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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

General de Valores y Cambios, Sociedad De Valores, S.A., Gaesco GestiГіn, Sociedad Gestora de Instituciones de InversiГіn Colectiva, S.A. v. Venta de Webs, La Casa de las Webs

Case No. D2008-1416

1. The Parties

The Complainants are General de Valores y Cambios, Sociedad De Valores, S.A. (GVC), and Gaesco GestiГіn, Sociedad Gestora de Instituciones de InversiГіn Colectiva, S.A (GAESCO), of Barcelona, Spain, represented by Cuatrecasas Abogados, Spain.

The Respondents are Venta de Webs and La Casa de las Webs, of Emery Ville, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <gvcgaesco.com>, <gvcgaescobroker.com>, <gaescogvc.com>, <gaescogvcbroker.com>, and <gaescobroker.com>, are registered with Melbourne IT Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2008. On September 18, 2008, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the domain names. On September 25, 2008, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that Venta de los Webs is listed as the registrant for <gvcgaesco.com> and <gvcgaescobroker.com>, and providing the contact details. Moreover, on the same date Melbourne IT Ltd transmitted by email to the Center its verification response confirming that La Casa de las Webs is listed as the registrant for <gaescogvc.com>, <gaescogvcbroker.com>, and <gaescobroker.com> and providing the contact details. The Complainant filed an amendment to the Complaint on October 17, 2008. 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” or “UDRP”), 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 September 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2008.

The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on November 10, 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.

As a preliminary issue, the Panel would like to address the Complainants’ petition to have the registrants considered as one singular Respondent. In that regard, the Complainants contend that all disputed domain names have been registered with Melbourne IT Ltd, using a service called “My Private Registration”. And that the Respondent was contacted by the Complainant on an anonymous basis in order to ascertain the amount the Respondent was prepared to sell the disputed domain names for, who by means of its response implicitly accepted that all five disputed domain names are registered and under control of the same person. Finally, the Complainants contend that in order to ascertain if Venta de Webs and La Casa de las Webs were in fact the same person, on September 8, 2008, they sent Melbourne IT Ltd a fax requesting the Registrar to provide the registrants’ contact details, but received no response. For the above reasons, the Complainants contend that it is clear that the disputed domain names have been registered by the same registrant entity.

The Panel finds that according to the Complainants’ statements and documents filed with the Complaint, it is not readily apparent that Venta de Webs and La Casa de las Webs are in fact the same. Both the registrants and Melbourne IT Ltd had the possibility to clarify said issue but none of them filed a reply.

Notwithstanding the above-mentioned, the Panel is prepared to consider the two registrants as one Respondent in light of the uncontested email communication of June 30, 2008 and July 7, 2008 offering for sale all the disputed domain names giving rise to the premise that all the disputed domains are under singular control by one domain name holder in accordance with paragraph 3(c) of the Rules.

4. Factual Background

GVC owns a Spanish registration for GVC, No. 2586373, granted by the Spanish Patent and Trademark Office on January 1, 2005, in international classes 16 and 36.

GAESCO owns a Spanish registration for FONDOGAESCO F.I.M., No. 2040036, granted by the Spanish Patent and Trademark Office on July 16, 1996, in international class 36. Moreover, GAESCO uses the name GAESCO for the development of its activities.

The Complainants are two of the leading financial brokers in Spain, currently marketing all type of financial products.

The Complainants are currently in the process of merger, which was officially announced on May 9, 2008.

The Respondents registered the disputed domain names <gvcgaesco.com>, <gvcgaescobroker.com>, <gaescogvc.com>, <gaescogvcbroker.com>, and <gaescobroker.com> on May 29, 2008, May 29, 2008, June 30, 2008, June 30, 2008, and May 14, 2008 respectively.

5. Parties’ Contentions

A. Complainants

The Complainants contend the following:

The Complainants are two of the leading financial brokers in Spain.

The Complainants currently market all types of financial products.

The Complainants are currently in the process of a merger, in order to create one of the main Spanish financial brokerage companies. As a consequence of this process, GVC will be the main shareholder of the resulting company and GAESCO will remain as the minority shareholder.

Since it was first rumored, in early 2008, the merger of the Complainants has been widely covered by the Spanish media, having been closely followed by specialized and general newspapers and other publications. The merger was officially announced on May 9, 2008.

The Complainants are widely known in the Spanish market as GVC and GAESCO, which they use in connection with the development of their commercial activities.

GVC owns a Spanish registration for GVC, No. 2586373, granted by the Spanish Patent and Trademark Office on January 1, 2005, in international classes 16 and 36.

GAESCO is currently using the name GAESCO for the development of its activities and, therefore it is unequivocally identified in the market through such a name.

Moreover, GAESCO owns a Spanish registration for FONDOGAESCO F.I.M., No. 2040036, granted by the Spanish Patent and Trademark Office on July 16, 1996, in international class 36.

