WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

José Luis Perdomo Ruiz v. Factoria de Internet SL

Case No. D2012-1236

1. The Parties

The Complainant is José Luis Perdomo Ruiz of Madrid, Spain, represented by Abanlex Abogados Law Firm, Spain.

The Respondent is Factoria de Internet SL of Madrid, Spain.

2. The Domain Name and Registrar

The disputed domain name <vitacoras.com> is registered with Wild West Domains, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2012. On June 18, 2012, the Center transmitted by email to Wild West Domains, LLC a request for registrar verification in connection with the disputed domain name. On June 19, 2012, Wild West Domains, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 21, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed the first amended Complaint on June 25, 2012. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a second amendment to the Complaint on July 6, 2012.

The Center verified that the Complaint, together with the amendments to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 July 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2012.

The Center appointed Alberto De Elzaburu as the sole panelist in this matter on August 6, 2012. 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 is the owner of trademark application No. 3037753 for BITACORAS.COM, filed on July 5, 2012, which is still pending with the Spanish patent and trademark office. However, as verified on September 25, 2012, the application has been published and no opposition to this application has been published. The period for opposition of the trademark application expired on September 20, 2012. It is the Panel’s view that it is likely that the trademark will be granted.

The Panel has ascertained that the Complainant has used the term “Bitacoras.com” since at least 2004, with a continuous dissemination on the web and numerous references to both this term and to the “Premios Bitácoras” (“Bitácoras Awards”) to which the Complainant refers in its Complaint.

There existed a business relationship between the Complainant and the Respondent prior to the registration of the disputed domain name, as can be gleaned from the content of the website identified with the disputed domain name.

When accessing said website, the only content is a message with opinions and remarks on specific examples of the Complainant’s behaviour throughout its business relations with the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant bases its Complaint on the following contentions:

- The Complainant is the owner of the domain name <bitacoras.com> registered on February 10, 2002 to identify a blog hosting platform.

- Since 2004 the Complainant has organised events and competitions featuring the most popular Spanish language blogs via the <bitacoras.com> portal, which is one of the largest blogger social networks in the Spanish language with more than 250,000 users.

- The events described above are known as “Premios Bitácoras” or “Bitácoras Awards”, and they award prizes to the best bloggers in the Spanish language. They have been sponsored by numerous globally famous companies, have received significant media coverage on Spanish radio stations and in Spanish newspapers, and personalities from both the radio and the press have participated in the events.

- In view of the conflict with the Respondent and the absence of its good faith use of the disputed domain name, the Complainant has understood the importance of obtaining protection for its intellectual property assets, and has proceeded to file a Spanish trademark application for BITACORAS.COM.

- The Complainant’s mark and the disputed domain name only differ in the initial letter: a “b” in one case and a “v” in the other, which are phonetically very similar in Spanish.

- There is no evidence whatsoever that the Respondent has used the disputed domain name in connection with a bona fide offering of goods or services, or has carried out any activity via the disputed domain name.

- The disputed domain name was registered with the intention of disturbing the activity of the Complainant and expressing derogatory remarks against its website, damaging its reputation and manipulating the opinion of users, which is evidence of the Respondent’s bad faith.

B. Respondent

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

6. Discussion and Findings

Preliminary Matter

Before proceeding to analyse whether or not the three requirements of the Policy are present, the Panel considers it important to briefly analyse whether the Complainant is indeed the owner of a trademark right that enjoys protection under the Policy, since it must be taken into account in this Panel’s view the fact that the disputed domain name was registered by the Respondent on September 18, 2009, whereas the Complainant’s trademark application No. 3037753 was filed on July 5, 2012, that is, subsequent to the registration date of the disputed domain name. As independently verified by the Panel, the Complainant’s trademark application has been published without opposition. Further, the period for opposition having expired on September 20, 2012, it is the Panel’s view that it is likely that the trademark will be granted.

However, in this connection the Panel indicates as follows:

The Policy makes no specific reference to the date on which the holder of the trademark acquired rights. This absence of any timing or formal criteria regulating the registration of this trademark or trademarks exempts the Panel from the need to examine the fulfillment of any requirements in relation to the mark on which the Complaint is based, above all when there has indeed been prior use of the term “Bitacoras.com” as a trademark, as independently verified by the Panel pursuant to paragraph 10 of the Rules.

