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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pedro Amador Lopez v. Visel Ce

Case No. D2008-0671

 

1. The Parties

The Complainant is Pedro Amador Lopez, Madrid, Spain, represented by Falcon y Asociados, Spain.

The Respondent is Visel Ce, Commack, New York, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <autocoaching.com> is registered with GoDaddy.com, Inc.

 

3. Procedural History

The Complaint was filed in Spanish with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2008. On April 30, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On May 1, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. GoDaddy.com also confirmed, among other things, that the language of the registration agreement was English. In response to notifications by the Center that the Complaint was administratively deficient the Complainant filed an amended Complaint in English on May 19, 2008, together with some further amendments filed on May 21, 2008. The Center verified that the Complaint together with the amendments 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 June 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2008. The Response was filed with the Center on June 24, 2008.

On June 27, 2008, the Complainant made a supplemental filing in connection with this case.

On June 28, 2008, the Center received an email forwarded to it from a representative of the property owner at the address specified for the Respondent in the WhoIs details, as well as the Complaint. That representative stated that the Respondent “has no relationship with my clients property. My client is a church and day care center at the address. I have no other information about the respondent.”

On June 30, 2008, the Respondent made a supplemental filing in connection with this case.

The Center appointed James A. Barker as the sole panelist in this matter on July 2, 2008. 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 Complainant is the owner of a registered mark for AUTOCOACHING. That mark was filed in Spain in 2006. The Complainant also has a Community mark first filed in 2007. The Complainant provides evidence of having marks registered in Mexico (the Complainant’s evidence did not however indicate the date of registration), the United States of America (filed in 2007), Venezuela (filed in 2007), Canada (filed in 2007), Argentina (filed in 2007), and Brazil (filed in 2008). (The date of filing of these marks is what seems to be apparent to the Panel from the evidence provided by the Complainant, which was provided in the language of the country concerned. The Complainant did not however provide this evidence in English - the language of these proceedings.)

The Complainant maintains a website at “www.autocoaching.info”. Although the Complainant did not provide direct evidence of it, it appears from the WhoIs details that the Complainant’s domain name has a creation date of July 9, 2005. On the Complainant’s website, the Complainant’s mark appears with the word “auto” appearing above the word “coaching”, with a stylized person stepping from the lower placed word to the higher placed one.

The disputed domain name has a “creation date”, as indicated in the WhoIs record, of December 19, 2002.

At the date of this decision, the disputed domain name reverted to a “portal” or “landing” website. That website includes a number of links with titles relating to coaching of various kinds.

 

5. Parties’ Contentions

A. Complainant

In summary, the Complainant claims that its marks have been widely known since 2006. In support of that contention, the Complainant provides links to information that it has published on the Internet.

The Complainant provides evidence of it seeking to purchase the disputed domain name using the Registrar’s “Domain Buy Service”, in January 2008. In March 2008, the Complainant sent a letter of demand to the Respondent. Essentially, that letter claimed that the Respondent was infringing the Complainant’s rights in its mark, and requested the transfer of the disputed domain name. The Respondent replied the next day, to say only that “autocoaching.com is developing on the portal site for our business.”

The Complainant claims that the disputed domain name is identical to and has created confusion with its mark in which it holds prior rights.

The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name, since it has not been used to make a bona fide offering of goods or services. In this connection the Complainant refers to a number of apparently civil cases concerning domain names.

The Complainant also claims that the Respondent has used the disputed domain name in bad faith, and that the Respondent “could not be unaware of the existence of the priority rights held by [the Complainant]”.

B. Respondent

The Respondent denies the claims against it.

In summary, the Respondent notes that the Complainant’s rights in its marks date from 2006 and that it does not have a mark registered in the United States of America, where the Respondent resides. The Respondent notes that, in comparison, it registered the disputed domain name in 2002.

