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Luis Cobos v. West, North (Nick Handle: JNMTOKTCQD) [2004] GENDND 712 (21 June 2004)

1. The Parties

The Complainant is Luis Cobos, Madrid, Spain (“the Complainant”), represented by Mr. Miguel Ángel Rodríguez of Gómez-Acebo & Pombo Abogados, Spain.

The Respondent is West, North (Nick Handle: JNMTOKTCQD), QuezonCity, MetroManila, Philippines (“the Respondent”).

2. The Domain Name and Registrar

The disputed domain name <luiscobos.com> (“the Domain Name”) is registered with Network Solutions, LLC (“the Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2004. On March 10, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 13, 2004 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 for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 1, 2004. The Center verified that the Complaint together with the amendment to 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”).

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 5, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 1, 2004.

On June 3, 2004, the Center received a Response to the Notification of Respondent Default from “Kim Taeho” reading:

“I am the respondent in this case.

But I have NOT received any documents regarding complaint from complainant. Please make it correct!

Regards

Steve”

The Center emailed the parties on June 4, 2004, in the following terms:

“Dear Parties,

The Center is in receipt of Respondent’s email, received June 3, 2004.

Please note that the mailing address which was provided as the Respondent’s contact address in the Whois webpage was erroneous and the notification of complaint forwarded by courier by the Center was returned. The email notification, however, seems to have come through.

In order to clarify the issue, the Complainant is requested to forward the airway bill number in order to trace the transmission of Complaint by the Complainant.

The Respondent is requested to forward a correct street address and other contact details in order to forward communications.

The submissions are to be forwarded by email by June 7, 2004.

Parties are informed of the fact that the Center has now invited the Panel in this matter and we shall shortly communicate the Panel appointment.”

The Respondent failed to respond. On June 7, 2004, the Complainant supplied a copy of the postal receipt provided by the Spanish postal service demonstrating transmission of the Complaint to the Respondent.

It was then noticed that when the Center sent the June 4, 2004, email set out above, the email address of the Respondent defaulted automatically from Respondent’s email address “@hotmail.com” to “@hotmail.INET.” The Complainant’s representatives also noticed that there was something wrong with the Respondent’s email address. They received an email message from Mail Delivery Subsystem [MAILER-DAEMON@MX1.wipo.int] dated June 7, 2004, indicating that the Respondent’s email address contained “permanent fatal errors.”

The Center appointed Tony Willoughby as the Sole Panelist in this matter on June 9, 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.

While the Respondent received the original version of the Complaint, it is possible that the Respondent may still not have received either the exhibits or the final version of the Complaint. If that is the case, the Respondent has only itself to blame for not having ensured that its contact details on the Registrar’s Whois database are up to date and operational. The Panel notes that the Respondent’s administrative contact who goes under the names “Taeho Kim” and “Steve” (and who claims to be the Respondent) is very well acquainted with both the Policy and the Procedure. Had the Respondent seriously wanted to participate in this proceeding, it would have taken the trouble to call the Center. In the circumstances the Panel proposes to treat this case as a normal case of respondent default.

4. Factual Background

The Complainant is a well known Spanish musician. The unrefuted evidence of the Complainant is that sales of his records have topped 12 million in number. He has been the recipient of many prizes and awards.

Nothing is known of the Respondent. The name under which the Domain Name is registered is a pseudonym. The email address for the Respondent’s administrative contact is defective. The address given for both the Respondent and its administrative contact is also defective.

The Domain Name was registered on April 18, 2001, by BigDoggie.com of Kwangju Kwangju, Korea. At that time the administrative contact was Taeho Kim of Enamecorp.com of the same address.

The Domain Name was registered in the name of the Respondent on or about February 6, 2004.

From the Respondent’s email quoted above and dated June 3, 2004, it would appear that the administrative contact for the Domain Name has remained the same for the past three years.

