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SKR Espanola, S.L., v. Direct Innovations Pty Ltd [2005] GENDND 1647 (5 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SKR Espanola, S.L., v. Direct Innovations Pty Ltd

Case No. D2005-0616

1. The Parties

The Complainant is SKR Espanola, S.L., Estepona, Malaga, Spain represented by SKR Española, S.L., Spain.

The Respondent is Direct Innovations Pty Ltd, (Wayne Trotter ID00159647), Victoria, Australia.

2. The Domain Name and Registrar

The disputed domain name, <villas.net>, is registered with Primus Telecommunications t/a PlanetDomain & PrimusDomain.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2005. Also on June 14, 2005, the Center transmitted by email to Primus Telecommunications t/a PlanetDomain & PrimusDomain a request for registrar verification in connection with the domain name at issue. On June 21, 2005, Primus Telecommunications t/a PlanetDomain & PrimusDomain 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. 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 proceeding began on June 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2005.

On July 11, 2005, the Respondent wrote to the Center requesting a seven (7) day extension for the Response because of a comparable delay in receiving the hard copy Complaint in Australia. The Center gave the Respondent a five (5) day extension, until July 17, 2005, to file the Response (per paragraph 5(d) of the Rules).

The Response was received at the Center on July 18, 2005. Even though it was one day late, given that the Respondent is located in Australia and the Center in Switzerland, the Panel exercises its discretion to accept this Response under paragraph 10(c) of the Rules: the distance over which hard copies had to be sent makes a one day delay seem a minor lapse under the circumstances.

The Center appointed Dennis A. Foster as the sole panelist in this matter on July 27, 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.

The original due date of this Decision was August 10, 2005. However, owing to the need to have the Panel receive and view certain hard copies of the Respondent’s exhibits, in Procedural Order No. 1 dated August 10, 2005, the Panel moved the due date of the Decision back to August 17, 2005 (per paragraph 15 of the Rules).

4. Factual Background

The Complainant publishes a magazine in Spain called “Villas &…”. The Complainant describes it as a magazine “of real estate and life style”. In conjunction with its publishing, the Complainant owns a Spanish word trademarks for VILLAS &…, VILLAS.COM and similar trademarks containing the word “villas”. However, the Complainant does not have a word trademark for “Villas” alone.

The Respondent is a travel agent who registered the disputed domain name, <villas.net>, on January 17, 1997. The Respondent has never used the disputed domain name in its business and, in early June, 2005, attempted to sell it to the Complainant for between U.S. $20,000 and $35,000.

5. Parties’ Contentions

A. Complainant

The Complainant began publishing a magazine for real estate and lifestyle in April, 1993 whose name was changed to “Villas&…” in July, 1995. The magazine was in continuous monthly publication until September, 2004. Through common usage the magazine became known simply as “VILLAS”, which has become its common knowledge service mark, and the Complainant will supply affidavits to this effect should the Panel so require (Complaint Annex 3).

VILLAS was distributed and sold throughout Europe, and had subscribers from all over the world. VILLAS achieved the reputation of being the “benchmark” publication in its broad genre, and was well known as the epitome of quality not only in its production values but also in its content.

The Complainant registered VILLAS.COM in May, 1997, and the website for the magazine “VILLAS” at VILLAS.COM has served many purposes, notably to advise prospective advertisers of its rates and contract conditions, and to provide a means for subscription.

The Complainant is now redesigning the site to act as an online version of the magazine VILLAS, to be a high quality resource for prospective real estate purchasers to view high quality property for sale and rent, and for property agents to promote their products and to advise purchasers of the type of lifestyle they might encounter in their areas of interest (Complaint Annex 4).

The Complainant is currently positioning VILLAS.COM to become completely global in scope and market penetration.

Whilst the Complainant readily admits the word VILLAS is generic in nature, it should be noted that this string of characters (VILLAS) is the only part of the Complainant’s trademarks which can make part of a domain name: both the “.” (dot) and the “&” (ampersand) are technically excluded from the configuration of a general top-level domain name. No other combination of characters is closer to the Complainant’s trademarks.

Further, the Complainant has achieved success in using the word string VILLAS in its product category and the Complainant has been able to perfect and protect that usage via continuous use, common lexicon in the trade and in the public’s perception, trademarks, service marks and domain names.

