Complainant is Promoconcert, S.L. of Valldoreix, Barcelona, Spain, represented by Curell Suñol S.L.P., Spain.
Respondent is Katarzyna Wolosz of Barcelona, Spain.
The disputed domain name <promo-concert.com> is registered with 1&1 Internet AG (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2014. On July 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 4, 2014.
The Center appointed Luis Larramendi as the sole panelist in this matter on August 6, 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.
Complainant is the owner of Spanish trademark registration no. 2562174 PROMOCONCERT in class 41, dating from October 15, 2003, and Community trademark no. 5913181 PROMOCONCERT, dating from May 17, 2007 in classes 9 and 16.
The disputed domain name is <promo-concert.com>, registered on April 9, 2014.
Respondent had a business relationship, i.e., employment, with Complainant previous to the registration of the disputed domain name, which was registered 13 days after the said relationship was terminated.
Since the disputed domain name was registered, Respondent has added a series of links to the corresponding website, some of which are directly related to Complainant’s business activity.
As the Panel has been able to ascertain on its own, at the present time the website only features an advertisement reading “Promoconcert Europe”, “Coming soon” next to the image of a singer.
Complainant is a company established in Barcelona in 1997 doing business as promoters organizing concerts and other shows for entertainment, organizing up to 450 classical music concerts a year in the leading concert venues in Spain.
Complainant is the owner of Spanish trademark registration no. 2562174 PROMOCONCERT in class 41, dating from October 15, 2003, and Community trademark no. 5913181 PROMOCONCERT in classes 9 and 16, dating from May 17, 2007, both duly registered prior to the disputed domain name.
Complainant also owns the <promoconcert.es> domain name, registered on May 7, 2001.
The PROMOCONCERT mark has undergone extensive use and promotion and has acquired well-known character and widespread recognition in Spain.
Respondent was employed by Complainant from February 28 to July 31, 2013 and from September 3, 2013 to March 26, 2014, hence it undoubtedly knew that Complainant owned the PROMOCONCERT trademark.
The disputed domain name is virtually identical to the PROMOCONCERT mark, merely containing a hyphen separating the fifth and six letters of PROMOCONCERT, which cannot be regarded as a differentiating element.
Respondent has no rights or legitimate interests in the disputed domain name, given that she does not have consent to use the PROMOCONCERT mark, does not own any trademark application or registration for PROMOCONCERT, and does not go by that name, which additionally is not her given name or surname.
Respondent has registered and used the disputed domain name in bad faith, in that she was employed by Complainant and was aware of the existence of the PROMOCONCERT mark and of Complainant’s use of the <promoconcert.es> domain name.
Respondent also evidences bad faith in putting the disputed domain name up for sale with the credible intent of extracting monetary compensation from Complainant, who as owner of the PROMOCONCERT mark and being named Promoconcert S.L. would be a potentially interested buyer.
Respondent's bad faith is likewise demonstrated by her attempt to attract users and thus create confusion with Complainant’s mark, including links to other websites related to concerts and music, seeking to take advantage of Complainant and Complainant’s trademark for commercial gain.
The Complainant requests the transfer of the contested domain name.
The Respondent did not reply to the Complainant’s contentions.
The PROMOCONCERT trademark is undeniably virtually identical to the <promo-concert.com> domain name. The presence of a hyphen separating “promo” and “concert” in the disputed domain name in no way suffices to prevent it from being confusingly similar to Complainant’s trademark.
The Panel therefore regards compliance with the first requirement set out in paragraph 4(a) of the Policy to have been proven.
Respondent has not replied to the Complaint, hence there is no way to get her version regarding the possible existence of rights or legitimate interests in the disputed domain name.
Nevertheless, after examining the case file and considering all the facts and circumstances on record in the file, the Panel has determined that:
- It is not reasonable to believe that Respondent might hold any sort of right in the domain name as Complainant has not authorized or licensed Respondent to use its trademark; conversely, it is logical to conclude that Respondent registered the disputed domain name out of her prior knowledge of Complainant’s PROMOCONCERT mark as a result of her having been employed by Complainant for two periods of roughly five and seven months in 2013 and 2014. In point of fact, the disputed domain name was registered just 13 days after her employment was terminated.
- Furthermore, given the circumstances of this case, Respondent’s failure to reply to the Complaint may be regarded as acquiescence in the unanswered Complaint and as attesting to the non-existence of any rights or legitimate interests on her part. This same finding has been made in countless decisions, for instance, Montes de Piedad y Cajas de Ahorro De Ronda, Cádiz, Málaga, Almería Y Antequera (Unicaja) v. Fernando Labadia Pardo, WIPO Case No. D2000-1402 and Banco Bilbao Vizcaya Argentaria, S.A. vs Juan Galan / Luarca Asesores S.L., WIPO Case No. D2008-0890.
Consequently, the Panel finds that Respondent has also fulfilled the second requirement laid down in paragraph 4(a) of the Policy.
This Panelist concludes that the evidence submitted by Complainant clearly suffices to show that Respondent has acted in bad faith.
First, Complainant has proven that there was a prior employer-employee relationship between the parties and that in consequence Respondent was fully aware of Complainant’s rights in the PROMOCONCERT mark.
Second, it has also been proven that at some point the website identified by the disputed domain name contained a variety of links that were potentially capable of yielding commercial gain, including some links to content directly related to Complainant’s activities. This can only be viewed as a deliberate attempt to take advantage of the well-known nature of Complainant’s trademark in the sector for the purpose of profiting economically.
In the Panel’s judgement, such conduct comes under one of the conditions laid down in paragraph 4(b) of the Policy, transcribed below:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
It is thus unquestionable that Respondent was fully cognizant that she was registering and using a domain name identical to Complainant’s trademarks and domain name <promoconcert.es>. From this, together with her failure to respond to the Complaint, it is inferable that Respondent has nothing she can put forward to justify her registration, as a domain name, of a name that is openly identified with Complainant.
As HSBC Finance Corporation vs Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062, held:
“Paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy. Registering a domain name that is identical to the distinctive trademark of another and using the domain name to generate revenue by directing internet users to the websites of the trademark owner’s competitors, without exploring in a meaningful way the possibility of third-party rights, is inconsistent with this good faith requirement. The Panel holds that the Respondent cannot consistent with the Policy shield its conduct by closing it eyes to whether the domain name it is registering is identical or confusingly similar to the trademark of another. See Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. The Panel finds this to be evidence of bad faith registration and use to be considered together with any other indicia of bad faith that may be found to exist in the record”.
Accordingly, this Panel finds that the existence of bad faith on the part of Respondent in registering and using the disputed domain name has duly been proven as well.
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 <promo-concert.com> be transferred to the Complainant.
Luis Larramendi
Sole Panelist
Date: August 25, 2014