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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cableuropa, S.A.U. v. Balticsea LLC

Case No. D2014-0371

1. The Parties

The Complainant is Cableuropa, S.A.U. of Madrid, Spain, represented by Abril Abogados, Spain.

The Respondent is Balticsea LLC of Kaliningrad, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <onocorreo.com> (“Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2014. On March 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 11, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 March 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2014. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on April 9, 2014.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on April 24, 2014. 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 a well-known market leader in the field of telecommunications in Spain and elsewhere in Europe. It operates under the ONO mark in Spain and throughout Europe. The Complainant is the owner of trade mark registrations for the ONO trade mark in the European Union and Spain, including in class 38 (telecommunications).

The Respondent registered the Disputed Domain Name on June 27, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant’s submissions can be summarized as follows:

(a) The Disputed Domain Name is identical to the Complainant’s ONO trade mark that was first registered by the Complainant in 1995. The word “correo” is the Spanish word for “mail”, and is therefore a generic word that adds nothing to distinguish the Disputed Domain Name from the Complainant’s ONO trade mark.

(b) The Complainant has been using the ONO trade mark for more than 20 years before the Disputed Domain Name was registered. The Respondent cannot show any rights or legitimate interests in the ONO mark, as its name does not correspond to it.

(c) The Respondent registered the Disputed Domain Name in bad faith to take unfair advantage of the Complainant’s well-known ONO trade mark. The Respondent must have been aware of the Complainant’s well-known trade mark since the word “correo” (i.e. “mail” in English) is being used as part of the Disputed Domain Name, and the Complainant is a leader in the telecommunications industry, especially in relation to cable access to the Internet. Even though the Respondent appears to be based in Russia, the use of the Spanish word “correo” shows that it has full knowledge of the origin of the Complainant’s business (i.e. Spain) and its main target is Spanish users.

(d) The Respondent used a proxy service provider to try and hide the identity of the true registrant. It was only after the Complainant sent a warning letter to the Registrar that the Registrar then disclosed the real identity of the registrant, i.e. the Respondent. This warning letter was forwarded from the Registrar onto the Respondent, however the Complainant never received a response.

(e) The Respondent is also passively holding the Disputed Domain Name, as it resolves to a parking page. The parking page states that the Disputed Domain Name is for sale.

(f) The Respondent is also allegedly engaged in a pattern of abusive registrations. In at least two previous UDRP cases, decisions have been rendered against the Respondent.

B. Respondent

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

Although the Respondent has not submitted a Response, this does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437, and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 has been registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the ONO mark, based on its CTM and Spanish trade mark registrations.

The Disputed Domain Name incorporates the Complainant’s ONO mark in its entirety, the only difference being the word “correo”. The word “correo” is a generic term which is a Spanish translation of the word “mail” or “post”. It is well established that where the distinctive and prominent element of a disputed domain name is the complainant’s mark, and the only difference is a generic term that adds no distinctive element, then such a generic term does not negate the confusing similarity between the disputed domain name and the mark (See Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim, WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service, WIPO Case No. D2010-0088).

The Panel finds that “ono” is the distinctive component of the Disputed Domain Name and the addition of the word “correo” does nothing to distinguish it from the Complainant’s trade mark. In fact, given that the Complainant is involved in the telecommunications industry, the word “correo” (Spanish for “mail” or “post”) may actually increase the likelihood of confusion amongst users and mislead them into thinking that the Disputed Domain Name is associated with the Complainant, especially since: (a) the Complainant is based in Spain; (b) the Complainant is a market leader in the telecommunications industry in Spain; and (c) historically, postal services and telecommunication services were always jointly provided by telecommunication companies.

Further, the Respondent has also been involved in at least two previous UDRP cases, where it was found that the Respondent had registered well-known marks belonging to other parties (see Comerica Incorporated v. Balticsea LLC / Contact Privacy Inc. Customer 0131519121, WIPO Case No. D2013-0932 and L’Oréal v. Balticsea, LLC, WIPO Case No. D2012-2460). These two previous UDRP cases along with the current case show that the Respondent engages in a pattern of registering domain names that introduce typos, abbreviations or generic words to well-known marks. For example, in the case of L’Oréal v. Balticsea, LLC, WIPO Case No. D2012-2460, the Respondent had registered the domain name <redken5thave.com>, which was found to be confusingly similar to the REDKEN and REDKEN 5th AVENUE trade marks held by the complainant in that case. In Comerica Incorporated v. Balticsea LLC / Contact Privacy Inc. Customer 0131519121, WIPO Case No. D2013-0932, the Respondent had registered the domain name <comerika.com>, which was also found to be confusingly similar to the relevant complainant’s COMERICA trade mark.

It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain (“gTLD”) extension, in this case “.com”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd., WIPO Case No. D2006-0762).

The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the Complainant’s registered mark, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Panel finds that there is no evidence that the Respondent has become commonly known by the Disputed Domain Name or has any trade mark rights that correspond to the Disputed Domain Name. The Panel also accepts that there is no evidence that the Respondent has been authorised to use the ONO trade mark. The Panel is therefore of the view that a prima facie case has been established and it is for the Respondent to prove it has rights or legitimate interests to the Disputed Domain Name. However, as the Respondent has not filed any Response to the Complaint, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.

The website that the Disputed Domain Name resolves to is a parking page that provides sponsored links and includes a message stating that the Disputed Domain Name is for sale. This is in line with the two previous UDRP cases, to which the Respondent was a party (see Comerica Incorporated v. Balticsea LLC / Contact Privacy Inc. Customer 0131519121, WIPO Case No. D2013-0932 and L’Oréal v. Balticsea, LLC, WIPO Case No. D2012-2460). In those previous cases, the Respondent registered domain names that incorporated well-known marks, and then simply used them to resolve to parking pages, which included sponsored links, in order to generate pay-per-click revenue.

In light of the above, the Panel finds that the Respondent has not been using the Disputed Domain Name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair use, without intent for commercial gain. As such, the Respondent cannot claim any rights or legitimate interests in the Disputed Domain Name.

The Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Disputed Domain Name resolves to a parking page that includes sponsored links. It is reasonable to infer that the Respondent earns pay-per-click revenue in relation to the Disputed Domain Name. The ONO trade mark has been used by the Complainant for over twenty years, and is well-known in Spain and in the telecommunication industry. It therefore cannot be mere coincidence that the Respondent registered the Disputed Domain Name which incorporates the Complainant’s ONO mark in addition to the Spanish word “correo” (meaning “mail” or “post”), particularly since the Complainant is based in Spain and its main customers are also located in Spain. The parking page also states that the Disputed Domain Name is for sale. The Panel therefore finds that the Respondent registered and is using the Disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its parking page by creating a likelihood of confusion with the Complainant’s ONO mark, and/or also registered it with the intent of selling the Disputed Domain Name for profit.

Further, as mentioned above, there are at least two previous UDRP case that the Respondent has also been a party to, in which it was found that the Respondent had registered well-known marks belonging to other parties and registered and used the domain names in bad faith (see Comerica Incorporated v. Balticsea LLC / Contact Privacy Inc. Customer 0131519121, WIPO Case No. D2013-0932 and L’Oréal v. Balticsea, LLC, WIPO Case No. D2012-2460). The Panel concludes that these previous cases together with the present case indicate that the Respondent is involved in the business of registering domain names that are confusingly similar to well-known marks in order to resolve to parking pages that generate pay-per-click revenue, and further corroborates the existence of bad faith on the part of the Respondent.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <onocorreo.com> be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Date: May 8, 2014

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