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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Betacar, S.A. v. Domain Queue

Case No. D2006-1234

 

1. The Parties

The Complainant is Betacar, S.A., Palma de Mallorca, Spain, represented by MPS Legal, Spain.

The Respondent is Domain Queue, Tacoma, Washington, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <betacar.com> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2006. On September 27, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On September 29, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint received by the Center on October 26, 2006. The Center verified that the Complaint together with the amendment to 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 Rules”).

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 October 9, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2006. The Response was filed with the Center on October 19, 2006.

The Center appointed Ian Blackshaw as the Sole Panelist in this matter on October 27, 2006. 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

Betacar, S.A. is the sole owner of the following trademarks, sign and name:

(1) Spanish registered servicemark 2261686 (BC – Betacar), intended for, inter alia, repairing and maintaining all types of vehicles (Nice class #37).

(2) Spanish registered servicemark 2261687 (BC – Betacar) intended for, inter alia, transportation and letting of vehicles (activity aka car rental in the trade) and vessels (Nice class #39).

(3) Spanish registered servicemark 2261688 (BC – Betacar) intended for, inter alia, repairing and maintaining all types of vehicles (Nice class #37).

(4) Spanish registered servicemark 2261689 (BC - Betacar) intended for, inter alia, transportation and letting of vehicles (activity aka car rental in the trade) and vessels (Nice class #39).

(5) Spanish registered premise’s sign R0147425 (Betacar, S.A.) intended for identifying in the streets Betacar, S.A.’s premises used for, inter alia, deposit and letting of vehicles (activity aka car rental in the trade), cars and vessels, as well as repairing of the same.

(6) Spanish registered trade name 0.100.620 (Betacar, S.A.) intended for, inter alia, the acquisition, repair and letting of vehicles (activity aka in the trade as car rental) (Nice classes # 35, 36, 37 and 39).

(7) Spanish registered servicemark 1.048.642 (BETACAR, S.A.) intended for, inter alia, the letting of vehicles (activity aka car rental in the trade) and vessels (Nice class # 39).

(8) WIPO registered mark 526217 (BETACAR, S.A. – BC) intended for, inter alia, the letting of vehicles and vessels (Nice class # 39).

Copies of the corresponding registration certificates of the above trademarks, sign and name have been provided to the Panel.

Betacar, S.A., is the holder of several “BETACAR” service marks for, inter alia, letting vehicles (activity aka in the trade as car rental).

The Respondent, for its part, holds a web page primarily dedicated to car rental in Spain, paying special attention to the Balearic Islands (Menorca, Ibiza) and Canary Islands (Tenerife, Fuerteventura), which are precisely the principal places of business of the Complainant. A copy of a printout of the web page of the Respondent has been provided to the Panel.

 

5. Parties’ Contentions

The parties make the following contentions:

A. Complainant

A1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

A case like the present one was decided by the WIPO Arbitration and Mediation Center in Marcos Arbaitman, Maringб Passagens e Turismo Ltda v. Tutimundi Enterprise, WIPO Case No. D2005-0916, where it was decided to transfer the disputed domain name to the Complainant provided that the said domain name reproduced and was identical to a registered trademark. A copy of this decision has been provided to the Panel.

A2. The Respondent has no rights or legitimate interests in respect of the domain name; and

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

In accordance with Rules, paragraph 3(b)(ix)(2), it shall be noted that the Respondent does not have any right or legitimate interest in respect of the domain name that is the subject of the Complaint.

There is no legitimate reason for the Respondent to use a European registered BETACAR service mark in connection with a car rental business. The only justification for the Respondent’s intended use of the disputed domain name is to unlawfully trade off the value and goodwill of the Betacar service mark.

In addition, it shall also be noted that the contents of the Respondent’s website comprising the disputed domain name refer basically to the car rental business in Spain, and that the BETACAR registered service mark and the Betacar company itself are extremely well known in Spain. A copy of an expert’s report regarding this matter has been provided to the Panel.

A3. The domain name was registered and is being used in bad faith;

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

In accordance with Rules, paragraph 3(b)(ix)(3), it shall be noted that the domain name should be considered as having been registered and used in bad faith by the Respondent provided that, by using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain Internet users to the Respondent’s website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Panel has been provided with an expert’s report which states that:

- “… Our conclusion is that this domain <www.betacar.com> is owned and used by a cybersquatter, enabling traffic to promote the same kind of offer that Betacar has, for the same target market and geographical scope.”

