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ATLL Aigües Ter Llobregat v. P1eSoft.com [2004] GENDND 1384 (4 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ATLL Aigües Ter Llobregat v. P1eSoft.com

Case No. D2004-0556

1. The Parties

The Complainant is ATLL Aigües Ter Llobregat, Barcelona, Spain, represented by D. Ferran Llaquet Ballarín, Barcelona, Spain.

The Respondent is P1eSoft.com, Miami, Florida, United States of America.

2. The Domain Names and Registrars

The disputed domain name <atll.com> is registered with Tucows Inc.

The disputed domain name <atll.net> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2004, by email a hard copy of which was received on July 29, 2004. On July 28, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name <atll.com>. On that same date Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact connection with the domain name <atll.com>. On August 3, 2004, the Center transmitted by email OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name <atll.net>. On August 4, 2004, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact connection with the domain name <atll.net>.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”).

On August 5, 2004, the Center advised the Complainant that, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceedings would be the language of the registration agreement, i.e. English. Accordingly, the Center requested the Complainant to provide the Complaint translated into that language and granted until August 1, 2004, to do so.

On August 6, 2004, the Complainant filed by email with the Center its amended Complaint in English a hardcopy of which was received on August 11, 2004.

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 August 16, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2004.

The Center appointed Christophe Imhoos as the sole panelist in this matter on September 20, 2004. 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 and rendered its decision within the time-limit granted.

4. Factual Background

The Complainant registered in Spain the denominative trademark with design “ATLL AIGUES TER LLOBREGAT” in classes 37, 39, 40 and 42, with the numbers 1796208, 1796209, 1796210 and 1796211. These trademarks were applied for on December 24, 1993, and granted on April 20, 1994, (Annexes 6 to 9 to the Complaint).

ATLL registered in Spain the business name “AIGUES TER LLOBREGAT, ATLL”, number 174494, applied for on December 27, 1993, and granted on December 1, 1995, and is currently also in force (Annex 10 to the Complaint).

ATLL is the owner the domain name <atll.es>, registered on June 3, 1998, (Annex 11 to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant's arguments are as follows.

(i) The domain names <atll.com> and <atll.net> are identical or confusingly similar to a service mark in which the Complainant has rights.

Based on a global evaluation and bearing in mind the distinctive and dominant components of the registered trademarks owned by the Complainant, the domain names are identical to the distinctive and dominant part of the registered trademarks of the Complainant. In addition, an abbreviation of a registered trademark incorporated in a domain name may result in a similarity between the signs enough to create confusion (e.g. Dow Jones & Company , Inc. & Dow Jones LP v. T.S.E. Parts, WIPO Case No. D2001-0381).

(ii) The Respondent has no rights or legitimate interests in respect of the domain names.

Respondent cannot provide any legitimate reason for having decided to adopt the domain names subject to this dispute. Moreover, it has never used the domain names before this controversy has arisen. Currently, the domain names in dispute are still not used, neither for offering products and services in good faith, nor for any other legitimate and fair or non-commercial use. Likewise, the Respondent does not have nor has ever possessed registrations or applications for the registration of trademarks identical or similar to the domain names that are the subject of the Complaint, nor do the domain names distinguish any company, product or service belonging or linked to the Respondent. Finally the latter has neither been known nor identified by names corresponding to the said domain names.

(iii) The domain names have been registered and are being used in bad faith.

The Respondent's corresponding websites are inactive: since their effective date of registration (i.e. November 24, 1999, and February 11, 2002) none of them have been operative. Furthermore, not a page under construction message or any other similar message that may indicate a future use of the website appears, but upon accessing the electronic addresses, the navigator simply indicates that the page “cannot be found” (Annexes 12 and 13 to the Complaint). This has to be considered as a “passive holding”, that is, the registration of a domain name that has not been used by the registrant over a long period of time. Specifically, one of the domain names has not been used for five years, whilst the other was registered two years ago, without having been used. Lack of activity has been considered as evidence of bad faith in the registration and use of the domain name in certain cases (e.g. Jones Apparel Group v. Robin Sousa, WIPO Case No. D2001-1308 and references; also Gaggia S.p.A. v. Yokngshen Kliang, WIPO Case No. D2003-0982).

