WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fundacion Excelentia and Javier Martí Corral v. Knock WHOIS Not There, LLC / Delicos Chamber

Case No. D2019-3094

1. The Parties

The Complainants are Fundacion Excelentia, Spain and Javier Martí Corral, Spain, represented by Herrero & Asociados, Spain.

The Respondent is Knock WHOIS Not There, LLC / Delicos Chamber, Spain.

2. The Domain Name and Registrar

The disputed domain name <fundacionexcelentia.blog> is registered with Automattic Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2019. On December 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2019, the Registrar 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 December 24, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 26, 2019.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2020. The Respondent sent an email communication on January 14, 2020.

On January 20, 2020, the Complainants submitted a Supplemental Filing to the Center.

The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on January 27, 2020. 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 Complainants are a Spanish private non-profit foundation, founded in 2009, which develops its objectives and activities in the field of culture related to the diffusion and divulgation of music, and its president. Among its main activities, the foundation organizes various concerts in the main Spanish auditoriums (including Auditorio Nacional de Música de Madrid, Teatro Real de Madrid, Liceo de Barcelona) as well as auditoriums in other countries (like the London Cadogan Hall), educational activities including educational concerts and music courses for children and charity concerts.

The Complainants hold registered trademark rights in various trademarks including the term “excelentia” in Spain, of which the following are sufficient representatives for the present proceeding:

- Spanish Trademark No. 2815570 EXCELENTIA THE WORLD LEADING MUSIC, semi figurative, registered on August 1, 2008, in class 41;

- Spanish Trademark No. 3618162 M MADRID CHAMBER MUSIC SOCIETY EXCELENTIA, semi figurative, registered on November 22, 2016, in class 41;

- Spanish Trademark No. 3622725 MSCN MADRID SUMMER CLASSICAL NIGHTS EXCELENTIA, semi figurative, registered on February 15, 2017, in class 41;

- Spanish Trademark No. 3699604 EXCELENTIA MAGAZINE, semi figurative, registered on July 24, 2018, in classes 9, 16, and 41;

- Spanish Trademark No. 2997940 SOCIEDAD CORAL EXCELENTIA, semi figurative, registered on February 6, 2012, in class 41;

- Spanish Trademark No. 3551307 EXCELENTIA POPS SYMPHONY ORCHESTRA, semi figurative, registered on July 20, 2015, in class 41.

The Complainants further have applied for the registration of the mark FUNDACION EXCELENTIA on November 19, 2019, in class 41, namely, Spanish Trademark Application No. 4044004 FUNDACION EXCELENTIA, word, which registration is pending.

The Complainants further own the domain name <fundacionexcelentia.org>, registered on September 2, 2009, which is linked to the foundation’s official website in connection with the promotion of its activities and events.

The disputed domain name was registered on June 1, 2019. According to evidence provided by the Complainant, the disputed domain name was linked to a website in Spanish language, under a title that may be translated as “The truth about the Excelentia Foundation. The whole truth about the Excelentia Foundation and its orchestras” (“La verdad sobre la Fundación Excelentia. Toda la verdad sobre la Fundación Excelentia y sus orquestas”), and which included various articles and photographs, in the form of a blog, criticizing the Complainants, the foundation’s activities, as well as the working conditions of the musicians in the foundation’s orchestras. At the date of this decision, the disputed domain name resolves to a landing page including a message in Spanish language informing that the owner of the site has marked it as private requiring a “wordpress.com” account and the owner’s permission to access to the website content.

5. Parties’ Contentions

A. Complainant

Key contentions of the Complaint may be summarized as follows:

Due to the important concerts and cultural events organized by the Complainants (including the New Year’s Eve and the New Year’s concert at the Royal Theatre, The Concert Series Excelentia in the National Auditorium of Music of Madrid, the Excelentia Foundation awards, etc.), the trademark and foundation’s denomination FUNDACION EXCELENTIA enjoys goodwill in the field of music. Further, The foundation’s name “Fudación Excelentia” is protected and registered since 2009 in the Registry of Foundations of the Community of Madrid (Spain), being protected by the Spanish Foundation Act (“Ley 50/2002, de 26 de diciembre, de Fundaciones). The Spanish Foundation Act allows the use of the name “fundación” (or “foundation”) to entities created and registered under its provisions, and protects foundations’ names, not allowing new entities that may cause confusion with the already existing and registered foundations. Further, the Policy protects not only registered trademarks but also unregistered or common law trademark rights, being FUNDACION EXCELENTIA a renown unregistered trademark which has acquired recognition and goodwill among consumers. The Complainants provide various links to articles in the main Spanish newspapers referred to the Complainant’s concerts and cultural activities, dated between 2013 and 2019.