The decision issued in Lorenzo Silva Amador v. Galileo Asesores S.L., WIPO Case No. D2000-1697 can be considered to follow a similar line of argument.

A trademark application has been accepted under specific circumstances as an unregistered trademark right meriting protected under the Policy, as set out in previous UDRP decisions, such as Banco Atlántico, S.A. v. Infomax 2020, S.L., WIPO Case No. D2000-0795.

In the case at hand, although the mentioned trademark application post-dates the registration of the disputed domain name, the evidence provided by the Complainant shows that the use by the Complainant of the term “Bitacoras.com” did indeed take place at an earlier date, as also evidenced by the Respondent’s criticism of specific acts or behaviour of the Complainant on the website at the disputed domain name. This means that the disputed domain name was registered when the term “Bitacoras.com” already identified in trade the Complainant and its website, and could thus be considered a trademark used in trade, albeit on an unregistered basis.

Furthermore, the Panel considers the criteria applied in earlier UDRP decisions to have been correct in their extensive interpretation of the Policy referring to the concept of “trademarks”. Such a concept encompasses the so-called “de facto marks”, which not only includes trademark applications pending registration but also trademarks that are in use but not registered, names of natural persons that have been used in trade, etc.

This criterion, which in the Panel’s opinion likewise justifies the existence of an unregistered trademark right meriting protection under the Policy in the name of the Complainant, has also been cited in UDRP decisions such as Steven Rattner v. BuyThisDomainName (John Pepin), WIPO Case No. D2000-0402.

A. Identical or Confusingly Similar

In the Panel’s opinion, the lexical and phonetic practical identity between the disputed domain name <vitacoras.com> and the currently unregistered trademark BITACORAS.COM is indisputable. From a lexical standpoint, the practical identity exists because the terms only differ in the first letter, the first, and phonetically speaking the first letters, “b” and “v”, are pronounced with a sound that is very often extremely difficult to differentiate.

In accordance with many previous UDRP decisions, the “.com” extension, which identifies the generic Top Level Domain, is not taken into account in the comparison process.

The Complainant has thus established the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

In the Panel’s opinion, the fulfillment of this second requirement depends on the following circumstances:

Evidently, the Respondent’s failure to respond to the Complaint prevents the Panel from knowing the Respondent’s version of the events, above all its true intention for registering the disputed domain name or the possible existence of rights or legitimate interests it may have in the disputed domain name.

In the absence of any arguments whatsoever from the Respondent, the Panel is of the understanding that the registration of the disputed domain name undoubtedly arises from the relationship between the parties, and not from an independent work of creation. This relationship is more than evident if account is taken of the content of the website corresponding to the disputed domain name <vitacoras.com>, which contains a message signed by “former workers of Bitacoras.com defrauded by Jose Luis Perdomo”, said Mr. Perdomo being the Complainant in these proceedings, and which directly refers to its website “www.bitacoras.com”.

Although the Respondent submitted no Response to the Complaint, and although the Complainant made no observation in this regard in the Complaint, the Panel considers it appropriate to briefly assess the possibility that the registration and use of the disputed domain name could be deemed legitimate for purposes of the Policy in light of the Respondent’s right to freedom of expression on the Internet.

An examination by the Panel of the content on the website corresponding to the disputed domain name <vitacoras.com> clearly reveals that the Respondent is using the website to share opinions and remarks that damage or may damage the image of the Complainant. Evidently, a proceeding brought on the basis of the UDRP is not the appropriate forum in which to elucidate whether or not those opinions or remarks are well grounded, and the Panel will not offer any appraisal in that regard.

In this respect, in accordance with previous UDRP decisions, the right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant’s trademark, as it is the case here.

A good illustration of the manner in which this criterion has been interpreted is contained in the decision UICESA, Obras y Construcciones, S.A. v. Unión Independiente, WIPO Case No. D2001-1331, which appears to refer to a case that is very similar to the instant one:

“the Respondent indicates that on said website it has simply given an account of its misfortunes, disappointments and pleasures when acquiring its current property, built by the Complainant company, but the fact is that it has also included defamatory remarks against said company which, irrespective of whether or not they are true (an aspect that is in all respects irrelevant in the context of this proceeding), do not serve as justification for the existence of a right or legitimate interest in registering or using the contested domain name. The most logical and reasonable consequence of the presence on the web of this domain name is that users visiting the website corresponding to said domain name may wish to contact with the Complainant company, with the additional consequence that if their intention were to hire said company’s services, they would be influenced by the opinions set out therein, which they would have accessed via the company’s name”.

