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and Mediation Center
Automуviles de Luarca, S.A. v. NUCOM, Domain Name Brokers
Case No. D2005-0282
1. The Parties
The Complainant is Automуviles de Luarca, S.A., Gijуn, Spain, represented by
Ernst & Young Abogados S.L., Madrid, Spain.
The Respondent is NUCOM, Domain Name Brokers, Inverness, United Kingdom of
Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <alsa.com> (‘Disputed Domain Name’)
is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration
and Mediation Center (the “Center”) on March 18, 2005. On March 22, 2005,
the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com
a request for registrar verification in connection with the domain name at issue.
On April 11, 2005, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by
email to the Center its verification response confirming that the Respondent
is listed as the registrant and providing the contact details. The Center verified
that the Complaint satisfied the formal requirements of the Uniform Domain Name
Dispute Resolution Policy (the “Policy”), 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
In accordance with the Rules, paragraphs 2(a) and
4(a), the Center formally notified the Respondent of the Complaint, and the
proceedings commenced on April 12, 2005. In accordance with the Rules, paragraph
5(a), the due date for Response was May 2, 2005. The Response was filed with
the Center on April 21, 2005.
The Center appointed Hub. J. Harmeling as the Sole
Panelist in this matter on May 13, 2005. 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 facts relevant to the current dispute are set
out in the Complaint and the Response. Considering the evidence submitted, the
Panel finds the following facts to have been established.
The Complainant, Automуviles de Luarca, S.A., a company
incorporated under the laws of Spain, holds rights in ALSA (Spanish commercial
name) and A.L.S.A. (Spanish trademark). In 1996, the Complainant registered
the domain name <alsa.es>.
The Respondent, NUCOM, Domain Name Brokers, of Inverness,
UK, registered the disputed domain name <alsa.com> on January 31, 1999.
5. Parties’ Contentions
First, the Complainant asserts that the disputed domain
name is identical to the Complainant’s ALSA mark. See Policy, paragraph
4(a)(i). The Complainant contends that ALSA is well-known internationally, specifically
in the European Union, and that the Complainant is commonly referred to by that
acronym. Without submitting supporting documents or further specification, the
Complainant states that it has obtained “some Community Trademarks and
International Trademarks” for this acronym. The Complainant states that
ALSA is one of the most well-known Spanish trademarks. In this respect, the
Complainant refers to a study carried out by an independent agency attached
to the Spanish Ministry of Economy and Finance. Finally, the Complainant states
that it is a “pioneer” in the use of the Internet in Spain, as it
registered the domain name <alsa.es.> on September 17, 1996, while the
opportunity to do so arose only one month earlier, on August 1, 1996.
Second, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Policy, paragraph 4(a)(ii). The Complainant states that the Respondent has no prior rights in or registered trademarks for ALSA and has never been known by the disputed domain name. According to the Complainant, the Respondent does not use the disputed domain name for any legitimate non-commercial or fair use without intent for commercial gain. Nor, asserts the Complainant, has the Respondent used, or demonstrably made preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
Finally, the Complainant argues that the disputed
domain name was registered and is being used in bad faith. See Policy,
paragraph 4(a)(iii). Referring to a statement made in the Whois database to
the effect that the disputed domain name might still be available, and to what
the Complainant regards as the suspicious contact details of the Respondent,
the Complainant contends that the Respondent acquired the disputed domain name
primarily for the purposes of selling or leasing it for valuable consideration
in excess of its out-of-pockets costs. In support of that allegation, the Complainant
submits evidence that the disputed domain name resolves not to a functioning
website but to an announcement that the disputed domain name is available for
sale. Furthermore, the Complainant argues that the Respondent set “exorbitant”
prices for leasing or selling the disputed domain name when the cost of domain
name registration and annual renewal fees are taken into account. E-mail correspondence
attached to the Complaint shows that as in January 2004, in response to an inquiry
from the Complainant’s counsel, the Respondent said that the disputed
domain name could be purchased for 199,950 United States dollars or leased for
3,999 United States dollars per month. The Complainant also argues that since
the disputed domain name was registered more than three years after the Complainant
registered <alsa.es>, the Respondent could in the meantime have become
aware of the fame of the Complainant’s trademark or at least have known
about the Complainant’s business.
The Respondent contends that the Complainant has no
worldwide trademark in or rights to the exclusive use of the ALSA name, in part
because the Complainant’s business is confined to a limited number of
countries. According to the Respondent, “hundreds of thousands of different
organizations, people and other entities” share those initials, and the
Complainant is not even the most famous among them. The Respondent provides
a list of 40 domain names registered by many different organizations, all consisting
of the letters “alsa” and a top-level domain name (e.g., <alsa.net>
and <alsa.cz>) and argues that there is nothing unique about the Complainant’s
registration of <alsa.es>. Emphasizing its argument that the Complainant
is not the most well-known company among those using the term “alsa”the
Respondent says that the Complainants’ website appears only ninth on the
list when “alsa” is used as a search term on Yahoo, and that five
of the websites ranked above it are related to “Advanced Linux Sound Architecture.”