The Complainant has never given any rights or license to the Respondent to make use of its marks and/or Intellectual Property, expressed or implied. The Complainant has posted in its magazine and main website, in plain sight, its legal and claimed rights and copyrights since their inceptions.

The disputed domain name is confusingly similar not only to the Complainant’s core trademark that predates the Respondent’s registration of the domain name, but also to the Complainant’s other trademarks, service marks and industrial designs gained over time.

Prior to today’s date, a priori before any notice to the Respondent of this dispute, the Respondent had never demonstrated any prima facie use of the domain name <villas.net> in any way. The domain name has never resolved to any website since its registration (Complaint Annex 7.1).

The Complainant is unable to ascertain the true purpose of the Respondent’s business activities, other than it certainly does not trade as <villas.net>.

To the best of the Complainant’s knowledge, the Respondent is neither commonly known as <villas.net>, nor as anything related to the word VILLAS, nor even to the real estate business.

The Respondent is also the owner of at least two other “key” generic domains, <collectible.net> and <souvenir.net>, neither of which resolves, and possibly has more. It should be apparent that the Respondent is in the business of passive holding/cybersquatting on valuable domain names for resale.

The series of emails from early June, 2005, at Complaint Annex 8, show the Respondent intended to sell the disputed domain name to the Complainant for commercial gain, viz., some $35,000.

As was shown in Cosmos European Travels AG v. Eurotech Data System Hellos, Ltd., WIPO Case No. D2001-0941, October 8, 2001, the fact that a domain name is generic does not prevent registration being in bad faith if a bad faith pattern of conduct is given.

In this case, inactivity of the website for eight years, absence of legitimate interest of the Respondent in the word VILLAS (besides the interest of selling the domain name at a commercial gain), the holding of other domain names, the specific offer to sell the domain name to the Complainant at much more than out-of-pocket expenses, and Respondent’s intention to list the name for sale in an auction website (See Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001, February 20, 2000) so that Complainant’s competitors might acquire it clearly shows Respondent’s bad faith in registration and use of the disputed domain name.

B. Respondent

It is my understanding of trademark law that, if the listed trademarks that include the word “villas” were in fact granted in Spain to the Claimant, they were granted only because the word “VILLAS” represents merely one element of each application containing multiple elements (for example, an additional word or symbol such as “&…”) and on the proviso that the Complainant relinquish any exclusive right to either the use of the word “VILLAS” or to the use of the symbol “&” (ampersand). Such practice is common around the world when trademark applications include a word in common usage such as “villas” (that is, commonly referred to as “generic”).

As far as any rights deriving from the common usage of the word “villas” is concerned, there is no evidence whatsoever to support the Complainant’s claim that the publication of the magazine “VILLAS &…” has actually resulted in the magazine being known simply as “villas”. The Complainant has provided no evidence to support this allegation other than his own attempt to mislead the Centre by himself referring to the magazine as “VILLAS” instead of “VILLAS &…” in the Complaint. On the contrary, common sense would dictate that the very purpose of calling the magazine “VILLAS &…” in the first place in a very competitive publications market was to set it apart from any other magazines covering self-contained accommodation such as villas and that it was the publishers’ intent for the magazine to be known as “VILLAS &…” not “VILLAS”. Otherwise, the magazine could obviously have been called “VILLAS” from the start.

As far as the remainder of the trademarks allegedly owned in Spain by the Claimant, namely, “villas.com” and “villas.eu”, neither of these covers the word “villas” per se. The full-stop in each case is effectively treated as a letter and the combination is treated as a made-up word, unlike the word “villas” which is generic and in common use.

As far as any rights deriving from the common usage of the word “villas” is concerned, there is no evidence whatsoever to support the Complainant’s claim that the publication of the magazine “VILLAS & …” has actually resulted in the magazine being known simply as “villas”. The Complainant has provided no evidence to support this allegation other than his own attempt to mislead the Centre by himself referring to the magazine as “VILLAS” instead of “VILLAS&…” in the Complaint.