Moreover, the Respondent did not respond to the Complainant's written communication of September 29, 2003, which it received on October 6, 2003, (Annex 14 to the Complaint), whereby the Respondent was requested to transfer the domain names in disputes in favor of the Complainant.

The only reason for the Respondent to register the domain names in dispute was to obtain a remuneration in exchange of their transfer; that is, to exploit them by selling them to whoever may claim to have interest therein. This is evidenced by the information provided by the Registrar itself (see Annexes 1 and 2 to the Complaint) and from which it may be observed that, instead of the name of the administrative and technical contacts, regarding the domain name <atll.com>, there are the words “Domain for SALE”. And in the information given about the domain name <atll.net>, the Respondent went even further, as it even set a price: in the part corresponding to “Billing contact” there are the words “FOR SALE, US$25.000,00”.

In conclusion, not only the so-called “passive holding” is present, as evidence of bad faith of the Respondent, but there are also other circumstances clearly indicating that the domain names have been registered by the Respondent with the intention of selling them for a price notably higher than the registration costs incurred, which constitutes a circumstance that proves by itself the existence of bad faith in the registration and use of the domain names, according to paragraph 4(b)(i) of the Policy.

Accordingly, the Complainant requests that the disputed domain names be transferred in its favor.

B. Respondent

The Respondent did not file any response to the Complaint.

6. Discussion and Findings

Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (“the Policy”) sets forth three requirements, which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondent’s domain name has been registered and is being used in bad faith.

The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to Paragraph 4(a) of the Policy.

The Administrative Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to Paragraph 15(a) of said Rules.

In accordance with Paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Complainant has convincingly submitted, in the instant case, that the abbreviation of the registered trademark incorporated in the domain names at stake results in sufficient similarity between the trademark and the domain names to create confusion.

The Complainant has also established its rights in trade and service marks “ATLL” with various registrations for such a name (see Complainant's Annexes 6 to 10).

There is therefore confusing similarity between the Complainant’s trade and service marks and the disputed domain names.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the domain name in dispute. Those circumstances are described as follows:

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

(ii) you (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 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, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute. This entitles the Administrative Panel to draw any such inferences from such default as it considers appropriate pursuant to Paragraph 14 (b) of the Rules (see e.g. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009, p. 6 or Isabelle Adjani .v. Second Orbit Communications, Inc., WIPO Case No. D2000-0867, p. 6).

Absent evidence to the contrary and as rightly submitted by the Complainant, the latter has not granted any license or otherwise permitted the Respondent to use such trade and service marks or to apply for any domain names incorporating the said trade and service marks. In addition, the Respondent has not been known under the disputed domain names, personally or in relation to his field of commercial activities.

Under those circumstances, the Panel is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the domain name at stake.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name 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 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 have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you 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.

As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate his good faith in the registration or use of the domain name in issue.

Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).

Based on the contentions summarized above, it is the Panel’s finding that the Complainant has established, with conclusive evidence (see in particular Complainant’s Annexes 1 and 2), a prima facie case that the Respondent has behaved according to the circumstances described under Paragraph 4(b)(i) of the Policy.

Moreover, the fact that the Respondent did not react to the Complainant’s communication mentioned above (see Complainant’s Annex 14 and 15) may be considered as an additional circumstance that amounts to bad faith within the general meaning of Paragraph 4(b) of the Policy (see Gaggia S.p.A. v. Yokngshen Kliang, WIPO Case No. D2003-0982 cited by the Complainant; see also Carrefour v. Richard Mandanice, WIPO Case No. D2002-0623).

Last but not least and as rightfully pointed out by the Complainant, the websites in relation to the domain names in dispute are not active (see Complainant’s Annexes 12 and 13). There is no reason to depart from previous decisions that held that passive use of a domain name constitutes bad faith registration and use under certain circumstances as the instant matter warrants such a finding (see cases cited by the Complainant as mentioned above; see alos Telstra Corporation Ltd. V. Nuclear Marshmallows, WIPO Case No. D2000-0003), at least within the general meaning of Paragraph 4(b) of the Policy.

Transfer of the domain names <atll.com> and <atll.net> shall therefore be ordered in favor of the Complainant.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <atll.com> and <atll.net>, be transferred to the Complainant.

Christophe Imhoos
Sole Panelist

Dated: October 4, 2004