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Clariden Bank v. Markus Goch [2005] GENDND 347 (4 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alenda, S.A. v. Kato Hansen/Ing. E.K. Hansen

Case No. D2004-1004

1. The Parties

The Complainant is Alenda, S.A., Monforte del Cid, Alicante, Spain (“the Complainant”), represented by Gally Abogados, Spain.

The Respondent is Kato Hansen/Ing. E.K. Hansen, Monforte del Cid, Province of de Alicante, Spain (“the Respondent”), represented by Advocatfirman Delphie & Co.

2. The Domain Name and Registrar

The disputed domain name, <golfalenda.com> (“the Domain Name”), is registered with Go Daddy Software (“the Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2004. On December 1, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 1, 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 a corrective amendment to the Complaint on December 20, 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 December 23, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2004. On January 13, 2005, by email timed at 10.16 a.m. the Respondent sought an extension of time for the filing of the Response. At 4.45 p.m. the same day the Center issued a Notification of Respondent Default. The Response was filed with the Center on January 17, 2005.

The Center appointed Tony Willoughby as the Sole Panelist in this matter on January 24, 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.

Neither the Panel nor the Complainant having been in any way inconvenienced by the late filing of the Response, the Panel decided to allow it into the proceedings.

Having read the papers, the Panel concluded that it could not decide the dispute fairly without further information from the parties. On February 1, 2005, the Panel issued a procedural order in the following terms:

“The Panel has read the papers, but is unable to decide the dispute fairly without further information from both parties. Both parties’ submissions include important and relevant, but in many respects unsupported, assertions. The Panel is conscious that if the parties’ assertions are correct, the decision could be of commercial significance, whichever way it goes.

“The Panel notes, in particular, the Complainant’s references to confusion among customers and consequential lost business and the Respondent’s assertions as to the Complainant’s knowledge and approval of the Respondent’s use of the name ‘golfalenda’, both as part of an email address and as a domain name connected to a website, and the logo. No exhibits have been produced to the Panel, which support these assertions.

“Neither party has provided the Panel with any detail of the Respondent’s use of the Complainant’s logo on the Respondent’s website, which the Complainant believes to be of significance. There are still at least two uses of the Complainant’s logo on the Respondent’s website on a map featuring the resort. Are these the uses of which the Complainant complains?

“The Panel is unlikely to give much weight to unsupported assertions, nor to documents which have not been translated into (or at least summarised in) English.

“Accordingly, the parties are invited to provide to WIPO by 4.00 p.m. (Geneva time) on Monday February 7, 2005, further submissions exhibiting documentary support for their unsupported assertions and to provide responses to those submissions by 4.00 p.m. (Geneva time) on Thursday February 10, 2005. The date for provision of the Decision is put back to Monday, February 14, 2005.”

The parties filed further submissions in response to that Order. The Complainant’s submission was filed on February 6, 2005, whereas the Respondent’s was filed on February 7, 2005.

4. Factual Background

The Complainant is a Spanish company which owns a golf course and housing complex called Alenda Golf in the Spanish Municipality of Monforte del Cid.

The Complainant is the registered proprietor of a variety of service mark registrations including the following:

Country	Number	Mark	Date	Class	Services
CTM	003228376	ALENDA (word)	16.6.03	36, 39, 41	Various, including insurance, transport and education services
Spain	2489563	ALENDA GOLF (words)	7.1.03	36	Insurance services etc
Spain	2021027	ALENDA (golfer device and word combined)	29.3.96	36	Insurance services etc

The Complainant is engaged in developing the area and in selling properties and providing golf club services including golf tuition.

In conducting its real estate operation, the Complainant has from time to time offered its houses for sale through real estate agencies on a commission basis. The Respondent was one of the real estate agencies involved.

The Respondent registered the Domain Name on May 28, 2001.

The Respondent’s relationship with the Complainant broke down some time towards the end of 2003.