On the contrary, common sense would dictate that the very purpose of calling the magazine “VILLAS &..” in the first place in a very competitive publications market was to set it apart from any other magazines covering self-contained accommodation such as villas, and that it was the publishers’ intent for the magazine to be known as “VILLAS &..” not “VILLAS”.

Respondent also notes that Complainant has provided no historical circulation figures for “VILLAS&…” and surmises that the publication was probably halted after its last issue in September 2004, due to a failure to gain sufficient international circulation.

Respondent also notes that, in what appears a very cynical act, the Claimant has apparently only recently altered the content of its website found at “villas.com” so as to refer repeatedly to the magazine that preceded the website as “VILLAS MAGAZINE” instead of “VILLAS&…” to which I believe it used to refer. In fact, the statement by the Complainant in the first sentence of the 2^nd paragraph on the fourth page of Annex 4 that “…Steve began his publishing career by founding Villas Magazine in 1993’ is blatantly false. It was “Villas &…” not “Villas Magazine”.

The Complainant states it cannot or could not register the exact name of its publication because it contains, inter alia, the symbol “&” and that this strengthens its right to (presumably) any and all domain names that contain the word “villas”. This is entirely illogical. Otherwise, anyone could deliberately trademark a combination of letters and symbols and, because they cannot register an identical domain name, they somehow have the right to a modified domain name that may or may not be more similar to the trademark of someone else.

The fact is that the Complainant’s magazine (that no longer exists) was called “VILLAS &…”, not “VILLAS”. The Complainant has no exclusive intellectual property rights to the word “villas” and nor does anyone else.

On the January 17, 1997, Respondent registered the domain name <villas.net>. The sole purpose of registering the domain name <villas.net> was to hold it until I felt ready and able to develop it into an internet business specializing in one of the areas in which my other company, VIZIT, specialized at the time, namely self-contained accommodation (apartments/gites/cottages/villas) or until I developed a more general accommodation/car rental website to supply a range of services similar to what I was the supplying via VIZIT.

Thus, the Respondent registered the domain name, “villas.net”, in good faith. When it did so, it had the clear intention of utilizing the domain name to expand the travel industry interests of its owner at the time, namely myself. In fact, the fact that no approach had been made to the Complainant as a possible purchaser of the domain name until very recently supports this assertion rather than contradicts it. Furthermore, a registrant is not obliged to activate a domain name within any specific time period.

At the time Respondent registered the disputed domain name, it was heavily involved with its villa accommodation firm and did not even know of the Complainant’s existence.

The fact that the Respondent seeks to sell the disputed domain name for more than its out-of-pocket expenses is entirely legitimate because it has, at no time, acted in bad faith.

The Respondent’s conduct has been entirely without fault in this matter. On the contrary, the Complainant has tried to secure <villas.net> in bad faith by making a number of false and misleading allegations. For these reasons and for the reasons outlined elsewhere in this Response, the Respondent respectfully requests that the Panel find the Complainant guilty of attempting reverse domain name hijacking.

6. Discussion and Findings

In order to prevail in this proceeding and gain transfer of the disputed domain name, under paragraphs 4(a)(i-iii) of the Policy the Complainant must prove:

(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.

A. Identical or Confusingly Similar

At Annex 2 of the Complaint, the Complainant has attached a copy of a Spanish design mark for “VILLAS &…”: no. 1965734 dated November 6, 1995. The Complainant has also attached at Annex 2 a copy of its European trademark for a graphic representation of “VILLAS &…” (no. 772020 dated August 24, 1999). On page 6 of the Complaint, the Complainant has listed four (4) word marks that include the word “villas”: VILLAS &… (Spanish Trademark no. 2,481,948 dated November 20, 2002), VILLAS.COM (Spanish Trademark No. 2,522,493 dated July 7, 2003), VILLASDOTCOM (Spanish trademark no. 2,5222,493 dated July 7, 2003), and VILLAS.EU (Spanish trademark no. M2597146 dated November 16, 2004). Even though the Complainant has not exhibited copies of the last four (4) trademarks, the Panel finds the Complainant probably does own them because they closely resemble the two trademarks exhibited at Complaint Annex 2.

In addition, at Annexes 3 and 4, the Complainant has provided examples of its paper magazine and website at the domain name <villas.com>.

