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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BergГ© y CompaГ±Гa, S.A. v. Frank Estrada
Case No. D2008-1447
1. The Parties
The Complainant is BergГ© y CompaГ±Гa, S.A., Bilbao (Vizcaya), Spain, represented by Elzaburu, Spain.
The Respondent is Frank Estrada, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <grupoberge.net> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the вЂњCenterвЂќ) on September 23, 2008. On September 24, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On September 24, 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 and contact information in the Complaint. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the вЂњPolicyвЂќ), the Rules for Uniform Domain Name Dispute Resolution Policy (the вЂњRulesвЂќ), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the вЂњSupplemental RulesвЂќ).
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 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2008. The Response was filed with the Center on October 6, 2008.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on November 6, 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
According to the Complainant, BergГ© y CompaГ±Гa, S.A, it is a Spanish company that deals, among other things, in cars. It is the holder of a number of registered trademarks incorporating the word BERGГ‰, including:
Community trademark No. 004269775 BERGГ‰ (figurative), in Classes 12, 35, 36, 39 and 40, filed February 2, 2005 and granted March 29, 2006;
Community trademark No. 000667147 BERGГ‰, in Classes 12, 35 and 39, filed November 3, 1997 and granted April 8, 1999;
Community trademark No. 000526855 BERGГ‰, in Classes 35 and 36, filed April 30, 1997 and granted November 10, 1998;
Community trademark No. 000320820 BERGГ‰, in Class 39, filed August 6, 1996 and granted January 21, 1999;
Spanish Trade Name Registration 260016 BERGГ‰ (figurative), in Classes 12, 35, 36, 39 and 40, filed February 2, 2005 and granted September 19, 2005;
Spanish Trade Mark Registration 738657 BERGГ‰, in Class 39, filed January 11, 1974 and granted March 14, 1978.
In Spain and South America the ComplainantвЂ™s group of companies is known as вЂњGrupo BergГ©вЂќ (BergГ© Group). The Complainant filed CTM Application No. 006582712 GRUPO BERGГ‰, in Classes 12, 35, 36, 39 and 40, on January 15, 2008.
The Complainant also owns the following domain names:
<grupoberge.com> (registered on July 22, 2002)
According to the Respondent, he is Frank Estrada, an individual. He registered the disputed domain name on October 20, 2002.
5. PartiesвЂ™ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights. The Complainant provides documentation supporting its ownership of the BERGГ‰ trademarks listed above. The disputed domain name is evidently identical to the name Grupo BergГ©, and the suffix вЂњ.netвЂќ may be disregarded. The principal part of the domain name, BERGГ‰, is the same as the ComplainantвЂ™s registered trademarks. The other part of the domain name, GRUPO, is Spanish for вЂњGroupвЂќ.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence of the RespondentвЂ™s use of, or demonstrable preparations to use, the disputed domain name or a corresponding name in connection with a bona fide offering of goods or services; he has not been commonly known by the disputed domain name; he is not making a legitimate noncommercial or fair use of it. The website corresponding to <grupoberge.net> redirects to вЂњwww.ford.esвЂќ, the website of Ford EspaГ±a, a car distributor and competitor of the Complainant. Everything would appear to indicate that Ford has nothing to do with that circumstance, but the existence of the redirection is indicative of an absence of legitimate interest by the Respondent and indicative of bad faith.
The Complainant further contends that the disputed domain name was registered and is used in bad faith for the following reasons:
The disputed domain name evidently is for sale and open to offers (paragraph 4(b)(i) of the Policy). The administrative contact address is email@example.com, meaning вЂњdomain for saleвЂќ.
It would appear that the aim of the Respondent is to prevent the disputed domain name from being registered and used by the Complainant (paragraph 4(b)(ii) of the Policy). The corresponding website automatically redirects visitors to the website of Ford EspaГ±a, which is disruptive of the ComplainantвЂ™s business.
The Complainant has no reason to believe that the Respondent has a connection with Ford. Nevertheless, the Respondent must have a reason for redirecting visitors in this way that amounts to or includes an intention to damage the interests of the Complainant (paragraph 4(b)(iv) of the Policy). The Complainant cites Aktiebolaget Electrolux v. Najam Hasan, Domains By Proxy Inc.,
WIPO Case No. D2008-0833. Furthermore, the Complainant is well known as вЂњGrupo BergГ©вЂќ and there would not appear to be any plausible explanation for the Respondent having adopted the ComplainantвЂ™s name as a domain name. The Complainant cites Laboratorios Recalcine S.A. v. Victor Abarca,
WIPO Case No. D2001-0631, and other UDRP decisions.