The only communications between the parties which have been put before the Panel have been provided by the Complainant and constitute a series of inter-party email exchanges between December 17 and December 22, 2003, and a letter in Spanish (without English translation) from the Complainant’s lawyer to the Respondent dated June 9, 2004.

In the inter-party email exchanges referred to, the Complainant complained about the Respondent’s registration of the Domain Name and the use by the Respondent of the Complainant’s logo trademark on the website. The Respondent dismissed the complaint on the basis that he had been using the website and the logo with the Complainant’s consent for over three years without complaint.

5. Parties’ Contentions

A. Complainant

The Complainant refers to its trademark registrations including those set out above and contends that the Domain Name is identical or confusingly similar to a trademark in which it has rights.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant points to the fact that it never authorized the Respondent to use its trademark for a domain name and has asked for it to be transferred, but without success.

The Complainant further contends that the Domain Name was registered and is being used in bad faith. In support the Complainant relies upon the following:

1. The Respondent knew of the Complainant’s rights in the name ALENDA when he registered the Domain Name

2. The Respondent had no permission from the Complainant to register the Domain Name

3. The Complainant has been losing business as a result of customer confusion over the identity of the vendor of property

4. The Complainant has also used without authority the Complainant’s registered logo on the website without permission

5. The likelihood of confusion was obvious to the Respondent when he registered the Domain Name; accordingly, he registered the Domain Name to disrupt the Complainant’s business.

The Complainant cites in support of its case a WIPO decision which is in Spanish and states that this is authority for the proposition that a domain name should be transferred to the Complainant where (a) the domain name in issue is very similar to the Complainant’s registered trademark (b) the Respondent has no rights or legitimate interests in respect of the Domain Name and the Respondent uses the Domain Name to exploit ‘business activities developed and registered by the Complainant’, and (c) the Respondent was aware of the Complainant’s rights.

The Complainant asserts that he has asked the Respondent on countless occasions to stop using the Domain Name, but without success. The Complainant further complains that it has been forced to register another domain name, namely <alendagolf.com>.

In its purported response to the Procedural Order the Complainant:

(a) refers to the fact that the Response was filed out of time;

(b) makes further unsupported assertions as to consumer confusion about the names. The Complainant points to the similarity of the names and states that the likelihood of confusion is obvious;

(c) attacks the quality of the Respondent’s website;

(d) accepts that the Respondent is now using the Complainant’s logo “correctly”, but with reference to an allegation in the Response denies that it ever sent the Respondent a computer file containing the logo.

B. Respondent

The Respondent disputes the validity of the Complainant’s registered rights on the basis that the name ALENDA is a place name and the word ‘golf’ is generic. The Respondent argues lack of likelihood of confusion on the basis that the parties’ target audiences are different, the Respondent’s site being in the Swedish and Norwegian languages, whereas the Complainant’s is in English and Spanish. Moreover the Respondent has experienced no instances of any confusion. The Respondent asserts that it would be plain to anyone visiting the Respondent’s site that it is not the Complainant’s site.

The Respondent also points out that many of the Complainant’s trademark registrations post date the Respondent’s registration of the Domain Name.

The Respondent contests the Complainant’s allegation that the Respondent had no licence to use the Complainant’s logo and asserts that [A.S.], a representative of the Complainant, delivered a computer file to the Respondent specifically for the purpose of enabling the Respondent to use the Complainant’s logotype on his website.

The Respondent acknowledges that he was required to remove the logotype when the parties’ business association was terminated and this he did. He goes on to observe that it is not the job of the Panel to address the issue of the Respondent’s use of the Complainant’s trademarks.

The Respondent denies that the Complainant requested the Respondent on countless occasions to stop using the Domain Name. He says that no request was made prior to termination of the business relationship.

The Respondent denies that he has no rights or legitimate interests in respect of the Domain Name. The Respondent points to the fact that his business includes the sale and rental of property in the area of Alenda and the marketing of golf in that area. The Respondent points to the association between the parties and the Respondent’s continuing interest in commercializing the developments he has purchased from the Complainant. He also points to the fact that [A.S.] regularly communicated with the Respondent at the Respondent’s email address golfalenda@[e-mail address] and made no complaint over use of ‘golfalenda’ in that context.

