The Complainant is SED DE MES, S.L. of Sort, Lleida, Spain, represented by Sugrañes, S.L., Spain.
The Respondent is LATIN AMERICAN TRADE INFORMATION of San José, Costa Rica.
The disputed domain name <labruixador.com> is registered with DNC Holdings, Inc. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 23, 2014. On April 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 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 May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on June 5, 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.
The Complainant is a well-known and leading Spanish company in the sale and distribution of lottery business, both from its establishment and through the Internet, since it was founded on 1986 in Sort (Lleida, Spain).
The Complainant holds several Spanish trademark registrations for LA BRUIXA D'OR since 1996, including a CTM registration No. 4503876 filed on July 19, 2005 and granted on August 16, 2006 covering goods and services related to its business.
The disputed domain name <labruixador.com> was registered on October 30, 2001.
When attempting to access the website at the disputed domain name <labruixador.com>, the Panel was redirected to Complainant's site <labruixador.es>.
The Complainant claims that it is a leading and well-known Spanish company specialized in sale of lottery in Spain and worldwide under the well-known trademark LA BRUIXA D'OR.
The establishment "La Bruixa d'Or" was founded on 1986 in Sort (Lleida, Spain) and, since then, it has been selling and distributing lottery through its establishment and the Internet. On several occasions it sold the lottery numbers awarded with the higher Christmas lottery prizes and as a result of that has become well-known not only in Spain but also abroad. The amount of sales has been increasing ever since.
The Complainant is the sponsor of the Spanish "La Bruixa d'Or" basketball team which plays in the Spanish League ACB.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name which is almost identical and confusingly similar to Complainant's well-known trademark LA BRUIXA D'OR. The Respondent clearly registered the disputed domain name in bad faith to take advantage and benefit from the Complainant and to prevent the legitimate title holder to register the disputed domain name. The Complainant states that the Respondent has engaged in a pattern of conduct that consist of preventing trademark holders from reflecting their trademarks in corresponding domain names.
Consequently, the Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant's contentions.
For the Complainant to succeed in this proceeding, under paragraph 4(a) of the Policy, it must prove that:
(i) the disputed 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 disputed domain name and
(iii) the disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15 (a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, Rules, Supplemental Rules and any principles of law that it deems applicable.
The Panel considers that the disputed domain name <labruixador.com> is almost identical and confusingly similar to the LA BRUIXA D'OR trademark in which Complainant has shown to have rights.
The distinguishing feature in the disputed domain name is the word "labruixador" which incorporates all the letters of the trademark LA BRUIXA D'OR and in the same order, which means that when pronounced verbally they both sound exactly the same or, in other words, identical.
The graphic difference resulting from the separation of words in the Complainant's trademark and the apostrophe are not sufficient to avoid its verbal and conceptual confusion with the disputed domain name. The Catalan words "La Bruixa d'Or" may be translated into "The Gold Witch" and "La Bruja de Oro" in the English and Spanish languages, respectively. The graphic design of a witch flying on its classic broom, which the Complainant's trademark incorporates, rather than contributing to create a meaningful difference between the disputed domain name and Complainant's trademark only contributes to increase their conceptual confusion.
It has become a consensus view among UDRP panels (see WIPO Overview of Panel Views on Selected UDRP-Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2) that the identity or confusing similarity test under the first element of the UDRP would typically involve a straight forward visual or oral comparison of the trademark with the alphanumeric string in the disputed domain name and that the applicable top-level suffix may be disregarded (as it is a technical requirement of registration). Therefore, the Panel in this case will disregard the generic Top-Level Domain suffix ".com" for the purpose of comparison between the disputed domain name and Complainant's trademark for this first limb of the Policy test.
Hence, the Panel finds that the Complainant has succeeded on this first element of the Policy.
According to paragraph 4(a)(ii) of the Policy, the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in paragraph 4(c) sets out various ways in which respondent may demonstrate rights or legitimate interests in a domain name.
Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interest in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent's lack of rights or legitimate interests in a domain name, the burden of production therefore shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.
The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and so the burden of production has effectively shifted to the Respondent, who did not reply to the Complainant's contentions and, therefore, has not made such showing.
Moreover, there is no evidence in the case to show that before any notice of the dispute the Respondent: (i) used or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; (ii) has been commonly known by the disputed domain name; or (iii) is making a legitimate noncommercial use of the disputed domain name.
For these reasons, and in absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith: "(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct."
The WIPO Overview 2.0, paragraph 3.3, indicates that the consensus view of UDRP panels is that a pattern of conduct can involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to trademarks. Although panels will look at the specific circumstances, a pattern normally requires more than one relevant example.
In this administrative proceeding, the Complainant has cited two relevant UDRP cases brought against the Respondent regarding well-known trademarks in Spain: Earnst & Young Global Limited vs. Latin American Trade, WIPO Case No. D2009-0138 and Caja de Ahorros y Monte de Piedad de Madrid vs. Information Latin American Trade, WIPO Case No.D2009-0410.
In both cases the respondent failed to file responses to the complaints, and in every case the panels decided that the disputed domain names were identical or confusingly similar to the complainants' trademarks, that the respondent did not have rights or legitimate interests in the disputed domain names, which had been registered and were used in bad faith and, consequently, ordered their transfer to the complainants.
Clearly, in this Panel's view, there is a pattern of conduct of the Respondent to prevent trademark holders from reflecting their marks in a corresponding domain name, which evidences that the disputed domain name was registered and is used in bad faith.
In light of the above and evidence produced in the case, the Panel also accepts the Complainant's contentions that the Respondent registered the disputed domain name with a view to disrupting Complainant's business and eventually to attract for commercial gain Internet users to Respondent's web site by creating a likelihood of confusion with Complainant's well-known trademark as to source, sponsorship, or endorsement.
The Panel is therefore satisfied that the Respondent registered and is using the disputed domain name in bad faith
Therefore, the Panel concludes that the Complainant has also made out the third element under paragraph 4(a) of the Policy.
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 <labruixador.com> be transferred to the Complainant.
Miguel B. O'Farrell
Sole Panelist
Date: June 12, 2014