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Rosa María Clara Pallarés v. Dennis Heinz [2005] GENDND 1285 (21 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rosa María Clara Pallarés v. Dennis Heinz

Case No. D2005-0548

1. The Parties

The Complainant is Rosa María Clara Pallarés, Barcelona, Spain, represented by Cuatrecasas Abogados, Barcelona, Spain.

The Respondent is Dennis Heinz, Houston, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <rosaclara.com> is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2005. On May 25, 2005, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On May 31, 2005, Register.com 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”), 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 31, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2005. The Response was filed with the Center on June 20, 2005.

The Center appointed Hub J. Harmeling as the sole panelist in this matter on July 7, 2005. 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 facts relevant to the current dispute are set out in the Complaint and the Response. Considering the evidence submitted, the Panel finds the following facts to have been established.

The Complainant, Ms. Rosa María Clara Pallarés, is a Spanish individual who designs wedding dresses. She incorporated Rosa Clará S.L., a Spanish company responsible for the design, manufacture and distribution of the ROSA CLARA brand. Rosa Clará S.L. has 40 franchises in Spain and two in Portugal. The Complainant’s collections are distributed in at least 12 countries of the European Community and in Scandinavia, Eastern Europe, the United States, Mexico, Latin America and Japan.

The Complainant registered the ROSA CLARA trademark with the relevant authorities in the United States, Spain and the European Community between 1996 and 2004. The Complainant also registered the domain name <rosaclara.es> in 2001. The Rosa Clará company’s official website is hosted at that domain.

The Respondent, Dennis Heinz, is an American individual who registered the disputed domain name in 1999. The Respondent has never established a website using the disputed domain name, which has effectively been dormant for more than five years since he registered it.

5. Parties’ Contentions

A. Complainant

The Complainant describes herself as a well-known wedding dress designer who started her eponymous line in 1995. She notes that several famous fashion designers associate their prêt-a-porter for brides with her brand. The Complainant’s company has more than 40 franchises in the Iberian countries, and ROSA CLARA dresses are sold in shops all over the world, including in the Respondent’s home country, the United States. The Complainant asserts that she has been especially active in distributing her designs in the United States, having placed advertisements in the “most reputed and well-known magazines in the field of wedding-designs” and presented her designs at fairs and exhibitions in the United States (she attaches to her Complaint examples of her advertisements and evidence of her participation in public events). The Complainant furthermore points out that she and her company have been awarded prizes in recognition of their international expansion.

The Complainant points to the ROSA CLARA marks she has registered in various countries, including the United States. Also, the Complainant claims that a majority of the hits returned by an Internet search on the term “Rosa Clará” are websites related to the Complainant and her designs, and that these websites contain information about her activities in at least 23 countries. The Complainant, herself, has established a presence on the Internet at the domain name <rosaclara.es>, which has since 2001, hosted the official website of the Complainant’s company.

The Complainant relies on the fact that although the Respondent registered the disputed domain name on December 31, 1999, it has never been active since then. The Complainant also emphasizes the Respondent’s failure to respond to her lawyer’s attempts to contact him, first via a cease-and-desist letter on October 18, 2004, and then several times by telephone. Meanwhile, according to the Complainant, the Respondent renewed his registration of the disputed domain name by paying the annual maintenance fee.

The Complainant asserts that:

(A) <rosaclara.com> is identical or confusingly similar to the Complainant’s ROSA CLARA mark. The Complainant points out that, since only the .com TLD has been added to the name “Rosa Clará,” the disputed domain name is effectively identical to her registered trademarks.

(B) The Complainant alleges that the Respondent does not have any rights or legitimate interests in the disputed domain name. In particular, according to the Complainant: (i) in the five years since registration, the Respondent has never made a fair use of the domain name—nor, indeed, any use at all; (ii) the Respondent is not known, and has never been known, by the name “Rosa Clará,” a contention supported by the fact that none of the hits from Internet searches on the term “Rosa Clará” relate to the Respondent; (iii) the Respondent’s use of the disputed domain name cannot be considered non-commercial or fair, because he is “blocking” the Complainant from using the disputed domain name and deliberately continued to do so by renewing the registration even after receiving the cease-and-desist letter that made clear the effect his registration had on the Complainant.