The Respondent argues that his use of the Domain Name is part of a genuine, fair use of the Domain Name for his business which includes the dealings with customers who rent condominiums and play golf in the Alenda area. The Respondent denies confusion or tarnishment of the Complainant’s trademarks. The Respondent further contends that as a result of his trade under the Domain Name he is now known by many of his customers by the Domain Name.

The Respondent denies that he registered the Domain Name in bad faith. He registered it for the purpose of his business of selling and renting properties in the Alenda area and offering golf services there. He claims to have used the Domain Name exclusively for that purpose. He registered the Domain Name shortly after having purchased four housing estates from the Complainant and for the purpose of selling and renting them to customers from Sweden and Norway.

The Respondent refers to the examples of bad faith registration and use set out in paragraph 4(b)(iv) of the Policy and denies that any of them applies. The Respondent did not register the Domain Name to sell it to the Complainant. The Respondent has not blocked the Complainant from registering the domain name of its choice. The Respondent has not disrupted the Complainant’s business and in any event is not a competitor. The Respondent is not aware of there having been any confusion. It would be extraordinary if there had been any given the languages of the respective sites.

In response to the Procedural Order the Respondent deals with certain matters of no relevance (e.g. the respective qualities of the sites, an issue raised by the Complainant), but more fundamentally produces no evidence of any kind to support the unsupported assertions in the Response. The stance of the Respondent is that if the Complainant’s assertions are unsupported to the satisfaction of the Panel (and the Respondent asserts that they are all unsupported), the Complaint must fail because the obligation is upon the Complainant to prove all three elements under paragraph 4(a) of the Policy.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name 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. General

In his Response to the Procedural Order the Respondent suggests that if the Complainant has failed to make out his case first time round, he should not be given the opportunity of rectifying that defect by way of a Procedural Order. The Complaint should be dismissed.

Broadly, the Panel agrees with the first part of that proposition, although there may be circumstances where it would be disproportionate to adopt that line too harshly. Equally, on that approach, a Respondent who has failed to substantiate what is said in the Response should not be given an opportunity to improve his position. In such circumstances the Complaint should succeed. The Response to the Complaint featured no exhibits of any kind. Everything in the Response was bare, unsupported assertion. As it stood, it was a nil response.

As will be seen below, the Panel is satisfied that the use of the Domain Name is likely to lead to confusion. On the basis of the original submissions the Panel would have decided the case in favour of the Complainant. However, given the nature of the Respondent’s ‘defence’ and given that the Domain Name is being used by the Respondent for a commercial site, the Panel was concerned that the Respondent should be given every opportunity to substantiate his Response to the Complaint. The Panel was reluctant to see the Respondent deprived of the Domain Name simply for failure to support his story.

Had the Respondent been able to come forward with any support for his assertion that the Complaint knew of and consented to his website and/or his email address featuring the name Golf Alenda, the Complaint would have been dismissed. As noted above, the Respondent came back with nothing of any substance in his Response to the Procedural Order.

The Procedural Order was worded as it was in order to be seen to be fair. If one party is to be provided with the indulgence of improving its case, so in fairness should the other party.

B. Identical or Confusingly Similar

The Respondent asserts that the Complainant’s service marks are or ought to be unprotectable because the word Alenda is a place name and “golf” is a generic term. However, the fact of the matter is that both ALENDA and ALENDA GOLF are registered as service marks in the name of the Complainant. It is not for the Panel to go behind those registrations.

For the purpose of assessing identity and/or confusing similarity, it is appropriate to ignore the generic domain suffix. Accordingly one is left to compare the name “golfalenda” with the Complainant’s marks ALENDA plus the device of a golfer, the name ALENDA on its own and the mark ALENDA GOLF.