The Complainant contends that on June 26, 2008 and July 1, 2008 a warning letter, a copy of which is provided in evidence, was sent to the Respondent by email and by fax. There has been no reply.
The Complainant requests the transfer to it of the disputed domain name.
The RespondentвЂ™s contentions include that a large corporation wishes to take a legally registered domain name, having the extension that it wants, from a private individual who has held it for six years. The Complainant should have enquired for it but has instead harassed the Respondent.
The disputed domain name was registered by the Respondent on October 20, 2002, three months after <grupoberge.com> was registered by the Complainant. The Complainant registered вЂњgrupobergвЂќ as a domain name with other extensions in 2007 and 2008, i.e., some years later than the disputed domain name was registered.
The Respondent contends that he has not hosted and does not host a website with the disputed domain name <grupoberge.net>, but merely uses it for several personal email addresses. He does not use the disputed domain name for any activity that refers to the ComplainantвЂ™s corporation.
The Respondent says he has offered to redirect visitors to the ComplainantвЂ™s business website free of charge but the Complainant has not responded to the offer (which is now withdrawn).
The Respondent submits a copy of email correspondence dated March 3, 2008 that opened with an unsolicited approach from someone expressing interest in buying the domain name; the Respondent asking why the enquirer was interested; the enquirer saying he and his company were named BergГ©; and the Respondent offering to point his website to the enquirerвЂ™s.
The Respondent requests that [WIPO] should respect and protect his position by denying the Complaint, asks for certain costs, and for the Complainant to be warned against harassment of the Respondent.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
вЂњto submit to a mandatory administrative proceeding in the event that a third party (a вЂќcomplainantвЂќ) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.вЂќ
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Complainant has submitted documentary evidence of its ownership of the trademark BERGГ‰, dating back to a first filing at least as early as 1974. The question to be determined under paragraph 4(a)(i) of the Policy is whether the disputed domain name <grupoberge.net> is confusingly similar or identical to the ComplainantвЂ™s trademark. The proper name вЂњBergГ©вЂќ may not be uncommon and the word вЂњgrupoвЂќ, meaning group, is common and descriptive. The two words placed together, however, clearly become вЂњGrupo BergГ©вЂќ, or the BergГ© Group. The Complainant appears to have applied for the fuller trademark GRUPO BERGГ‰ only recently, on January 15, 2008, but states that it has been widely known as вЂњGrupo BergГ©вЂќ for some years. In the circumstances, the Panel finds the ComplainantвЂ™s registration of its domain name <grupoberge.com>, as early as July 22, 2002, to be supporting evidence of its common law usage of the unregistered trademark GRUPO BERGГ‰.
The standard designation вЂњ.netвЂќ may be disregarded in the consideration of confusing similarity, being an inevitable part of a domain name indicating the generic top level domain (gTLD). What remains is вЂњgrupobergeвЂќ, which the Panel finds to be confusingly similar to BERGГ‰, which was the ComplainantвЂ™s registered trademark when the disputed domain name was registered. Furthermore the descriptive word вЂњgrupoвЂќ in the disputed domain name is found to enhance the confusing similarity since it is accepted that the Complainant was known at the time as GRUPO BERGГ‰ in common law, although that trademark had not then been registered.
B. Rights or Legitimate Interests
The Complainant is required to prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has made out a prima facie case to this effect by certifying that it can find no evidence of the RespondentвЂ™s use of the disputed domain name or a corresponding name in connection with a bona fide offering of goods or services; that the Respondent has not been commonly known by the disputed domain name; and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Since the Respondent may have information not known to the Complainant, the Respondent has the opportunity to refute the ComplainantвЂ™s assertions, according to the illustrative provisions of paragraph 4(c) of the Policy or otherwise.
In the terms of paragraph 4(c)(i) of the Policy, the evidence is that visitors to the website of the disputed domain name are redirected to an advertisement for Ford cars. Whatever the reason for this, the Panel is unable to find any legitimacy in the use of the ComplainantвЂ™s trademark by the Respondent without authority, for a website in the same field of business as the Complainant.