The disputed domain name is confusingly similar to the Complainant’s trademarks and identical to the Complainants’ unregistered trademark FUNDACION EXCELENTIA. The disputed domain name includes the common dominant term in the Complainants’ registered trademarks “excelentia”, and the addition of the generic Top-Level Domain (“gTLD”) “.blog” is usually disregarded under the confusing similarity test.

The Respondent has no rights or legitimate interests in the disputed domain name. The terms “Fundacion Excelentia” are reserved to the Complainant’s entity since the foundation’s constitution (in 2009), and the disputed domain name has been used to defame the Complainants’ reputation, beyond mere freedom of expression or criticism, accusing the Complainants of false criminal acts without any evidence. None of the circumstances included in paragraph 4(a)(ii) of the Policy apply and the Complainants have not authorized the Respondent to register the disputed domain name or to use the mark FUNDACION EXCELENTIA.

The disputed domain name was registered and is being used in bad faith. Through the organization of concerts in the most prestigious auditoriums, FUNDACION EXCELENTIA has become a distinctive identifier in the music sector. Further, the disputed domain name incorporates in its entirety this trademark and foundation’s denomination, being linked to a website defaming the Complainants. The Respondent knew or should have known of the registration and/or use of the Complainants’ trademarks prior to registering the disputed domain name, being the disputed domain name registered in bad faith with the intention of prejudicing and damaging the Complainants’ reputation and disrupting the Complainants’ business. The Complainants sent a letter to the Respondent through the Registrar requesting the transfer of the disputed domain name but the Respondent did not reply.

The Complainants have cited previous decisions under the Policy as well as various sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that it considers supportive of its position.

The Complainants request the transfer of the disputed domain name.

B. Respondent

In an email communication to the Center, the Respondent indicated that the information provided in the disputed domain name registration (name, email, address and telephone number) was not real and that, understanding the copyright claim, the Respondent had removed the content of the website linked to the disputed domain name, although considering it was a fair use.

The Respondent further indicated that all information included in the site linked to the disputed domain name had been carefully selected, keeping evidences and testimonies to corroborate each allegation, and that the Complainants had power and good connections in Spain, treating their employees and musicians like slaves, who were not able to speak, afraid of losing their jobs.

C. Supplemental Filing of the Complainants

In the Supplemental Filing, the Complainants indicated that the site linked to the disputed domain name had not been removed. The Respondent had only implemented a private mode of the website, requesting a wordpress.com account and the Respondent’s permission to access to the site, and the recognition of using false name and contact details in the registration of the disputed domain name corroborated the Respondent’s bad faith having the intention to damage to the Complainants.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(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.

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has authority to decide the dispute.

Paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties, and has performed some limited independent research under the general powers of the Panel articulated inter alia in paragraphs 10 and 12 of the Rules. See section 4.8 of the WIPO Overview 3.0.

A. Identical or Confusingly Similar

In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. See section 1.7, WIPO Overview 3.0.

Further, the generic Top-Level Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test.

In the present case it is relevant to indicate that the term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy, encompasses both registered and unregistered marks. See section 1.1, WIPO Overview 3.0.

The Complainant has provided evidence of having rights in the unregistered trademark FUNDACION EXCELENTIA, extensively and continuously used in Spain since 2009, for education and cultural services related to the diffusion and divulgation of music, including the organization of concerts with diffusion in the main Spanish national newspapers, as well as having rights in various registered trademarks including the term “excelentia”. The Panel notes and has corroborated through various searches over the Internet, the extensive presence of the mark FUNDACION EXCELENTIA on the Internet as well as its extensive use and promotion since 2009, being notorious in Spain for the organization of concerts and other cultural activities related to music.