Clearly, the Domain name is not identical to any of the Complainant’s service marks. However, the Panel has no hesitation in finding that the Domain Name is confusingly similar to all three of those service marks.

C. Rights or Legitimate Interests

The Panel accepts the Complainant’s assertion that the contemporaneous use of the names ALENDA GOLF and GOLF ALENDA in the same line of business is bound to lead to confusion, provided that the name ALENDA GOLF is not simply a generic description of an activity at a place called Alenda.

The Complainant has a service mark registration which supports the proposition that the term is not generic. It is not conclusive, but it certainly provides the Respondent with a case to answer. The Respondent has answered it with a bare assertion, which is not sufficient to show legitimate interests.

However, the Respondent goes on to say that confusion is not likely because once one has reached the website connected to the Domain Name it will be apparent that the website has nothing whatever to do with the Complainant. Even if factually correct (and the Panel is by no means convinced that it is factually correct), that line of argument ignores the possibility of initial interest confusion, i.e. Internet users entering “www.golfalenda.com” into the browser in the belief that they will be visiting the Complainant’s website and/or a website authorised by the owner of the trademarks ALENDA and ALENDA GOLF. By the time the visitor has reached the site, the confusion will already have occurred.

In the Panel’s view the use of this domain name, which is likely to lead to consumer confusion, cannot give rise to a bona fide use within the meaning of paragraph 4(c)(i) of the Policy UNLESS the use was authorised by the trademark owner.

The Complainant denies that any consent was given by the Complainant to the Respondent to use the name ALENDA as part of the Domain Name. The Respondent, on the other hand, asserts that the Complainant knew all about the Respondent’s website and did not start to complain until termination of the parties’ business relationship.

The Panel starts from the proposition that no trademark owner would sensibly permit a third party to register a domain name featuring his trademark and knowing that the use of that domain name will be likely to lead to confusion. The Panel notes that at that time the only registered trademark in the name of the Complainant was a device mark, but that device mark was a combination of the name ALENDA and the figure of a golfer.

The Panel finds that the Respondent has a case to answer on this point. The Respondent’s answer constitutes bare unsupported assertions as follows:

(1) “Also, due to the co-operation between the Respondent and the Complainant, the Complainant has been aware of the fact that the Respondent has registered and used the Domain Name for its marketing activities, as specified above.”

(2) “The sales representative of the Complainant, [A.S.], who acted as the main contact person for the Complainant during the relevant time, also recurrently communicated with the Respondent at the email address golfalenda@[email address].”

(3) “… during a co-operation between the parties, the Complainant (through [A.S.]) send [sic] over a computer file containing this logo type for the purpose of letting the Respondent incorporate such logo type into the website(s) made available through the Domain Name, to be used in connection with the Respondent’s part time business of marketing the goods and services of the Complainant, as described above.”

The Panel’s Procedural Order specifically invited the Respondent to support those allegations, but the Respondent elected not to do so. It ought not to have been too difficult for the Respondent to have done so. For example, as to the second of the above points, all that the Respondent had to do was to produce some of the email traffic featuring that email address. None of the papers before the Panel show that email address save for documents generated after the date of the Complaint. The email address used by the Respondent in the email exchanges exhibited to the Complaint, which took place in December 2003 between [A.S.] and the Respondent, is ekhansen@[e-mail address], not golfalenda@[e-mail address].

Given how easy it would have been for the Respondent to have produced evidence to support this contention, the Respondent cannot be surprised that the Panel finds the Respondent’s position difficult to believe and suspects that the email address golfalenda@[e-mail address] was created after the date of the Complaint and simply with a view to deceiving the Panel.

Paragraph 4(c)(ii) of the Policy provides that if the Respondent can show that he is commonly known by the Domain Name, he will have demonstrated rights or legitimate interests such as to defeat the Complaint.

