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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Industria de Diseсo Textil, S.A. (INDITEX, S.A.) v. Domaincar

Case No. D2006-0389

 

1. The Parties

The Complainant is Industria de Diseсo Textil, S.A., La Coruсa, Spain, represented by Clarke, Modet & Co., Spain.

The Respondent is Domaincar, Panama.

 

2. The Domain Name and Registrar

The disputed domain name <inditexjob.com> is registered with DomainDoorman, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2006. On March 29, 2006, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain name at issue. On March 29, 2006, DomainDoorman, LLC 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.

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 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 April 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2006.

The Center appointed Mr. Daniel Peсa as the sole panelist in this matter on May 17, 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

The Complainant has been developing its trading activity since 1975.

The Complainant owns several registered trademarks including the expression INDITEX, used in connection with, among other things, clothing and clothing accessories.

The Complainants’ corporate name and stores are widely mentioned by the mass media, locally, nationally and internationally.

The sales trading volume worldwide for the INDITEX Group for the last five years exceeds 20000 millions of euros. The shops opened by the Complainant up to 2004, include 2244 shops in 56 countries with a workforce of 47,046 employees.

The Complainant also owns more than 65 domain names including the name INDITEX.

The Complainant is the titleholder of the widely known trademark ZARA.

The INDITEX name and mark is the acronym in the Spanish language for Industria de Diseсo Textil. Therefore, it is an invented denomination that does not have any translation in English or Spanish.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that its trademark INDITEX and the disputed domain name are identical, as the generic term “job” does not distinguish the domain name from the Complainant’s trade mark.

The Complainant registered the domain name <inditexjobs.com> on January 11, 2005, with the intention of developing an employment portal for all of the companies of the INDITEX Group.

The only difference between the domain name owned by the Complainant and the disputed domain name is the “s” as an indicative of the plural form. It seems clear to the Complainant that before registering the disputed domain name, the Respondent became aware of the Complainant’s domain name and registered the disputed domain name with the intention of profiting from the Complainant’s mark, as well as from the Complainant’s recent development.

The Complainant has registered the following trademarks in Spain:

Trademark	Application Date	Registration Number	Country
INDITEX	05/09/1985	1.116.561/8	Spain
INDITEX	05/09/1985	1.116.552/9	Spain
INDITEX	05/09/1985	1.116.536/7	Spain
INDITEX	05/09/1985	1.116.565/0	Spain
INDITEX	05/09/1985	1.116.545/6.	Spain
INDITEX	05/09/1985	1.116.537/5	Spain
INDITEX	05/09/1985	1.116.544/8	Spain
INDITEX	05/09/1985	1.116.571/5	Spain
INDITEX	05/09/1985	1.116.551/0	Spain
INDITEX	05/09/1985	1.116.553/7	Spain
INDITEX	05/09/1985	1.116.538/3	Spain
INDITEX	05/09/1985	1.116.548/0	Spain
GRUPO INDITEX	16/12/1992	1.735.840/x	Spain
GRUPO INDITEX	01/03/2000	2131.925	Spain
GRUPO INDITEX	12/12/1997	2.131.923/5	Spain
GRUPO INDITEX	12/12/1997	2.131.924/3	Spain
GRUPO INDITEX	01/12/1998	0.215.879	Spain
INDITEX-ZARA	01/12/1998	0.215.880	Spain

The Complainant owns more than 65 domain names including the expression INDITEX, with the top level domain .com as well as many country code domains.

INDITEX has become over the years a very famous and notorious trademark in Spain and in other countries since 1980.

In 1999, the Complainant opened its first shop in Canada where the registration of the disputed domain name was obtained by a non authorized party several years later, in 2005. By that date the Complainant had opened 14 shops of the Zara Group in Canada and its presence in the Canadian market was widely known.

In 2004, the first shop of Zara Group was opened in Panama, where the actual owner of the disputed domain name has his residence.

B. Respondent

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

 

6. Discussion and Findings

This Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a Response to the Complaint is not due to any omission by the Center.

According to paragraph 4(a) of the Policy the Complainant must prove each of the following:

(i) That the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and

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

(iii) That the domain name has been registered and is used in bad faith.

A. Identical or Confusingly Similar

The Complainant contends that the domain name currently used by the Respondent is confusingly similar to the Complainant’s well-known trademarks.

This Panel considers that the disputed domain name simply add the generic word job to the Complainant’s famous trademarks. In this case, the addition of the suffix job does not avoid a likelihood of confusion but actually increases it, because internet users could expect to find employment offers of the owner of the mark.

In conclusion, the Panel finds that the Complainant has provided sufficient statements to support a finding that the disputed domain name and the trademark of the Complainant are confusingly similar.

The Panel holds that the Complainant has established element (i) of the Policy’s Paragraph 4(a).

B. Rights or Legitimate Interests

This Panel notes that the Complainant has demonstrated prima facie that none of the examples regarding the rights or legitimate interests set forth in Paragraph 4(c) of the Policy are applicable here.

The Complainant has asserted that the Respondent is not and has never been affiliated to the Complainant. The Complainant has not authorized the Respondent to use and register its trademarks and service marks, or to seek the registration of any domain name. There is no evidence of the Respondent’s use of, or demonstrable preparation to use, the domain name with a bona fide offering of goods and services.

The Respondent has not answered by written or oral notice the cease-and-desist letter sent by the Complainant on November 17, 2005, informing the Respondent about the legitimate rights of the Complainant to the domain name and alerting the Respondent that the disputed domain name was considered a trademark infringement, nor has it submitted a Response in this proceeding.

Since the Respondent has presented no evidence regarding its legitimacy to own the disputed domain name, the Panel concludes that the Respondent lacks any right or legitimate interest in the domain name.

C. Registered and Used in Bad Faith

(i) The fact that the Respondent registered the disputed domain name, which is virtually identical to the Complainant’s trademark and corporate name, indicates that the Respondent had actual knowledge of the Complainant’s activities and trademark.

(ii) The Respondent seems to have registered, in addition to the disputed domain name a wide range of domain names that incorporate third party trademarks and/or corporate names. The Respondent’s bad faith pattern of registering trademarks of others is evidenced by the fact the Respondent has registered more than 150 domain names identical or similar to well known trademarks, and has been involved in more than 20 UDRP procedures. In these decisions panels have found bad faith on the part of the Respondent and transferred the domain name(s) at issue.

(iii) Based on the Respondent’s pattern of registering domain names containing third parties’ trademarks and/or corporate names the Panel concludes that the Respondent has registered the disputed domain name in order to prevent the Complainant from using its mark in a corresponding domain name.

(iv) Further, the disputed domain name creates a likelihood of confusion with the Complainant’s trademark, corporate name, and domain names as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. Internet visitors who enter the Internet address “www.inditexjob.com”, expect to arrive at the Complainant’s website. However, they are diverted to another online location.

Therefore, the Panel concludes that the Respondent has registered and is using the domain name in bad faith within the meaning of paragraph 4(b) of the Policy.

 

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 <inditexjob.com> be transferred to the Complainant.

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Daniel Peсa
Sole Panelist

Date: May 31, 2006