Anuntis Segundamano Espaсa S.L. v. Jp Bronston

Case No. D2006-1652

1. The Parties

The Complainant is Anuntis Segundamano Espaсa S.L., of Spain, represented by JD Nuсez, Patentes y Marcas S.L., of Spain.

The Respondent is Jp Bronston, Wellington, of New Zealand.

2. The Domain Name and Registrar

The disputed domain name <fotocasa.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2006. On December 29, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On December 29, 2006, Go Daddy Software transmitted by email to the Center its verification response providing the registrant’s identity the contact details for the administrative 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 on January 18, 2007. The Center verified that the Complaint together with the amendment to the Complaint (for convenience, collectively referred to as “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 January 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2007. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on February 21, 2007.

The Center appointed James A. Barker as the sole panelist in this matter on March 6, 2007. 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

In the absence of a Response, the following facts are uncontested.

The Complainant holds trademark registrations for the word mark FOTOCASA. The Complainant operates a website at “fotocasa.es”, which advertises the sale of real estate in Spain. The terms of the disputed domain name appears to translate, in English, as “house photo”. The Complainant does not otherwise provide an explanation of its activities.

At the date of this decision, the disputed domain name did not revert to an active website. There is no evidence before the Panel that it ever did.

The disputed domain name was first registered on April 15, 1999.

The Complainant provides evidence that, as at October 24, 2006, the Whois record for the disputed domain name listed Domains By Proxy, Inc. (“DBP”) as the registrant. DBP operate a service so that domain names can be registered in the name of DBP, on behalf of the actual registrant. The purpose of this service is to prevent public access to the personal details of the actual registrant. However, clause 4(a) of DBP’s “Domain Name Proxy Agreement” indicates that DBP may “(i) close Your account (which means You then become the Registrant of the domain name registration); …or (iv) take any other action DBP deems necessary:…To comply with ICANN’s Dispute Resolution Policy.”

Subsequent to the filing of the Complaint, the Registrar confirmed the personal details of the actual registrant in response to a request from the Center. Although no evidence was provided on this point, the Panel has assumed that that information was disclosed to the Registrar under clause 4(a) of DBP’s Domain Name Proxy Agreement.

5. Parties’ Contentions

A. Complainant

The Complainant essentially makes the following contentions.

The disputed domain name is identical to the Complainant’s registered trademark.

The Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name does not resolve to an active website or even of a website under construction. The Complainant has not licensed or otherwise permitted the Respondent to use its mark in a domain name or otherwise.

The Respondent has registered and used the disputed domain name in bad faith, because it is not used in connection with an active website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, nor make any other communication in connection with this case.

6. Discussion and Findings

For the Complaint to succeed, under paragraph 4(a) of the Policy the Complainant must prove 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 in bad faith and is being used in bad faith.

The Complainant must provide each of these three elements, which are discussed in turn as follows.

A. Identical or Confusingly Similar

The Complainant has provided evidence of its registered rights in the mark FOTOCASA.

It is well-established that the “.com” extension is to be disregarded for the purpose of determining identicality or confusing similarity. Excluding that extension, it is obvious that the disputed domain name is identical to the Complainant’s mark.

Accordingly, the Complainant has established this first element of the Policy.

B. Rights or Legitimate Interests

The clear consensus of previous decisions under the Policy is that a Complainant establishes this element by making out a prima facie case against the Respondent, which the Complainant has done in this case. (See Overview of WIPO Panel Views on Selected UDRP Questions, item 2.1.) The burden then shifts to the Respondent to rebut that case.

Under paragraph 4(c) of the Policy, the Respondent may demonstrate that it has a right or legitimate interest by providing evidence that:

(i) before any notice to you [the Respondent] of the dispute, your 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;

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;

(iii) you are making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has filed no Response, and so has not demonstrated any of these circumstances. Neither are the any circumstances from all the facts of this case that might suggest that the Respondent has some other legitimate interest in the disputed domain name.

For these reasons, the Panel finds that the Complainant has established this second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, if found by the Panel to be present, are evidence of bad faith. All of those circumstances require, at least, an element of actual knowledge by a respondent of the complainant. Those circumstances also require various things additional to knowledge of a complainant. In particular, paragraph 4(b)(ii) of the Policy provides that there is evidence of bad faith where a respondent:

…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. (emphasis added)

In this case, prior Panel authority provides evidence of such a pattern of conduct. Although the Complaint makes no mention of it, the Respondent has previously been an unsuccessful respondent in a case involving a Spanish complainant, with a Spanish registered mark: Feria Muestrario Internacional de Valencia v. Mr. JP Bronston, WIPO Case No. D2002-1163. In that case, the Panel found that:

The Complainant also has shown…that the Respondent [JP Bronston] and its business associate in Spain, Mr. Monterde Molina, have registered the domain names corresponding to the marks of a number of other Spanish entities comparable to the Complainant (i.e., the International Fair of Valencia). This is a pattern of conduct. Therefore, the Panel finds the Respondent has violated the bad faith registration and use provisions of the Policy at 4(b)(ii)...

This case appears to be part of the same pattern of conduct. This case also involves the registration of a domain name corresponding to the mark of a Spanish entity by the same Respondent.

As noted above, a key criteria for a finding of bad faith, under paragraph 4(b)(ii) (as more generally for a finding of bad faith) is also that the Respondent had actual knowledge, or in appropriate cases constructive knowledge, of the Complainant.

The Respondent’s pattern of conduct, as found in the Feria Muestrario case, is also good circumstantial evidence that the Respondent had actual knowledge of the Complainant in this case, when it registered the disputed domain name.

There is also other circumstantial evidence of the Respondent’s knowledge: The Complainant’s mark was registered (in 1994) well before registration of the disputed domain name (in 1999). Generally, the Feria Muestrario case suggests that the Respondent has an awareness of Spanish entities and their marks. It is also notable that the complainant in the Feria Muestrario case provided evidence that the Respondent had registered the names of various towns in the Valencia area as domain names. That area is, relatively, not far from the Barcelona area where the Complainant has its office (as indicated at least by its trademark registration). The registration of town names also strikes the Panel as having a general relationship to the registration, in this case, of a mark associated with real estate in various Spanish towns.

For these reasons, the Panel finds that this third element of the Policy is established.

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, <fotocasa.com> be transferred to the Complainant.

James A. Barker
Sole Panelist

Dated: March 20, 2007