The Panel can see that the disputed domain name, <villas.net>, does substantially mirror the Complainant’s registered Spanish word trademarks such as VILLAS.COM and VILLASDOTCOM. The Panel thus finds Complainant has carried its burden of proof under paragraph 4(a)(i) of the Policy.

Rights and Legitimate Interests

Complainant contends it has not given Respondent the right to use its trademarks such as VILLASDOTCOM.

The Respondent does not dispute the Complainant’s claim. Instead, Respondent contends it has been planning to use the disputed domain name in connection with its foreign travel and lodging business. However, as the Respondent admits, even though it registered the disputed domain name on January 17, 1997, it still has not used it for this purpose. Latterly, the Respondent owns to having planned to auction the disputed domain name on the Internet, or to try to sell it to the Complainant.

The Panel finds the Respondent’s plans of many years do not satisfy the requirements of the UDRP at paragraph 4(c)(i), i.e., that the Respondent show that before it learned of this dispute it was using the disputed domain for a bona fide offering of goods or services. The Panel concludes the Respondent does not have rights or legitimate interests in the disputed domain name.

Bad Faith

Complainant propounds several bases for claiming the Respondent registered and is using the disputed domain name in bad faith. Pointing out that the Respondent offered to sell the disputed domain name to the Complainant for around U.S. $35,000, the Complainant argues this is proof of bad faith under paragraph 4(b)(i) of the Policy. The Panel disagrees with the Complainant: if the Respondent had registered the disputed domain name with the intention of selling it back to the Complainant for a profit in violation of paragraph 4(b)(i) of the Policy, then the Respondent would probably have made a move before some eight (8) years had passed. Also, as we discuss below, the disputed domain name is generic (or at best descriptive of Complainant’s magazine content) and it has long been established that selling generic domain names does not as such contravene the UDRP bad faith provisions (See Asphalt Research Technology, Inc. v. National Press and Publishing, Inc., WIPO Case No. D2000-1005, November 13, 2000).

The Complainant also contends the Respondent is in bad faith under a fact pattern not enumerated in the UDRP but widely followed by UDRP Panels beginning with the Telstra case supra. Under this reasoning, the Complainant argues that its trademarks using the word “villas” are comparable in strength to the TELSTRA trademark and that the Respondent’s eight (8) years of holding but not using the disputed domain name constitutes bad faith. However, the Panel rejects this argument because the Complainant’s trademarks do not seem widely known. (See Barlow Lyde & Gilbert v. The Business Law Group, WIPO Case No. D2005-0493, June 24, 2005.)

The Complainant’s trademarks all prominently feature the word “villa” used in its generic sense of “house” or descriptively for magazine content. The Panel finds the Respondent and public in general are entitled to believe they can continue to use this word in its generic sense and register it in good faith as a domain name (cf. a case involving the domain name <motorcyclist.com> in EMAP USA, Inc. v. Dick Jurgen’s d/b/a Mobile Dick’s Cycle Clinic, WIPO Case No. D2001-0311, May 26, 2001). In the present case, this is all the more true as the Respondent is in Australia and the Complainant is a publisher in Spain. It does not appear at all that the Respondent knew anything about the Complainant and its Spanish trademarks when it registered the disputed domain name.

In conclusion, the Panel finds the Complainant has failed to show that the disputed domain name was registered and is being used in bad faith as required under paragraph 4(a)(iii) of the Policy.

Reverse Domain Name Hijacking

As has by now become all too common, the Respondent requests that the Panel make a finding of Reverse Domain Name Hijacking per paragraph 15(e) of the Rules. That is to say, the Respondent contends the Complaint was either brought in bad faith or to harass the Respondent. The Respondent contends this Complaint was brought in bad faith because the Complainant made false statements and attempted to prevent the Respondent from selling the disputed domain name to someone else.

In seeking transfer of this generic domain name, the Panel believes the Complainant, proceeding pro se, was essentially laboring under a misapprehension about the significance of genericness. The Panel does not believe the Complainant’s misapprehension should equate to a bad faith complaint and hence a finding of Reverse Domain Name Hijacking (for a concurring UDRP opinion, see Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309, July 19, 2005).

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dennis A. Foster
Sole Panelist

Dated: August 17, 2005