- “Betacar is the incumbent player in the archipelagos of Canary and Balearic, in both income as well as coverage. Its business developed exclusively in those markets –Betacar has more than 150 POS [Points of Sale] across both archipelagos.”

- “During 2005, [Betacar, S.A.’s] income from operations was about € 46 m.”

- “Due to the kind of business, the Betacar brand has a strong and standardized presence within its key audiences in its marketplace.”

- “During 2005, the marketing investment on brand awareness was € 216 k. With that amount of money - which can be considered low - Betacar’s presence is sensibly higher than its main competitors.”

- “The “betacar.com” webpage promotes business related to Betacar’s main offer and related to the Betacar’s geographical market.”

It is obvious, the Complainant concludes that the persons or companies who have registered the disputed domain name <betacar.com> have acted in bad faith.

B. Respondent

B1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The Complainant claims that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. In a case where a domain name is composed of dictionary words with multiple uses and/or meanings, this is often seen. The Complainant has <betacar.biz>, for example; <betacar.com>is of course similar to that name, as it is similar to other registered in use names <betacar.cz>; <betacar.lu>; <betacar.sk>; <betacar.co.uk>; betacar the hypertension drug, and many other references found in a ‘google’ search. Betacar is known as a minor type-in and such names frequently are quite similar to the same name on other TLDs and in other contexts.

B2. The Respondent has no rights or legitimate interests in respect of the domain name;

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

It should be noted that the Complainant requested a Spanish arbitrator and because of this it would seem that the Complainant was unsure of its legal standing.

The disputed domain name has been registered, deleted, and registered again at least twice since 1999 as can be seen in the wayback listing at “http://web.archive.org/web/*/http://betacar.com”. Why has the Complainant not pursued this name in all that time? The Respondent held the name for over a year before being contacted by the Complainant and that was to request to purchase the name, not to remove confusing links, or to claim rights to the name. This can be seen in the e-mail ‘conversation’ between the Respondent and two employees of the Complainant, a copy of which e-mail exchanges has been provided to the Panel.

It should be noted that an agreement was reached for a transfer of the name prior to the filing of the present Complaint.

B3. The domain name was registered and is being used in bad faith;

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The disputed domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, as the alleged owner of the trademark or service mark, or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name.

The domain name was not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name and, in connection therewith, the Respondent has not engaged in a pattern of such conduct.

The Complainant and the Respondent are not competitors and the disputed domain name was not registered by the Respondent to disrupt the Complainant’s business.

The disputed domain name was not registered by the Respondent in an intentional attempt to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website.

Before the Respondent received any notice of the dispute, there is evidence of the Respondent’s use of the disputed domain name in connection with a bona fide offering of goods or services, those being from a standard pay per click provider and for months having no links which might be considered competitive or confusing with those of the Complainant and never intentionally having them (this can be confirmed by the pay per click provider if necessary).

 

6. Discussion and Findings

To qualify for transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

A. Identical or Confusingly Similar

In accordance with prior UDRP decisions, where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See, for example, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The disputed domain name incorporates the trademark BETACAR, which is owned and has been commercially used by the Complainant exclusively in and for the purposes of its business for several years during which time it has acquired a certain reputation and goodwill.

Also, the addition of the suffix “.com”, which is required for registration purposes only, is irrelevant, for trademark purposes, as it does not serve to distinguish the disputed domain name from the trademark of the Complainant. See on this general principle, Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493, in which the panel found that the domain name <pomellato.com> is identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO, is not relevant. Also see Blue Sky Software Corp. v. Digital Sierra Inc. and Abdullah Khan, WIPO Case No. D2000-0165, in which the panel held that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the “addition of the suffix “.com” is not a distinguishing difference”.

The Respondent’s disputed domain name incorporates the Complainant’s widely-known trademark BETACAR, which is also the corporate name of the Complainant under which the Complainant carries on its business. Furthermore, the Respondent admits that the disputed domain name is similar to the domain name <betacar.biz> which, according to the Respondent, the Complainant already holds. The only difference being the suffix “.com”, instead of the suffix “.biz”, both of which, as mentioned above, are registration matters and not distinguishing features and, therefore, not relevant for trademark purposes.