GVC has registered the domain names <gvc.es>, <gvc.com.es>, <gvc-gaesco.com>, and <gvc-gaesco.es>.

GAESCO has registered the domain names <gaesco.com> and <gaesco.es>.

The disputed domain names <gvcgaesco.com> and <gaescogvc.com> are composed of a combination of the Complainants’ trademarks GVC and GAESCO. Such a combination is not coincidental but rather an opportunistic disputed referral to the Complainants’ upcoming merger. Therefore, the Complainants contend that the domain names <gvcgaesco.com>, <gaescogvc.com>, <gvcgaescobroker.com>, <gaescogvcbroker.com> and <gaescobroker.com> are confusingly similar to the Complainants’ trademarks. The addition of the generic word “broker” – directly related to the Complainant’s activities – does not sufficiently distinguish the disputed domain names from the Complainants’ marks.

The Complainants also contend that none of the circumstances set forth in paragraph 4(c) of the Policy has been satisfied in this case since the Respondent has not used the disputed domain names in connection with a good faith purpose. Moreover, the Respondent decided to hide their identity by using a “Your Private Registration” service offered by Melbourne IT Ltd.

In respect to the domain name <gvcgaesco.com>, the Complainants contend that the Respondent has apparently developed a website for the provision of information connected with the stock exchange and other financial markets, which cannot be deemed as fair.

Regarding the domain names <gvcgaescobroker.com> and <gaescobroker.com>, the Complainants contend that they resolve to some of the Complainants’ competitors’ websites and that they are also publicly offered for sale.

In respect to the domain names <gaescogvc.com> and <gaescogvcbroker.com>, the Complainants contend that they are merely “parked” in a generic website operated by Verio.com.

Furthermore, they contend that the Respondent is not associated or linked at all to the Complainants nor have they signed any contract or entered into any kind of agreement with the Complainants in order to use their trademarks.

The Respondent has not made a fair use of nor has it rights of legistimate interests in the disputed domain names and, consequently, have no legitimacy at all for using the disputed domain names.

The Respondent was aware of the Complainants’ merger at the time of registration of the disputed domain names. All the disputed domain names were registered after the merger of the Complainants was officially announced on May 9, 2008.

The Respondent has registered and is using the disputed domain names in bad faith.

In that regard, the Respondent has offered the Complainants to sell the disputed domain names for the price of €50,000. Such behavior must be considered as a use in bad faith.

Apart from the offer-for-sale circumstance, there are other particular facts that demonstrate the Respondents’ bad faith.

In connection with the disputed domain name <gvcgaesco.com>, the Respondent has tried to create an appearance of fair use by posting a supposed information website focused on the stock market.

The disputed domain names <gvcgaescobroker.com> and <gaescobroker.com> resolve to Complainants’ competitors’ websites and they are also publicly offered for sale trough Sedo.com.

Lastly, the domain names <gaescogvc.com> and <gaescogvcbroker.com> are merely “parked” in a website operated by Verio.com.

For the above, the Complainant’s contend that the disputed domain names have been registered and are being used in bad faith.

B. Respondent

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

For the Complaint to succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, the complainant must prove that:

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

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

(iii) The disputed domain names have been registered and are 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.

A. Identical or Confusingly Similar

GVC owns a Spanish registration for GVC, No. 2586373, granted by the Spanish Patent and Trademark Office on January 1, 2005, in international classes 16 and 36.

GAESCO owns a Spanish registration for FONDOGAESCO F.I.M., No. 2040036, granted by the Spanish Patent and Trademark Office on July 16, 1996, in international class 36.

Moreover, GAESCO has filed relevant evidence showing that it is currently using the trade name GAESCO for the development of its activities. The Panel is persuaded that GAESCO is using the name GAESCO as a trademark which has become a distinctive identifier associated with GAESCO’s services and therefore has proved to have unregistered rights which can arise even when the complainant is based in a civil law jurisdiction (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions 1.7; and Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322)

Therefore, the Complainants have proved to have trademark rights in GVC and GAESCO.

The disputed domain names <gvcgaesco.com>, <gvcgaescobroker.com>, <gaescogvc.com>, <gaescogvcbroker.com>, and <gaescobroker.com>, incorporates the GAESCO mark, at times in combination with the GVC mark and, thus, are confusingly similar to the Complainants’ trademarks.

The mere addition of the term “broker”, in some of the disputed domain names and in the context of this case evokes the services that the Complainants have prove to render in the Spanish market.

Opportunistic combinations of two marks, registered as domain names shortly after a merger announcement, have been discouraged by UDRP Panelists (see Pharmacia & Upjohn AB v. Monsantopharmacia.com Inc., WIPO Case No. D2000-0446 and Vivendi S.A., The Seagram Company Ltd., Joseph E. Seagram & Sons, Inc., Universal Studios, Inc., and Universal City Studios, Inc. v. Yu Fu Zhao (aka Tyou Star) (“Zhao”), WIPO Case No. D2000-0717).