According to the Respondent, this system is used by thousands of computer programmers
worldwide, one of whom is currently leasing the disputed domain name.1
Furthermore, the Respondent claims to have received more than 300 inquiries
concerning the disputed domain name, the “vast majority” of which
came from parties independent of the Complainant.
The Respondent says that
it registered the disputed domain name six years ago because of its short and
desirable combination of only four common letters, which made it “a highly
marketable domain name with many different possible end users.” The Respondent
claims that it did not know of the Complainant’s existence until the latter
made inquiries about acquiring the disputed domain name from the Respondent
in 2003. As the Respondent did not know about the Complainant’s existence
at the time of registration, the disputed domain name was not registered in
bad faith. Nor, according to the Respondent, has it been used in bad faith,
as the leasing or reselling of valuable generic or highly popular domain names
does not in itself constitute bad faith. According to the Respondent, the business
of leasing or reselling desirable domain names is performed by many large companies,
a contention the Respondent supports by referring to a website that provides
an overview of high-value domain name sales. Also, the Respondent emphasizes
that the Complainant approached it, and that the Respondent never made any unsolicited
approach to the Complainant. The Respondent asserts that the Complainant must
be aware that there are many other “end users” who would be interested
in the disputed domain name and that the Complainant probably commenced this
proceeding in order to obtain the disputed domain name at a price below its
fair market value.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the
following elements in order to obtain relief:
(i) The disputed domain name is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the
disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad
The Complainant carries the burden of proof on each of these elements, see
Do the Hustle, LLC v. Tropic Web, WIPO
Case No. D2000-0624 (August 21, 2000), and they will be examined in turn
A. Identical or Confusingly
The Panel finds that the Complainant has protected rights in the ALSA mark.
Previous panels have established that registration of a mark, irrespective of
where it is registered, gives a complainant rights in the mark within the meaning
of Policy, paragraph 4(a)(i). Because the “essence of the Internet is
its world wide access,” a respondent’s registration of a disputed
domain name may be challenged on the basis of its confusing similarity to a
mark registered in any country. See Thaigem Global Marketing Limited v. Sanchai
Aree, WIPO Case No. D2002-0358 (July 16, 2002);
Bennett Coleman & Co. Ltd. v. Steven S. Lalwani, WIPO
Case No. D2000-0015 (March 11, 2000).
Since the disputed domain name is identical to a mark in which the Complainant
holds rights (putting aside the .com TLD), the Panel finds the first element
to be established.
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent: (1) has no prior rights or registered
trademarks in the ALSA mark; (2) has never been known by the disputed domain
name; (3) does not use (and has not prepared to use) the disputed domain name
for the bona fide offering of goods and services (the offering of the
disputed domain name itself for sale or lease apparently not being “legitimate”
according to the Complainant); and (4) has not made any legitimate non-commercial
or fair use of the disputed domain name without intent for commercial gain.
The Panel finds that the Complainant has made a prima facie showing that
the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent therefore bears the burden of demonstrating the contrary. See
H.J.M De Vries, Leidseplein Beheer B.V. v. O.E.W. van der Zwan, WIPO
Case No. D2004-0174 (June 7, 2004).
The Respondent does not explicitly claim to have a legitimate interest, nor
does it refer to any of the “safe harbors” of paragraph 4(c) of
the Policy. Its main argument is directed to the third element of the Policy,
namely bad faith. In the interests of completeness and clarity, however, the
Panel notes that the thrust of the Respondent’s argument – that
there is nothing wrong with dealing for profit in domain names that have “many possible
end users” – could be regarded as implicitly claiming that such
dealing constitutes a legitimate interest in the domain names offered for sale.
There is some support for the position that domain name dealers have a legitimate
interest in descriptive, generic, or acronymic domain names that they offer
for sale, and some authority to the contrary. This Panel notes that even if
the reselling of this type of domain name constitutes a legitimate interest,
the Complainant still must establish the Respondent’s bad faith. On the
specific facts of this case, it has failed to do so, as will be explained in
the following section.
C. Registered and Used in Bad Faith
Prior decisions establish that the fact that the Respondent is a domain name
broker does not ipso facto mean that its registration and use of the
disputed domain name has been in bad faith. See, e.g., University
of Maryland University College v. NUCOM Domain Brokers & Urban Music Underground
Club, WIPO Case No. D2002-0081
(April 29, 2002) (<umuc.com>). The Complainant therefore must go beyond
proving that the Respondent is a domain name broker. Paragraph 4(b) of the Policy
mentions four circumstances that constitute evidence that the registration and
use of the disputed domain name had been in bad faith. Both the Complainant
and the Respondent focus on paragraph 4(b)(i), so the Panel will also direct
its attention to that paragraph.