The Respondent refers to a number of prior proceedings under the Policy to support its arguments in relation to paragraph 4(a)(i). Relevantly, in Phoenix Mortgage Corporation v. Tom Toggas, WIPO Case No. D2001-0101 the then panel stated that:

“Paragraph 4(a)(i) of the Policy requires a showing that the domain name is identical or confusingly similar to a mark in which the Complainant has rights. Although not specifically stated, this provision necessarily implies that the Complainant’s rights predate the Respondent’s registration and use of the Domain Name. Any other interpretation would allow a junior trademark user to challenge a prior domain name registration, a possibility that is obviously contrary to the intent of the Policy and to trademark law generally.”

In relation to the Complainant’s claims that the Respondent lacks a right or legitimate interest, the Respondent states that its website includes sponsored sites “in relation to auto and coaching”.

The Respondent also denies that it acted in bad faith. The Respondent appears to argue that Internet users can clearly distinguish its site from the Complainant’s.

 

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove three elements to succeed in its claim. These are that:

(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 was registered and is being used in bad faith.

Each of these elements are discussed in turn as follows, immediately after a discussion concerning the parties supplemental filings.

A. Supplemental filings

Each of the parties made supplemental filings in this case.

Neither the Policy nor the Rules explicitly provide for supplemental filings to be made by either party. A Panel has discretion to admit or invite further filings under the paragraphs 10(a), (b) and (d), and paragraph 12 of the Rules. The Panel considers that such filings should usually only be admitted if it is both necessary to the parties’ case, and could not reasonably have been addressed in the Complaint or Response as first filed. This approach is more consistent with the nature of these summary proceedings.

These circumstances are not present in this case. The Panel has sufficient information to make a decision on the basis of the Complaint and the Response. Accordingly, the Panel did not admit the supplemental filings.

B. Identical or Confusingly Similar

The Complainant provides evidence of having rights in the mark AUTOCOACHING. The Panel finds that the disputed domain name is relevantly identical to that mark.

In this respect, this Panel takes a different approach to those taken in the cases cited by the Respondent. That is, this element of the Policy is concerned only with the question of whether a complainant has rights in a mark, and whether the domain name concerned is identical or confusingly similar to that mark. Whether the Respondent’s registration pre-dates the Complainant’s trademark rights is relevant to the third ground of the Policy. This is made clear by the discussion of previous panels, addressed in item 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, cited below.

C. Rights or Legitimate Interests

For the reasons set out below, it is not necessary for the Panel to make a finding about this element.

D. Registered and Used in Bad Faith

It is central to a finding of bad faith that the Respondent intended to unfairly take advantage of the Complainant’s mark. Necessarily for such a finding, as required by paragraph 4(a)(iii) of the Policy, the Respondent must have known of the Complainant when the disputed domain name was registered and then used.

But there is no evidence to support any such finding in this case. The Complainant states that the Respondent could not have been unaware of it on the basis of the “many communications” between them. No evidence is provided to support this assertion. There is no evidence of any, let alone many, communications between the parties that might have put the Respondent on notice of the Complainant’s rights before the domain name was registered. The Complainant provides evidence of its anonymous approach to purchase the disputed domain name in 2007, and a letter of demand sent to the Respondent in 2008. It is obvious that these limited communications came well after the Respondent registered the disputed domain name.

The disputed domain name appears to have been registered some years before the Complainant acquired any trademark rights. The Complainant’s rights in its marks begin from 2006. The disputed domain name was registered in 2002. There is no evidence that the Complainant traded at all when the disputed domain name was registered. There is also no evidence as to why the Respondent, based in the United States of America, should have been aware of the Complainant, based in Spain.

Relevantly to these facts, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, summarises the consensus of WIPO Panels on the question of whether bad faith can be found if the disputed domain name was registered before the trademark was registered or acquired. The WIPO Overview summarizes panel’s views on this question as follows:

Consensus view: Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right. …

However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found…”

As noted above, there is no evidence that the Respondent was clearly aware - or aware at all - of the Complainant when it registered the disputed domain name. This is not surprising, as the Complainant provided no evidence of even being in business at that time. As such, the Panel has followed the consensus view, and finds that the Complainant has not established its case.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.


James A. Barker
Sole Panelist

Dated: July 21, 2008

 

Источник информации: https://internet-law.ru/intlaw/udrp/2008/d2008-0671.html

 

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