On March 10, 2004, the Complainant emailed the original Complaint to the Respondent and notwithstanding the subsequent problems with the Respondent’s email address that message got through because the following day, March 11, 2004, Steve aka Taeho Kim responded:

“Dear Sir

I want to transfer the domain <luiscobos.com> to you peacefully. But will need compensation $1000USD for compensation of maintaining it. If you agree on, please log in “www.escrow.com” to start the transaction.

Regards

Steve.”

5. Parties’ Contentions

A. Complainant

The Complaint contends, inter alia, that he has common law rights in his name, Luis Cobos. He attaches to the Complaint sufficient evidence to demonstrate that he has a distinguished reputation and goodwill in Spain and elsewhere as a professional musician. He contends that the Domain Name is identical to his name in which he has common law trademark rights.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant points out that the website linked to the Domain Name contains links to other websites “all of them peculiarly dedicated to musical P2P exchanges.” The Complainant observes that the Respondent does not have any relationship with or permission from the Complainant for the use of his name.

The Complainant points out that the Domain Name is not the Respondent’s name. The Complainant contends that the Respondent has used the Complainant’s name “in order to attract visitors to this web page with the illegitimate aim of making advertising links to other websites in order to attract visitors to the website at issue, because of the Claimant’s fame and prestige.”

The Complainant refers to the history of the Domain Name and refers to a number of previous domain name disputes involving BigDoggie.com, the previous registrant of the Domain Name, and Taeho Kim, the Respondent’s administrative contact who claims to be the Respondent, and ENamecorp.com a business with which the Respondent’s administrative contact is associated.

The Complainant also refers to the fact that when the original Complaint was transmitted to the Respondent, the Respondent’s immediate response was to offer to sell it for US$1000.

In essence, the Complainant’s position is that the Respondent has no obvious proper connection with the Domain Name and is using it simply to attract visitors to its websites for commercial gain.

Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith.

The Complaint ends as follows:

“Therefore, the domain name at issue has been registered and is being used in bad faith, to attract Internet users. The fact that Respondent is using a domain name made with Complainant’s name; the fact that Respondent is including pornographic pop-ups in the Web Page of the domain name and the well-known activity of Complainant worldwide make it obvious that the use of the domain name leads to confusion and must be considered as a case of those set forth in Section 4b(iv) of the Policy.

Furthermore, the evidence provided by the email sent by Mr. Kim Taeho after the original of this Complaint was sent to the Respondent, asking for a maintenance ‘compensation’ of the Domain Name at issue of 1,000 US$ (see Annex 15.1) gives an additional piece of evidence about the use in bad faith of the Domain Name, as the WIPO Arbitration and Mediation Centre stated with regard to he Defendant (and his aliases) in Administrative Panel Decisions attached as Annexes 9, 12 and 22, amongst many others cases.”

B. Respondent

The Respondent has not responded.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that

(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 in bad faith and is being used in bad faith.

A. Identical or Confusingly Similar

The Domain Name comprises the Complainant’s name and the generic domain suffix. The suffix may be ignored for the purpose of considering identity/confusing similarity. Clearly the Domain Name is identical to the Complainant’s name, but the name Luis Cobos is not registered as a trademark anywhere.

Is the Complainant’s name merely his personal name or is it in addition an unregistered or common law trademark? To answer that question one has to consider the position under common law. A common law trademark is a trademark, which may or may not be registered (although the term is most commonly used in relation to unregistered trademarks), the use of which by an unauthorized third party can be restrained in a passing off action. If a musician conducted business in a common law jurisdiction such as the United Kingdom, for example, under the name Luis Cobos, could the Complainant succeed in a passing off action in the United Kingdom to restrain that unauthorized use? Almost certainly, the answer is “yes,” in which case his name is a common law trademark. To succeed, the Complainant would have to establish a reputation and goodwill in the United Kingdom under his name Luis Cobos; he would have to prove that the third party’s use of his name would be likely to lead to deception in the marketplace (e.g. among purchasers of CDs) and he would have to prove a likelihood of consequential damage to his goodwill. From the evidence submitted by the Complainant, the Panel has no doubt that the Complainant would be able to prove the necessary elements of the tort.

