WIPO Domain Name Decision: DRO2006-0006

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Prelatura Del Opus Dei, Region de España v. Sebastian Koga

Case No. DRO2006-0006

1. The Parties

The Complainant is Prelatura Del Opus Dei, Region de España, Madrid, Spain, represented by Roman Mas y Calvet, Spain.

The Respondent is Sebastian Koga, Ticus, Romania.

2. The Domain Name and Registrar

The disputed domain name <opusdei.ro> is registered with RNC.ro.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2006. On December 5, 2006, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the domain name at issue. On December 5, 2007, RNC.ro 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. On December 7, 2006, the Center notified the Complainant by email that while the Complaint was filed in English, according to information received from the registrar, the language of the registration agreement for the disputed domain name is Romanian. Accordingly, the Center requested that the Complainant submit evidence of an agreement between the Complainant and the Respondent that the proceedings should be in English or, in the absence of such agreement, a request to that effect. On December 11, 2006, the Complainant submitted a request for English to be the language of the administrative proceedings. 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 January 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2007.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on February 1, 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.

The Panel finds that the language of the present proceeding should be English.

The Panel concludes that, according to Rules, paragraph 11(b), the language of the proceedings shall be English for the following reasons:

- the Complainant requested the English language be used in these proceedings;

- there are no provisions on the Registrar’s website for a domain name applicant to choose between English or Romanian as the controlling language of the registration agreement at this moment, and in the past as this Panel found in other previous cases: Inter IKEA Systems B.V. v. SC Agis International Sport S.R.L., WIPO Case No. DRO2006-0001, DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA, WIPO Case No. DRO2006-0003;

- the registration agreement was available in both English and Romanian, and in the absence of any statement to the contrary from the Respondent the Panel draws the inference that the domain applicant accepts the use of both languages;

- despite the fact of being properly notified, the Respondent did not provide any Response mentioning any objection to English as the language of these proceedings.

4. Factual Background

The Complainant is a Catholic institution found in Spain in 1928 and currently established in 61 countries. Opus Dei has been a personal prelature of the Catholic Church. Its stated mission is to help people turn their work and daily activities into occasions for growing closer to God, for serving others, and for improving society. This includes complementing the work of local churches by offering classes, talks, retreats and pastoral care that help people develop their personal spiritual life and apostolate.

The Complainant owns the registrations for the trademark OPUS DEI in many countries around the world and by reason of the extensive use in connection with OPUS DEI activities, it enjoys the substantial goodwill and reputation in the use of the said mark in particular, in services offered and delivered over the Internet.

In order to further protect its various OPUS DEI marks, and to facilitate any users’ ability to locate the sites on the worldwide web, the Complainant registered numerous domain names, including <opusdei.com>.

The Respondent registered the disputed domain name in February 2005, and since then it has not resolved to any website.

5. Parties’ Contentions

A. Complainant

The Complainant alleges in relevant part that:

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, as it incorporates in its entirety the OPUS DEI mark of the Complainant;

- the Respondent has no rights or legitimate interests in respect of the disputed domain name, as he is not affiliated with the Complainant in any way and has not been authorized by the Complainant to use its trademark and service marks, or to seek the registration of any domain name incorporating the Complainant’s trademarks;

- the Respondent has no prior rights or legitimate interests in the disputed domain name and it is not known under the name OPUS DEI or any similar term.

- the Respondent is not using or preparing to use the disputed domain name in connection with a bona fide offering of goods or services;

- the domain name was registered and is being used in bad faith in the sense that by adopting the contested domain name, the Respondent is seeking to benefit from the goodwill of the Complainant and pass itself off as a business, licensee or affiliate of the Complainant, whose fame he knew before registration.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a) of the Policy requires that the Complainant has to establish each of the following three elements:

(i) The 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 domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A.1. The Complainant’s trademark or service mark rights

It is undisputed that the Complainant has rights in the trademark OPUS DEI as it owns numerous international trademark registrations for that mark.

The Complainant also owns several domain names containing its mark OPUS DEI, on which it posts websites providing information relating to the organization OPUS DEI and its activities under the “Opus Dei” name.

A.2. The disputed domain name is identical to the Complainant’s trademark

The Respondent’s domain name <opusdei.ro> is identical to the Complainant’s OPUS DEI mark, as it incorporates this mark in its entirety. It is well established that the specific top level of the domain name such as “.com” or “.ro” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to a trademark (see Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr., WIPO Case No. D2000-1525, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001; and OSRAM GmbH v. web4COMM SRL Romania, WIPO Case No. DRO2005-0004).

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

B. Rights or Legitimate Interests

The Complainant established a prima facie showing that none of the three circumstances establishing legitimate interests or rights provided by the Policy apply. Having done so, the burden of proof on this element shifts to the Respondent to rebut the showing. Despite the fact that the Respondent was properly notified, the Respondent did not reply to the Complainant’s contentions, failing in this way to rebut the Complainant’s showing.

In addition, the disputed domain name does not resolve to any active webpage and this is a further indication to the Panel, that before any notice to the Respondent of the dispute, Respondent has not made any use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.

The Panel therefore concludes that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

It is the opinion of the Panel that the disputed domain name was in all likelihood registered and used in bad faith. The Complainant’s contentions and the factual situation of the case indicates that the Respondent acquired the disputed domain name in order to benefit from the fame of the Complainant and the drawing power of its OPUS DEI.

In addition the passive holding of the disputed domain name may qualify in the circumstances of the case as a further indication of bad faith use. The Panel notes in this respect that the Complainant and its OPUS DEI mark are widely known, that the disputed domain name is identical to that mark, that the Complainant has not authorized the Respondent to use its mark in a domain name or otherwise, and that the Respondent has failed to demonstrate any rights or legitimate interests in the domain name. In the circumstances, it is difficult to conceive of any good faith use that the Respondent could reasonably make of the disputed domain name. See: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.

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 <opusdei.ro> be transferred to the Complainant.

Beatrice Onica Jarka
Sole Panelist

Dated: February 9, 2007