Other UDRP decisions that have also followed this line of argument are Unibanco – União de Bancos Brasileiros S.A. v. Vendo Domain Sale, WIPO Case No. D2000-0671; and Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299.

This view represents a departure from prior UDRP decisions as reviewed in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.4. Here, the Panel finds that the right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark. That is especially the case where as here, the respondent is using the trademark alone as the domain name. This conclusion, albeit found in only a minority of UDRP panel decisions on the issue, is arrived at as this Panel finds that here, that the fact that the disputed domain name and trademark are aurally identical at least in Spain, which is the country of origin of both the Complainant and Respondent.

Consequently, since the Respondent has failed to attest to any rights or legitimate interests in the disputed domain name, the Panel concludes that the second element required under paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

The Panel considers that the conduct of the Respondent in the instant case does not fall under any of the four circumstances set out in paragraph 4(b) of the Policy, in that:

- There is no declaration or evidence in the Complaint that the Respondent registered the disputed domain name for the purpose of renting it or selling it at any price.

- Nor can it be inferred in the arguments and documentation submitted by the Complainant that the disputed domain name was registered in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, since the Complainant has, in addition, been able to secure the registration of the domain name <bitacoras.com>.

- Similarly, the circumstance set out in paragraph 4(b)(iii) of the Policy is likewise unfulfilled since, on the basis of the record, the Respondent cannot be considered a competitor of the Complainant (even if the content on the website at the disputed domain name may indeed disrupt its business).

- Finally, the absence of any intent to make commercial gain that can be inferred from the content of the record, prevents the application of the last possible circumstance set out in paragraph 4(b) of the Policy.

However, said paragraph 4(b) of the Policy does authorise the Panel to conclude that bad faith in the registration and use of the disputed domain name was indeed present on the basis of circumstances other than those strictly provided under said paragraph.

In this regard, the Panel finds as follows:

As the record undoubtedly shows, the Respondent:

- Was aware that the term “Bitacoras.com” identified a natural or legal person other than the Respondent.

- Intended to register a domain name that was indisputably similar and close to the Complainant’s domain name <bitacoras.com> to refer to said natural or legal person.

- Registered such a domain name with the “.com” extension, recognised under numerous UDRP decisions as being the most popular extension to indicate the carrying out of business activities on the Internet via a corresponding website. As a result, any Internet user wishing to locate the Complainant online would almost certainly do so via the “.com” extension and, far from being able to find an offer of services, would only find a series of opinions and remarks concerning the Complainant via a domain name that was clearly confusable with the name that identified the Complainant. In addition, the likelihood of confusion among Internet users is all the greater if account is taken of the fact that the letters “v” and “b”, the only ones differentiating the disputed domain name from the trademark of the Complainant, are located next to each other on a standard keyboard. Furthermore, from a general point of view, the Respondent’s conduct falls under the firmly established premise set out in numerous UDRP decisions, the first being in J. García Carrión, S.A. v. Mª José Catalán Frías, WIPO Case No. D2000-0239 which holds that:

“Whosoever acts in bad faith in registering a domain name will proceed to use it in bad faith, because bad faith is linked to the awareness at the time of registration that such an act would harm a third-party’s rights without due cause.”

The Panel notes that the Respondent as a former employee of the Complainant may have been looking to take advantage of any potential complainant rights in the future.

In the light of the foregoing, the Panel believes that additional circumstances other than those set out in paragraph 4(b) of the Policy are present and finds that there has indeed been bad faith in the registration and use of the disputed domain name. The third and final element required under paragraph 4(a) of the Policy has therefore also been met.

7. Decision

For the foregoing reasons, the Panel finds that the Complainant has duly proven that the three requirements set out in paragraph 4(a) of the Policy have been fulfilled and, as a result, orders that the disputed domain name <vitacoras.com> be transferred to the Complainant.

Alberto De Elzaburu
Sole Panelist
Dated: October 1, 2012