Does it matter that the Complainant is resident in a civil law jurisdiction? In the Panel’s view it does not matter. First, the Complainant’s reputation and goodwill extends well beyond Spain, but, secondly and more fundamentally, equivalent relief is available to Spanish citizens resident in Spain by way of unfair competition actions and the like. The fact that the terms “common law trademark” and “unregistered trademark” may not be used in that context in Spain cannot sensibly mean that citizens of common law jurisdictions are entitled to wider protection under the Policy than citizens of other jurisdictions. To adopt that approach would ignore the fact that the Policy is intended to be of uniform applicability across the globe; it would also involve subordinating the substance of the issue to its form. Substance has to be more important than form and the point of substance is that the relief available to the proprietors of unregistered trademarks in common law jurisdictions is in reality equally available to their counterparts in other jurisdictions. In the Panel’s view, the name Luis Cobos, the name under and by reference to which members of the purchasing public in Spain and elsewhere recognize his performances and purchase his records, is in common law parlance an unregistered trademark and therefore a trademark for the purposes of paragraph 4(a)(i) of the Policy.

The Panel finds therefore that the Domain Name is identical to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy the Complainant is required to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. Paragraph 4(c) of the Policy which is addressed to respondents identifies what respondents can prove to demonstrate their rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) of the Policy.

It is for the Complainant to demonstrate a prima facie case and if the Complainant is successful in establishing a prima facie case (i.e. a case to answer), it is for the Respondent to answer that case.

The Panel is in no doubt that the Complainant has done enough to establish a prima facie case. The Domain Name is not the name of the Respondent. Self-evidently it is the name of the Complainant and the Complainant is a very well known professional musician. Inevitably, one asks oneself why the Respondent registered somebody else’s name as a domain name. In this case it seems very probable that the Respondent registered the Domain Name with a view to attracting visitors to its website and presumably for commercial gain.

It is to be noted that the Respondent and/or those associated with the Respondent have made a habit of registering domain names featuring names which do not belong to them. In the case of Tinfos Jernverk AS v. BigDoggie.com, WIPO Case No. D2002-0446, the Panel had this to say:

“Prior to undertaking an examination of these elements, the Panel notes that the Respondent is no stranger to contested domain name proceedings. The Respondent’s principal, Mr. Taeho Kim, has been the respondent in at least three prior proceedings. Each of these cases involved factual scenarios similar to the present one – i.e., the registration by Mr. Kim of trademark names or close derivations thereof, followed by standard-form e-mail correspondence claiming the intent to develop a website combined with offers to sell it at increasing price levels. See Freedom Card, Inc v. Mr. Taeho Kim, WIPO Case No. D2001-1320 (January 20, 2002); Mucos Emulsions, GmbH and Marlyn Nutraceuticals, Inc. v. Essex.org and Kim Taeho, WIPO Case No. D2000-1513 (April 12, 2001); Nintendo of America Inc. v. Enic.net, Ename and Kim Taeho, WIPO Case No. D2001-1369 (February 14, 2002). While these earlier matters can have no direct relevance to the outcome of the present case, the Panel necessarily takes cognizance of them in assessing the similar allegations at issue here.”

The Panel notes that the Complainant has cited a number of other cases also involving Mr. Taeho Kim or companies with which he is associated.

Clearly, the Respondent has a case to answer, but the Respondent has not provided an answer. Moreover, the Panel can think of no reason why the Respondent might justifiably be said to have rights or legitimate interests in respect of the Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

In all the circumstances, the Panel believes it likely on the balance of probabilities that the Respondent registered the Domain Name, as the Complainant asserts, with a view to using it to link to commercial websites and thereby attract visitors to those websites for commercial gain. The Respondent received the original Complaint and is aware of the Complainant’s allegations, but has not seen fit to respond. As indicated above, it is not as if the Respondent and its administrative contact are unfamiliar with both the Policy and the Procedure.

The Panel concludes that the Respondent has no answer to the allegations. Accordingly, the Panel finds that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel directs that the Domain Name, <luiscobos.com>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist

Dated: June 21, 2004