(C) The Complainant also asserts that the Respondent registered <rosaclara.com> in bad faith. She contends that the Respondent knew of her trademarks when he registered the disputed domain name, because, at that time, the Complainant was repeatedly using the ROSA CLARA brand name in the United States and had applied for (but not yet obtained) a registration of the trademark in the United States. Furthermore, the Complainant emphasizes that ‘rosa clara’ does not have any specific meaning in English, the dominant language in the Respondent’s home country, and its meaning is not obvious even in Spanish. According to the Complainant, this shows that the Respondent registered the domain name because he knew of the Complainant’s fame. The Complainant argues that this inference is strengthened by the Respondent’s renewal of the registration for the disputed domain name even after he had been explicitly advised of his breach of the Complainant’s rights. Citing previous WIPO UDRP decisions, the Complainant argues that the Respondent had constructive notice of the Complainant’s marks when registering the disputed domain name, as the Complainant had at that time already filed a request for registration of the ROSA CLARA mark in the United States.

The Complainant finally contends that the Respondent is using the disputed domain name in bad faith. She does not appear to contend that the Respondent’s conduct falls within any of the four non-exclusive examples of bad-faith conduct listed in paragraph 4(b). Rather, she emphasizes the fact that the Respondent has done nothing with the disputed domain name for more than five years, a period in which he had at least constructive notice of the Complainant’s protected mark. The Respondent’s silence after being contacted by the Complainant’s lawyer, and his renewal of the registration during that period, also evidences his bad faith, according to the Complainant.

B. Respondent

As to the contention that <rosaclara.com> is identical or confusingly similar to a mark in which the Complainant has rights, the Respondent points out that <rosaclara.com> does not mean anything in any particular language and that “Rosa Clará” is a common name. The Respondent says that “rosaclara is a partial combination of Complainant’s first and last names. A lot of people share that name.” He therefore argues that it does not fall within the realm of distinctive trademarks. Nonetheless, the Respondent acknowledges that the Complainant has registered the ROSA CLARA trademark (although stressing that the mark was not registered in the United States until after the Respondent registered the disputed domain name); but he denies that such registration entitles the Complainant to the disputed domain name, because the Complainant is an individual doing business in Spain who is active on the Internet only through a <.es> domain name. The Respondent stresses that the Complainant has not registered a domain name with a gTLD or a United States ccTLD, or even a domain name with the <.pt> ccTLD, even though she has two stores in Portugal. According to the Respondent, this indicates that the Complainant has no international rights in the disputed domain name.

Next, the Respondent argues that he has rights or legitimate interests in respect of the disputed domain name. The Respondent says that he registered the disputed domain name during the Christmas holiday in 1999, when he was engaged to be married to Ms. Rosa Clara Salazar. He intended to set up a family website at the disputed domain name. For a number of personal and professional reasons, which the Respondent does not specify, he has never managed to get a website up and running. The Respondent says that he has kept postponing the project, which has become a low priority for him, but that he has continued to pay the annual registration fee because it is such a small amount. The Respondent claims he was never aware that anyone was interested in the disputed domain name. According to the Respondent, he learned of the Complainant’s activities only when he received a letter from her lawyer. The Respondent found the letter rather offensive and ignored it. The Respondent says that this was the only form of communication initiated by the Complainant before she commenced this administrative proceeding, apparently denying the Complainant’s claim that her lawyer attempted several times to contact the Respondent by telephone.

Finally, the Respondent denies that he registered and is using the disputed domain name in bad faith. The Respondent relies principally upon Societé des Produits Nestlé S.A. v. Pro Fiducia Treuhand AG, WIPO Case No. D2001-0916, in which, as he reads the decision, the Panel found that bad faith was not established where the respondent claimed to have registered the disputed domain name for personal use but did not have an active website.

The Respondent specifically denies that his conduct falls under any of the examples of bad faith registration and use listed in paragraph 4(b) of the Policy. The Respondent asserts that he registered the disputed domain name for personal use, without previous knowledge of the Complainant’s existence, nor of anyone else being interested in the disputed domain name. The Respondent claims to have never offered to sell, rent or transfer the disputed domain name to anyone, anywhere, at any time. According to the Respondent, no one ever expressed interest in the disputed domain name until the Complainant’s lawyer sent the cease-and-desist letter in October 2004, nearly five years after the disputed domain name had been registered. Furthermore, the Respondent claims he has never prevented the Complainant from conducting business anywhere. The Respondent also stresses that he is by no means a competitor of the Complainant and has never done anything related to the bridal industry with the disputed domain name. For the above reasons, the Respondent asserts that none of the indicators of bad faith contained in paragraph 4(b) can be established.

