Repsol, S.A. v. Manuel E. Arbol / REPOSTERIA SOL, LLC
Claim Number: FA1602001662402
Complainant is Repsol, S.A. (“Complainant”), represented by Ned W. Branthover of Abelman Frayne & Schwab, New York, USA. Respondent is Manuel E. Arbol / REPOSTERIA SOL, LLC (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <repsol.us>, registered with Soluciones Corporativas IP, SL.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 24, 2016; the Forum received payment on February 24, 2016.
On February 24, 2016, Soluciones Corporativas IP, SL confirmed by e-mail to the Forum that the <repsol.us> domain name is registered with Soluciones Corporativas IP, SL and that Respondent is the current registrant of the name. Soluciones Corporativas IP, SL has verified that Respondent is bound by the Soluciones Corporativas IP, SL registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On February 24, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2016 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@repsol.us. Also on February 24, 2016, 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 March 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 usTLD Dispute Resolution Policy ("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 usTLD Policy, usTLD 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
Complainant uses the REPSOL mark to identify with its wide range of commercial services, including natural gas and crude oil marketing and trading and upstream exploration. Complainant registered the REPSOL mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,401,604, registered November 7, 2000), which demonstrates its rights in the mark. The <repsol.us> domain name is confusingly similar to the REPSOL mark because the domain name incorporates the entire mark and merely appends the “.us” country-code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <repsol.us> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to register any variant of REPSOL in a domain name under Policy ¶4(c)(iii). Nothing in the available evidence indicates Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶4(c)(i). Further, Respondent is not making a bona fide offering of goods or services via the disputed domain name, nor a legitimate noncommercial or fair use under Policy ¶4(c)(ii) and (iv), respectively. Instead, the disputed domain name currently resolves to an inactively held page. The domain previously redirected to Complainant’s home site, and Respondent attempted to sell the domain to Complainant in excess of out-of-pocket costs. Before that, the disputed domain name pointed to one of Complainant’s competitors.
Respondent registered and uses the disputed domain name in bad faith. Respondent has attempted to sell the domain to Complainant in excess of its out-of-pocket costs, which indicates bad faith under Policy ¶4(b)(i). Further, the disputed domain formerly resolved to Complainant’s home site, and currently resolves to an inactively held page, additional evidence of bad faith under Policy ¶4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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(f), 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 uses the REPSOL mark to identify its wide range of commercial services, including natural gas and crude oil marketing, trading and upstream exploration. Complainant registered the REPSOL mark with the USPTO (e.g., Reg. No. 2,401,604, registered November 7, 2000). Such registrations with the USPTO (or any similar governmental authority) adequately demonstrate Complainant’s rights in the mark under Policy ¶4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶4(a)(i).”). Complainant has demonstrated its Policy ¶4(a)(i) rights in the REPSOL mark.
Complainant claims the <repsol.us> domain name is confusingly similar or identical to the REPSOL mark because the domain name incorporates Complainant’s entire mark and merely appends the “.us” ccTLD. It is well-settled a TLD (whether a gTLD or a ccTLD) must be ignored when determining the issue of confusing similarity under Policy ¶4(a)(i) because domain name syntax requires a TLD. The panel in Andrey Ternovskiy dba Chatroulette v. Abdelbasset Selmi, FA 1638963 (Nat. Arb. Forum October 28, 2015) agreed with this argument and concluded simply adding the ccTLD “.us” to a complainant’s mark “does nothing to distinguish an at-issue domain name from a [c]omplainant’s trademark for the purposes of the Policy.” The <repsol.us> domain name is not distinguishable from Complainant’s REPSOL mark and is confusingly similar under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has no rights or legitimate interests in the <repsol.us> domain name. Respondent is not commonly known by the disputed domain name. The available WHOIS information does not support a possible claim Respondent is commonly known by the disputed domain name, especially since Respondent appears to have created a shell limited liability company just to make that claim (a fact Complainant claims and Respondent does not dispute). Respondent has not submitted any evidence to support a possible claim it is commonly known by the disputed domain name. Therefore, there is no evidence to support a finding Respondent is commonly known by the <repsol.us> domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Respondent not been authorized by Complainant to register any variant of REPSOL in a domain name under Policy ¶4(c)(iii).
There is no available evidence which indicates Respondent has any rights in a mark identical to the disputed domain name which would serve to satisfy Policy ¶4(c)(i). See HOM INNOVATIONS POUR L’ELEGANCE MASCULINE and HUBER HOLDINGS ASIA Limited v. PHMC GPE, FA 1658722 (Forum March 14, 2016) (finding that Respondent was not the owner or beneficiary of a trade or service mark identical to the disputed domain name under Policy ¶4(c)(i), even when Complainant did not argue this point). Respondent has failed in its burden of proof under Policy ¶4(c)(i).
Complainant claims Respondent is not making (i) a bona fide offering of goods or services via the disputed domain name, nor (ii) a legitimate noncommercial or fair use under Policy ¶4(c)(ii) and (iv), respectively. The disputed domain name currently resolves to an inactively held page. Inactively held domain names generally cannot support a claim of rights or legitimate interests, absent more information. See, e.g., Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely [inact]ively held the domain name). No one has claimed this domain name acts as an email server or as a non-public ecommerce portal.
Complainant claims the domain previously redirected to Complainant’s home site, and Respondent attempted to sell the domain to Complainant in excess of its out-of-pocket costs. Such a use fails to demonstrate rights or legitimate interests. See Better Existence with HIV v. AAA, FA 1363660 (Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶4(a)(ii)”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶4(a)(ii)). Respondent is not making a use of the disputed domain name which satisfies Policy ¶¶4(c)(ii) or (iv).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and has used the disputed domain name in bad faith. Respondent has attempted to sell the domain to Complainant in excess of its out-of-pocket costs, which indicates bad faith under Policy ¶4(b)(i). In George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007), the Panel concluded the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name. Respondent’s transfer offer to sell the domain name for €20,000 (or an annual contractual agreement of €2,000) clearly demonstrates bad faith under Policy ¶4(b)(i) because it exceeds any reasonable amount Respondent could have paid for the domain name.
The use of the disputed domain name has changed over time. First, it pointed to one of Complainant’s competitors. Then it pointed to Complainant’s own web site. Now it does not have a web site at all. Respondent certainly seems to have acquired and used the domain name with the intention to disrupt Complainant’s business under Policy ¶4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶4(a)(iii).”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). In light of the available evidence, Respondent has demonstrated its bad faith registration and use pursuant to Policy ¶4(a)(iii).
Respondent’s predecessor created a shell company with a name similar to the disputed domain name. The domain name was transferred to that newly created shell company (which has no commercial operations). Such an action is intentionally dishonest and intended to mislead this Panel (at a minimum). It quintessentially demonstrates bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <repsol.us> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, March 28, 2016
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