Apart from the above, the Respondent’s contention that the name BETACAR is a dictionary word with multiple meanings is rejected by the Panel, because, in its view, the name is an invented one, created for trademark registration purposes.

In view of all this, the Panel finds that the disputed domain name registered by the Respondent is identical to the trademark BETACAR, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established, well-known and commercially valuable rights through registration and also commercial use and promotion in the Balearics and Canaries, for several years and prior to the registration by the Respondent of the disputed domain.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

- Whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- Whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. Indeed, in view of the notoriety of the Complainant’s car rental business and the Complainant’s trademark BETACAR, under which the Complainant caries on such business, the Respondent must or should have known of Complainants trademark rights.. Also, there is no evidence that the Respondent has been authorized or licensed by the Complainant to use the disputed domain name. Had the Respondent been granted such rights, the Respondent would have asserted them in the present proceedings. As was stated by the panel in Air Austral v WWW Enterprise, Inc, WIPO Case No. D2004-0765: “In the absence of any answer to the Complainant’s contentions from the Respondent, the Panel draws the inference that the Respondent has no rights or legitimate interests in the disputed domain name.” The Respondent’s suggestion that the Complainant’s willingness to purchase the disputed domain name from the Respondent shows a lack of rights or legitimate interests on the part of the Complainant is a non sequitur and finds no favor with the Panel.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraphs 4(b)(ii) and (iv) of the Policy are relevant to the present case and provide that there is evidence of bad faith in the following circumstances:

“(ii) the respondent has 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;

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.”

Regarding the provisions of paragraph 4(b)(ii) of the Policy, although the Respondent claims that that there was no intention to register the disputed domain name “…in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name…” as stated by the panel in Vakko Holding Anonim Sti. v Esat Ist, WIPO Case No. D2001-1173: “…the mere holding of a domain name that is identical or confusingly similar to a trademark belonging to someone else, in itself can be considered disrupting to the business of the rightholder.” This is contrary to Paragraph 4(b)(iii) of the Policy and constitutes evidence of bad faith on the part of the Respondent in the present case.

Regarding the provisions of paragraph 4(b)(iv) of the Policy, by registering and using the disputed domain name incorporating the Complainant’s trademark, BETACAR, the Respondent is misleading Internet users and consumers into thinking that it is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business, or that the Respondent’s activities are approved or endorsed by the Complainant. None of this, according to the Case File is, in fact, the situation. According to the Respondent this conduct was not intended to be misleading. However the adoption by the Respondent of a domain name identical to the Complainant’s trademark BETACAR inevitably leads to the diversion of the Complainant’s consumers, wishing to access the Complainant’s website, to the Respondent’s website (see further on this point below), which is misleading with the consequential tarnishing of the Complainant’s trademark. Thus, the Respondent cannot claim that the Respondent is making a legitimate non commercial or fair use of the disputed domain name. In the view of the Panel, is also evidence of bad faith on the part of the Respondent, because of, the well-known and accepted rule of evidence, that a party must be taken to have intended the natural consequences of its own act. Furthermore, the Respondent’s claim, as stated above, not to be a competitor of the Complainant is without credibility, given the fact that the Respondent’s web page incorporating the disputed domain name contains several mentions and references to car rental and hire in Spain, which is the principal business activity of the Complainant. If the Respondent, as the Respondent claims, is not a competitor of the Complainant, why does the Respondent use the Complainant’s trademark and business name on a website that offers identical services to those offered by the Complainant and in the same parts of Spain? This, in the view of the Panel, is further evidence of bad faith on the part of the Respondent.

The Respondent’s claim, as stated above, namely that, prior to notification of the present dispute, there is evidence of the Respondent’s use of the disputed domain name in connection with a bona fide offering of goods or services, being from a standard PPC provider, and for months having no links which might be considered competitive or confusing with those of the Complainant and never intentionally having them, is disregarded by the Panel as the Respondent has not adduced any independent evidence in support of its claim.

Thus, for the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <betacar.com> be transferred to the Complainant.


Ian Blackshaw
Sole Panelist

Dated: November 17, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-1234.html

 

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