The Respondent questions whether the Complainant is indeed a well-known bridal dress designer. The Respondent claims never to have heard of her, despite the fact that he is a “regular, well-informed, TV-watching, newspaper-reading American consumer.” The Respondent also denies that the Complainant’s position in the United States market could be called “prominent,” and that it is therefore not likely that a consumer in the United States would know of the Complainant. Furthermore, a Yahoo Search for pages with the words “Rosa Clara”, but without the words “bridal”, “dress” or “novia” (Spanish for “bride”), yields more than 2.2 million web pages containing the names Rosa, Clara, or a combination of the two, without any of these pages being related to the Complainant.

Finally, the Respondent claims that this is a case of reverse domain name hijacking. The Respondent argues that the Complainant knew of Respondent’s unassailable rights or legitimate interests in the disputed domain name and the clear lack of bad faith registration and use, and nevertheless brought her Complaint in bad faith.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following elements:

(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 Respondent has registered and is using the disputed domain name in bad faith.

The Complainant bears the burden of proof on each of these elements, see Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

Considering the evidence submitted, the Panel finds as follows.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has protected rights in the ROSA CLARA mark, as she has registered the trademark with the relevant authorities in Spain, the United States, and the European Community.

The Respondent asserts that the Complainant bases her claim on trademarks filed in Spain, and that such trademarks would be irrelevant as the disputed domain name is not in the Spanish ccTLD (.es). That contention is wrong on both counts. First, the Complainant has registered trademarks in countries other than Spain. More important, the Respondent’s argument would not be valid even if the Complainant had no protected rights outside of Spain. As previous panels have established, registration of a mark, irrespective of where it is registered, gives a complainant rights in the mark within the meaning of the Policy. Because the “essence of the Internet is its world wide access,” a respondent’s registration of a disputed domain name may be challenged on the basis of its confusing similarity to a mark registered in any country. (See Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358, Bennet Coleman & Co. Ltd. v. Steven S. Lalwani, WIPO Case No. D2000-0014)

The disputed domain name differs from the Complainant’s brand name in three ways: it contains the .com TLD; it omits the space between “Rosa” and “Clará”; and it has no accent over the “a” in “Clará.” All three of these differences are necessitated by the protocols used on the Internet, and even the Complainant’s trademark registration omits the accent over the “a.”. Thus, for purposes of the Policy, the disputed domain name is as close to being identical with the Complainant’s marks as it could be, and it certainly is confusingly similar to those marks. The Panel finds the first element to have been established.

B. Rights or Legitimate Interests

The Complainant asserts that none of the circumstances listed in paragraph 4(c) of the Policy applies to Respondent’s registration of the disputed domain name. The Panel agrees that it appears improbable that the Respondent has any of the interests listed in that paragraph. Therefore, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent must bear the burden of demonstrating the contrary. (see H.J.M. De Vries, Leidseplein Beheer B.V. v. O.E.W. van der Zwan, WIPO Case No. D2004-0174)

Under the “rights or legitimate interests” heading in the Response, the Respondent has essentially argued that he lacks bad faith. The one decision he cites (Societé des Produits Nestlé S.A. v. Pro Fiducia Treuhand AG, WIPO Case No. D2001-0916)—and quotes at length—in that section of the Response turned on the bad faith issue. In fact, the lengthy quote in the Response begins: “We also find that Complainant has failed to demonstrate bad faith use and registration.” In effect, the Respondent has failed to respond to the prima facie showing that he has no rights or legitimate interests in the disputed domain name, having chosen instead to fight the Complaint principally on the bad faith element.

However, since the complaint fails under the third element of the Policy, it is not necessary for the Panel to conclude under this element.