The disputed domain name incorporates in its entirety the foundation’s name and trademark FUNDACION EXCELENTIA, not adding any element, and reproduces the dominant term in the Complainants’ registered trademarks “excelentia”. The Complainants’ trademark FUNDACION EXCELENTIA is directly recognizable in the disputed domain name, and the gTLD “.blog” adds no distinctive meaning, being a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. Accordingly, the Panel finds that the disputed domain name is identical to the Complainants’ mark FUNDACION EXCELENTIA and confusingly similar to other registered Complainants’ trademarks, and that the first element of the Policy under paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, prior UDRP panels have recognized that proving the Respondent lacks rights or legitimate interests in the disputed domain name could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that the burden of production on this element shifts to the Respondent, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.

The Complainants have stated that the Respondent has not been authorized to use the foundation’s name and trademark FUNDACION EXCELENTIA. Further, the Complainants have alleged that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, as the disputed domain name has been used to defame the Complainants’ reputation, beyond mere freedom of expression or criticism, accusing the Complainants of false criminal acts without any evidence.

This effectively shifts the burden to the Respondent of producing relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in the disputed domain name by demonstrating, without limitation:

“(i) before any notice to you (the respondent) of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (the respondent) (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you (the respondent) are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent has alleged a fair use indicating however that, understanding the Complainants’ claim, the content of the website linked to the disputed domain name had been removed (albeit it seems that this content may still be available under permission in a private mode version).

In principle, the use of a disputed domain name for fair use such as genuine noncommercial free speech would support a respondent’s claim to a legitimate interest under the Policy. However, a right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark, which would create a risk of Internet users’ confusion through impersonation (misleadingly diverting consumers). See section 2.6, WIPO Overview 3.0.

A core factor in assessing fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain name is identical to the foundation’s name and the Complainants’ trademark FUNDACION EXCELENTIA. The Panel further notes that the foundation promotes its activities and events through its official website associated to the domain name <fundacionexcelentia.org> that, apart from the gTLD, is identical to the disputed domain name. Therefore, the Panel considers that there is a high risk of implied affiliation.

The right to criticize does not necessarily extend to the registration and use of a domain name identical to the Complainants’ mark that intrinsically creates a likelihood of confusion. Most importantly, the Panel notes that the Respondent had numerous other ways to express its opinions on the Internet without using the disputed domain name, being able to use, for instance, a domain name including terms highlighting the critical nature of the contents associated with it and the independent nature of the site.

The above-mentioned circumstances lead the Panel to conclude that the Respondent has not rebutted the Complainant’s prima facie case, and that the Respondent lacks rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name “has been registered and is being used in bad faith.”

At the time of the registration of the disputed domain name, the Panel considers unlikely that the Respondent did not know about the Complainants and FUNDACION EXCELENTIA mark, and did not have them in mind. The nature of the disputed domain name identical to the foundation’s name and the mark, as well as the content of the website linked to the disputed domain name, including a criticizing blog related to the Complainants and the foundation’s activities, corroborate this conclusion.

It is further noteworthy the Respondent’s communication omitting any allegation of ignorance of the Complainants and the mark, and admitting that the purpose of the registration of the disputed domain name was an alleged fair use to be able to denounce or report on the Complainants’ way of treating employees and musicians in the foundation’s orchestras.

Furthermore, the Respondent recognized that the name and contact details used in the registration of the disputed domain name were false, and indicated that the content of the website linked to the disputed domain name had been removed. However, it seems that the last allegation is only partially correct, as the content seems to be still available under permission in a private mode version.

As analyzed, the alleged fair use cannot justify registering or using a domain name identical to a trademark, which would create a risk of Internet users’ confusion through impersonation (misleadingly diverting consumers).

The Policy’s non-exhaustive list of bad faith circumstances in paragraph 4(b) includes the following:

“(i) circumstances indicating that you (the respondent) have registered or you have acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you (the respondent) 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; or

(iii) you (the respondent) have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you (the respondent) have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”

Taking into account all cumulative circumstances of this case, the Panel considers that the disputed domain name was registered and used with the intention of creating a likelihood of confusion as to the affiliation or association with the foundation’s name and the trademark FUNDACION EXCELENTIA, trying to misleadingly attract Internet users to the Respondent’s website, and disrupting the Complainant’s activity as a non-profit organization, similarly as indicated in paragraphs 4(b)(iii) and (iv) of the Policy.

All the above-mentioned lead the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel concludes that the Complainants have met their burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element of the Policy.

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 <fundacionexcelentia.blog> be transferred to the Complainant.

Reyes Campello Estebaranz
Sole Panelist
Date: February 10, 2020