SOCIEDAD COOPERATIVA MADRILEÑA DE ENSEÑANZA ARTURO SORIA (CEAS) v. Francisco Hoyos / Stock Manager WorldWide IB S.L.
Claim Number: FA1506001624094
Complainant is SOCIEDAD COOPERATIVA MADRILEÑA DE ENSEÑANZA ARTURO SORIA (CEAS) (“Complainant”), represented by Angel DE LA VEGA, Spain. Respondent is Francisco Hoyos / Stock Manager WorldWide IB S.L. (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <colegioarturosoria.info>, registered with eNom, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 12, 2015; the Forum received payment on June 12, 2015.
On June 15, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <colegioarturosoria.info> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@colegioarturosoria.info. Also on June 17, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 29, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the COLEGIO ARTURO SORIA mark. Respondent’s domain name is confusingly similar to Complainant’s COLEGIO ARTURO SORIA mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <colegioarturosoria.info> domain name, and that Respondent registered and uses the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant’s rights in the COLEGIO ARTURO SORIA mark have been established through registration with the Spanish trademark authority OPEM (Commercial Trade-name number: 0.250.26, registered November 20, 2012). See Choice Hotels Int’l, Inc. v. Domain Admin., FA 791619 (Nat. Arb. Forum Oct. 18, 2006) (finding that the complainant had established rights in the CLARION HOTEL mark through registration of the mark with the Spanish trademark authority). The Panel finds Complainant’s registration of the mark with OPEM is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant also contends that Respondent’s <colegioarturosoria.info> domain name is identical to Complainant’s COLEGIO ARTURO SORIA mark. The only difference between Respondent’s domain name and Complainant’s mark is the removal of spaces from Complainant’s mark and the addition of the gTLD “.info.” Complainant argues that these minor differences do not sufficiently distinguish the mark from domain name. The Panel agrees. See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark). Panels have also found that the addition of a gTLD such as “.info” is not relevant when analyzing whether a disputed domain name is identical to a respondent’s disputed domain name. See PepsiCo, Inc. v. Shah, FA 103934 (Nat. Arb. Forum Mar. 4, 2002) (finding the <pepsico.info> domain name identical to the complainant’s PEPSICO mark). The Panel therefore holds that Respondent’s <colegioarturosoria.info> domain name is identical to Complainant’s COLEGIO ARTURO SORIA mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant claims that Respondent is not commonly known by the disputed <colegioarturosoria.info> domain name. The WHOIS information lists Respondent as “Francisco Hoyos” of the organization “Stock Manager Worldwide IB S.L.” Furthermore, there is nothing in the record indicating that Respondent is commonly known by the disputed domain name. Thus, the Panel holds that Respondent is not commonly known by the <colegioarturosoria.info> domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant urges that Respondent is using the disputed domain name to divert internet users to the Respondent’s website which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The fact that the resolving website displays the disclaimer “Pagina NO Oficial del Colegio” which translates into English as “unofficial page of the college” does not make Respondent’s domain name any less objectionable. AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”); Las Vegas Sands, Inc. v. Red Group, D2001-1057 (WIPO Dec. 6, 2001) (justifying the conclusion that the respondent wishes to trade on the fame of the complainant’s trademark, regardless of the presence of a small-print disclaimer that is unavailable to Internet users until they have already entered the gambling site, because the disclaimer fails to remedy initial confusion).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s use of Complainant’s logo, trademark, and images on the resolving website demonstrates that Respondent is attempting to pass itself off as complainant. Respondent’s website includes pages that mirror Complainant’s actual website. Where a respondent attempts to pass itself off as the complainant bad faith registration and use under Policy ¶4(a)(iii) exists. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website). The Panel accordingly finds that Respondent’s use of the disputed domain name demonstrates passing off and constitutes bad faith under Policy ¶ 4(a)(iii).
Furthermore, the use of a confusingly similar domain name to host a website for the purpose of criticizing the holder of a protected mark can evidence a respondent’s bad faith. See Diners Club Int’l, Ltd. v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20, 2003) (“Respondent’s registration and use of a domain name nearly identical to Complainant’s mark to criticize Complainant’s business practices is evidence of registration and use of the <diners-club.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel finds that Respondent’s use of the disputed domain name to criticize Complainant demonstrates bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <colegioarturosoria.info> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 24, 2015
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