C. Registered and Used in Bad Faith

The Complainant concedes that she must establish that the Respondent both registered and used the disputed domain name in bad faith. Given her emphasis on the fact that the Respondent renewed the registration after receiving a cease-and-desist letter, the Panel notes its agreement with the consensus view of previous panels: a mere renewal of a registration does not amount to “registration” for the purposes of determining bad faith under the Policy. Bad faith must exist when the current registrant first took possession of the disputed domain name. (See Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782 and PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D2004-0338).

Thus, the burden is on the Complainant to show that the Respondent acted in bad faith in December 1999, when he registered <rosaclara.com>. The Panel concludes that, on the balance of the evidence submitted by both parties, it has not been shown that the Respondent did act in bad faith at the time of the initial registration.

With respect to registration, none of the four circumstances listed in paragraph 4(b) of the Policy as evidence of bad faith have been shown to exist in this case. In fact, it appears that the Complainant does not argue that any of those circumstances have been established with respect to either registration or use. As for paragraph 4(b)(i), there is no evidence that the Respondent has attempted to, or intended to, sell, rent or transfer <rosaclara.com> to anyone. As for paragraph 4(b)(ii), while the Complainant complains that the Respondent is “blocking” her from using the disputed domain name, she does not contend—and could not contend on this record—that the Respondent has engaged in a pattern of such conduct. As for paragraph 4(b)(iii), there is again no contention, and no evidence, that the Respondent is a competitor of the Complainant. Finally, as for paragraph 4(b)(iv), there is no indication that the Respondent has attempted to attract anyone to his website for commercial gain; in fact, he has no website to attract anyone to.

Therein lies the crux of the Complainant’s grievance. The four circumstances set forth in paragraph 4(b) are not exclusive (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131), and the Complainant contends that five years of non-use of the disputed domain name are enough to show that the Respondent is using—or, more precisely, not using—the disputed domain name in bad faith. With respect to the moment of initial registration, the Complainant’s central argument is that the Respondent must have known of her famous ROSA CLARA brand, or at least be deemed to have had constructive knowledge because of the pending United States trademark registration application, and that for no apparent reason, he blocked her access to the .com gTLD domain name that would be most valuable to her business. The five years of non-use bolster her contention that the Respondent had no good reason for usurping her trademark when he registered the disputed domain name.

The Complainant cites a number of prior decisions that, according to her, hold that extended non-use of a disputed domain name constitutes bad-faith conduct. It is true that non-use can in conjunction with other factors support a finding of bad faith; and it is also true that non-use for a lengthy period after registration, again in conjunction with other factors, can support an inference of bad faith at the time of registration. (See Societé des Produits Nestlé S.A. v. Pro Fiducia Treuhand AG, WIPO Case No. D2001-0916; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119). However, the evidence submitted with the Complaint, including the fact that the Respondent has never used the disputed domain name, is not enough to carry the Complainant’s burden. Under the circumstances, the Panel concludes that the mere evidence of non-use cannot overcome the Respondent’s statement that he registered the disputed domain name because it was the name of his fiancée, and that he maintained the domain name afterwards for future use in accordance with his private intentions.

It is not necessary to decide whether the Respondent should be charged with constructive knowledge of the Complainant’s pending trademark registration. The Respondent has shown no inclination to trade off the Complainant’s fame; there is no evidence that he is a serial cybersquatter; he has no apparent interest in selling the disputed domain name for a profit. The evidence submitted with the Complaint is insufficient to establish that his motivation in registering the disputed domain name was related to the Complainant, her competitors, or anyone else other than his betrothed. Consequently, the Panel concludes that the Complainant has failed to establish that the Respondent has registered the domain name in bad faith.

The Complainant has failed to meet her burden of proof on the final element under the Policy.

D. Reverse Domain Name Hijacking

The limitations of the summary administrative procedures under the Policy should be borne in mind. Considering that the Respondent never responded to the Complainant’s cease-and-desist letter, the Complainant had no way of knowing about the Respondent’s fiancée. The Complainant could not have known what the Respondent’s defense would be. And not being permitted a Reply under the Rules and the Supplemental Rules, she had no opportunity to respond once the Respondent had laid out his case.

With these considerations in mind, the Panel dismisses the Respondent’s claim of reverse domain name hijacking.

7. Decision

For all the foregoing reasons, the Complaint is denied, and the claim of reverse domain name hijacking is also denied.

Hub J. Harmeling
Sole Panelist

Dated: July 21, 2005