In the terms of paragraph 4(c)(ii) of the Policy, the Respondent does not claim to have been known by the disputed domain name.
In the terms of paragraph 4(c)(iii) of the Policy, the use of the disputed domain name is clearly not noncommercial, and for the reasons given in relation to paragraph 4(c)(i) of the Policy, does not constitute fair use.
Accordingly the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you 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; or
(ii) you have 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, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantвЂ™s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Complainant deals in cars, and the disputed domain name is used for a website prominently featuring, or linked to, Ford cars. The Panel has made a limited viewing of the RespondentвЂ™s website within its powers under paragraph 10(a) of the Rules (The Vanguard Group, Inc. v. Lorna Kang,
WIPO Case No. D2002-1064). The RespondentвЂ™s website offers a number of further links, and chains of links, extending beyond its front page to Ford-supported items such as credit, numerous car models, catalogues and a magazine.
From the evidence, the Panel takes the following overview of the RespondentвЂ™s activities. In 2002, three months after the Complainant registered <grupoberge.com> based on its common law trademark, the Respondent reflected the same trademark in the parallel and disputed domain name <grupoberge.net>. As found above, the Respondent has no rights or legitimate interests in the disputed domain name. His assertion that he вЂњhas not hosted and does not host a website with the domain вЂњgrupoberge.netвЂќ, but merely uses the domain for several personal email addressesвЂќ, is contrary to the evidence showing that it is in use as a website and therefore is not used вЂњmerelyвЂќ for email. Automatic forwarding to anotherвЂ™s website, in the PanelвЂ™s finding, is none the less a use.
It may reasonably be concluded on the balance of probabilities that the Respondent does not hold the disputed domain name for any legitimate or intended purpose other than possible sale for profit, or other commercial use such as to gain revenue from advertising. Significantly, the address of the RespondentвЂ™s administrative contact is вЂњsevendedominio@grupoberge.netвЂќ, which is Spanish for вЂњdomain for sale (at...)вЂќ and is taken by the Panel to be a clear invitation to treat. The Respondent himself provides correspondence surrounding an unsolicited approach by a potential purchaser. The word вЂњcompetitorвЂќ is widely interpreted in the context of UDRP disputes (Mission KwaSizabantu v. Benjamin Rost,
WIPO Case No. D2000-0279; вЂњthe natural meaning of the word вЂњcompetitorвЂќ is one who acts in opposition to another and the context does not imply or demand any restricted meaning such as a commercial or business competitorвЂќ). Having regard to all of the above circumstances, the Panel finds on the balance of probabilities that the Respondent has a primary intention to sell the disputed domain name profitably to the Complainant or a competitor of the Complainant within the meaning of paragraph 4(b)(i) of the Policy, and finds bad faith registration and use proven accordingly
The RespondentвЂ™s website is founded upon the ComplainantвЂ™s trademark. In so far as the RespondentвЂ™s website attracts visitors, it may reasonably be concluded that it does so through the fame and goodwill of the ComplainantвЂ™s trademark. Confusion between the disputed domain name and the ComplainantвЂ™s trademark in the attraction of visitors is found by the Panel in this case to be an indispensable ingredient of any plausible intended use. The business area of the disputed domain name and website, and of the ComplainantвЂ™s business, is the commercial sale of cars. Typically it would be concluded that the website attracted visitors in order to link them to advertisers who would pay a fee to the Respondent for the referrals. In this case, the Complainant itself doubts that Ford has anything to do with the scheme, and the Panel concurs. The RespondentвЂ™s referrals to Ford EspaГ±a nevertheless cannot be pointless. The inescapable conclusion is that the Respondent wishes to demonstrate a working mechanism and has chosen, in Ford, a respectable target. Having regard to all the circumstances the RespondentвЂ™s activities are found to constitute bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The referral of at least some potential clients away from the Complainant and towards a competitor is bound to be disruptive to the Complainant and the Panel finds this to have been a primary purpose of the Respondent in the terms of paragraph 4(b)(iii) of the Policy.
Bad faith is found to have been exacerbated by the RespondentвЂ™s failure to reply to the warning letter sent to him by the Complainant June 26, 2008 and July 1, 2008 (Ebay Inc. v. Ebay4sex.com and Tony Caranci,
WIPO Case No. D2000-1632).
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 <grupoberge.net> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: November 20, 2008