Under that paragraph, the Complainant must show
that you [the Respondent] 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.
(emphasis added). The Respondent admits that its purpose in registering the
disputed domain name was indeed selling or leasing it to others for a profit.
It argues, however, that because it did not know of the Complainant’s
existence or make an unsolicited offer to sell the disputed domain name to the
Complainant, it did not act in bad faith. The italicized words in the Policy,
taken literally, support the Respondent’s position, at least insofar as
paragraph 4(b)(i) is concerned.
This consideration raises the question whether the Policy is intended to distinguish
between a respondent who targets a particular trademark holder and one who registers
a domain name that he suspects will be “of interest” to many businesses,
at least some of which will presumably have protected rights in similar marks.
After considering the nearly unanimous views expressed by previous panels, the
Panel concludes that the circumstances of this case do not demonstrate bad faith
within the meaning of the Policy.
First, the Panel finds that the Complainant has failed to show that the Respondent
knew of the Complainant’s existence when it registered the disputed domain
name. The disputed domain name is a combination of four letters that might be
– and apparently is – used by many organizations in many countries.
Although the Respondent might be one of the best-known companies in Spain, that
does not prove that the Respondent in Scotland knew or should be deemed to have
known of the Complainant and its ALSA mark. The report submitted by the Complainant
does not mention the nationality of the people who were surveyed, and the study
reveals that spontaneous recognition of Spanish brands is weak in other countries.
The Complainant mentions that it has acquired European and international trademarks
but submits no supporting evidence. Finally, the Respondent has shown that many
parties use ALSA in their public activities, and there is nothing in the record
to show that Respondent was more likely to know of the Complainant than any
of those other parties.
Still, it could be argued that by registering this simple four-letter combination
for (as the Respondent admits) the very reason that many “possible end
users” use that combination as an acronym for business and other activities,
the Respondent has violated the rights of all of the entities that have cognizable
interests in the ALSA mark. That position has not been taken by the majority
of previous WIPO UDRP panels. Besides the <vz.com> and <umuc.com>
cases cited previously, the respondent also prevailed in a dispute over <kcts.com>.
See KCTS Television Inc. v. Get-on-the-Web Limited, WIPO
Case No. D2001-0154 (April 20, 2001). The Panel has found no prior decisions
taking the contrary view, at least not explicitly. In a dispute over <rbconline.com>,
the panel noted in the “Parties’ Contentions” section of the
decision the Respondent’s argument that thousands of companies shared
the initials “RBC,” but the panel did not address that argument
in the “Discussion and Findings” section of the decision. See
Royal Bank of Canada v. Namegiant.com, WIPO
Case No. D2004-0642 (September 21, 2004). Another panel two weeks ago ordered
the transfer of <itil.com>. In that case, however, the respondent failed
to file a response, and the panel credited the complainant’s evidence
that its mark had achieved worldwide prominence in the very industry in which
the respondent apparently functioned. See The Lords Commissioners of Her
Majesty’s Treasury v. ITIL International, WIPO
Case No. D2005-0230 (May 10, 2005). Indeed, that panel was presided over
by the same learned chairman who presided in the <umuc.com>, <vz.com>,
and <kcts.com> cases, reinforcing the point that the circumstances in
the <itil.com> case were exceptional. In the present case, as previously
discussed, there are no such circumstances, as the Complainant has not shown
any likelihood that the Respondent was aware of its existence.
Accordingly, the Panel does not find that the Complainant has proven registration
and use of the disputed domain name in bad faith.
For all the foregoing reasons, the Complaint is denied.
Hub J. Harmeling
Dated: June 9, 2005
1 There is an apparent factual conflict between the Complaint and the Response. The Respondent says the disputed domain name has been leased to a programmer involved in Advanced Linux Sound Architecture, while the Complainant says the disputed domain name resolves to a web page announcing “THIS DOMAIN NAME IS FOR SALE!” The parties’ inconsistent accounts may be only a matter of timing. Attached to the Complaint is a printout of “http://www.alsa.com” showing nothing but the offer for sale and the Respondent’s contact details. The printout is undated, however, and given the correspondence between the parties beginning in late 2003, it is conceivable that the printout was made as long as one year ago or more. Currently, the disputed domain name resolves to “http://www.alsa-project.org”, which is indeed a page about Advanced Linux Sound Architecture. It may well be, therefore, that the Respondent has leased the disputed domain name to a computer programmer; if so, it is not clear whether the lease occurred before or after the Complaint was filed or the Respondent otherwise had notice that the Complainant disputed the Respondent’s right to retain the registration. The Panel would like to emphasize, however, that the date when the disputed domain name was leased – or even whether it has in fact been leased at all – is not relevant to the Panel’s analysis.