in the name.
In addition, Respondent has offered to sell the domain name to Complainants for a sum that is considerably higher than the registration costs.
Given all these circumstances the Panel therefore finds that the prerequisites of paragraph 4(a)(iii) of STOP are also met.
The Panel has found that all of the requirements of paragraph 4(a) of STOP have been proven by the Complainants. Accordingly, and for the purposes of paragraph 4(i) of STOP, the Panel requires that the domain name <danzas.biz> be transferred to the Complainants.