In view of the foregoing, the Panel finds that the disputed domain names are confusingly similar to trademarks in which the Complainants have rights, and therefore, the Complainants have succeeded on this first element under the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii), the second element that the Complainants must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Policy in its paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.

Although the Policy states that the Complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a clear prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.

The Panel finds that the Complainants have made a prima facie case that the Respondents have no rights or legitimate interests and so the burden of proof has effectively been shifted to the Respondents, who did not reply to the Complainants’ contentions and therefore have not made such showing.

Furthermore, the Complainants have submitted relevant evidence showing that the Respondent has not made a bona fide offering of goods or services.

For a better consideration of the different circumstances affecting the disputed domain names, the Panel will consider the different domain names separately, grouping them whenever possible on the basis of similar characteristics.

<gvcgaesco.com>

The Complainants have presented evidence that the website to which the disputed domain name resolves contains information related to the stock exchange and other financial markets, activities in which the Complainants have shown to render its services.

In the terms of the Policy, such use in the present circumstances does not appear to be a fair use of the domain name, and therefore, the Panel finds that the Respondent is trying to misleadingly divert consumers to the website to which the disputed domain name resolves.

<gvcgaescobroker.com> and <gaescobroker.com>

The Complainants have presented evidence that the disputed domain names <gvcgaescobroker.com> and <gaescobroker.com> have pay-per-click links that redirect users to other online locations offering competing services to the ones rendered by the Complainants.

Therefore, the Panel finds that the Respondent is attracting for commercial gain, Internet users to its website and to the Complainants’ competitors’ websites. Such use cannot be considered a bona fide use, or fair or noncommercial use.

Moreover, the Panel notes that the disputed domain names <gvcgaescobroker.com> and <gaescobroker.com> appear to be for sale through the well-known name auction site Sedo.com, what reinforces the idea that the Respondent has neither rights nor legitimate interests in the disputed domain names.

<gaescogvc.com> and <gaescogvcbroker.com>

The Complainants have presented evidence that the disputed domain names<gaescogvc.com> and <gaescogvcbroker.com> are parked with Verio’s website, a domain name registrar.

There is no evidence that the domain names are for sale. Nevertheless, on the record in the particular circumstances of this case, such use could not be considered as a bona fide offering of goods or services.

Additionally, there is no evidence that the Respondents are commonly known as or identified by GVC or GAESCO. Furthermore, there is no evidence showing that the Respondents operate a business or any other organization under the disputed domain names.

For these reasons and in the absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.

The Policy in paragraph 4(b) sets out various circumstances which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.

The Complainants have identified themselves to be two of the leading financial brokers in Spain, currently marketing all types of financial products.

The Complainants have also shown that their merger has rumored in early 2008, and that on May 9, 2008, they made it official.

Moreover, the present record shows that the Complainants’ merger has been thoroughly covered not only by the Spanish media but also by the international media, as for example, on the well-known financial and economics website “www.money.com”.

Furthermore, all five disputed domain names were registered soon after the Complainants made their merger official on May 9, 2008. In that regard, the disputed domain names were registered in the following dates:

Domain name

Registration date

<gvcgaesco.com>

May 28, 2008

<gvcgaescobroker.com>

May 28, 2008

<gaescogvc.com>

June 30, 2008

<gaescogvcbroker.com>

June 30, 2008

<gaescobroker.com>

May 13, 2008

Therefore, the Panel finds that the Respondent in all likelihood must have been aware of the trademarks GVC and GAESCO and of the Complainants’ merger, before registering the disputed domain names, which evidences bad faith registration.

Moreover, the Complainants have shown to the Panel’s satisfaction that the Respondent offered them the sale of the disputed domain names for the price of €50,000.

In that connection, the Complainants presented in the record communications by email with the Respondent or with a person authorized by them therewith by which they have effectively offered the assignment of the disputed domain names for the price of €50,000. The Respondent could have denied such offer for sale, but they have failed to do so.

In absence of a rebuttal by the Respondent and in accordance with the uncontested documents filed by the Complainants, the Panel finds that, by offering to sale the disputed domain names to the Complainants for valuable consideration in excess of documented out-of-pocket costs, the Respondent is using the disputed domain names in bad faith.

Moreover, as stated by the Complainants and apparent by the printouts of the websites to which the disputed domain names resolve, the Panel finds that by using the disputed domain names the Respondents have intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line locations, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement.

For these reasons, the Panel finds that the Respondent both registered and used the disputed domain names in bad faith, and that the Complainants have therefore made out the third element of their case.

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 names, <gvcgaesco.com>, <gvcgaescobroker.com>, <gaescogvc.com>, <gaescogvcbroker.com>, and <gaescobroker.com> be transferred to the Complainants.


Miguel B. O’Farrell
Sole Panelist

Dated: November 24, 2008

 

Источник информации: https://internet-law.ru/intlaw/udrp/2008/d2008-1416.html

 

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