The starting point for the Panel is the identification of the Respondent on the Whois database and anything else which may appear in the documentary evidence. That shows that the Respondent’s name is E.K. Hansen which is, of course, very different from the Domain Name. What evidence is there to suggest that the Respondent is known by the Domain Name? There is the golfalenda@[e-mail address] email address which, if the Respondent had produced evidence to show that it was in use between the parties at the relevant time, the Panel would have regarded as sufficient for this purpose. However, the Respondent elected not to produce any such evidence.

All that is before the Panel on this topic from the Respondent is the bare assertion that “several recurring customers of the Respondent searches [sic] and obtains [sic] information about the business offering of the Respondent directly through the web pages access through the domain name and during the course of the Respondent’s marketing of housing and golfing arrangements according to what is said here above, the Respondent has become commonly known by the customers of the Respondent in Sweden and Norway by and under the Domain Name”. One would have thought that it would have been very easy for the Respondent to have produced a statement from such a customer or correspondence of some kind demonstrating this, but no such evidence has been produced.

The Panel finds that none of the examples set out in paragraph 4(c) of the Policy of what shall constitute rights and legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy applies. The Respondent’s use of the Domain Name is inherently likely to lead to confusion; as such it cannot be said to constitute a use for the purposes of the bona fide offering of goods or services, nor can it be said to be any other kind of legitimate or fair use; nor is the Respondent commonly known by the Domain Name.

The Panel accepts that the Respondent might have a legitimate interest in using the name ALENDA GOLF to describe to his customers the goods/services he has to offer at the Alenda Golf Resort. However, that does not of itself give him a legitimate interest in respect of a domain name featuring the Complainant’s trademark, still less does it give him a legitimate interest in respect of a domain name inherently likely to lead to confusion.

Had the Respondent made good the allegation that the Complainant had permitted or acquiesced in the Respondent’s use of the Domain Name for his business, the position would have been very different, but he has not done so. Moreover, there is nothing before the Panel to suggest that that is more than a possibility.

For the avoidance of doubt the Panel agrees with the Respondent that it is for the Complainant to prove all three elements of paragraph 4(a) of the Policy. However, it is now well established that insofar as paragraph 4(a)(ii) is concerned, which involves proof of a negative, the Complainant satisfies that obligation by making out a prima facie case. This the Complainant has done. It is a case which calls for an answer and not merely an answer featuring unsupported assertions. The Respondent, despite a specific invitation to do so, declined to provide the answer.

In the result, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

Before leaving this topic, it is only right to observe that the Complainant also failed to respond to the Procedural Order by substantiating his claims of actual consumer confusion resulting in economic loss. The Panel assumes that the Complainant over-stated his case in the Complaint. However, fortunately for the Complainant, the absence of evidence of actual confusion does not prevent the Panel from making an assessment of likelihood of confusion whether by way of initial interest confusion or otherwise. Initial interest confusion is a well-recognised phenomenon and which is, in the view of the Panel, inherently likely given the close similarity of the names.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a non-exhaustive list of what constitutes bad faith registration and use of a domain name for the purposes of paragraph 4(a)(iii) of the Policy.

Clearly the Respondent did not register the Domain Name with a view to selling it (paragraph 4(b)(i)) nor did he register it in order to block the Complainant (paragraph 4(b)(ii)). In the Complaint it is suggested that the Respondent’s registration of the Domain Name forced the Complainant to register <alendagolf.com>. The Panel dismisses that suggestion as fanciful. The Complainant’s chosen domain name, <alendagolf.com>, was the domain name which coincided with its service mark.

The Complainant asserts that the Respondent registered the Domain Name in order to disrupt the business of the Complainant. The Complainant points to the confusion. It points to the Respondent’s knowledge of the Complainant’s service mark at the time that the Domain Name was registered and it claims that the Respondent, when registering the Domain Name, must have known of the financial damage that the Respondent would cause to the Complainant “by misappropriating a distinctive sign of the company in order to wrongfully obtain a commercial gain”. In the result the basis for the Complaint really lies under paragraph 4(b)(iv) of the Policy which reads:

“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online 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.”

The Respondent registered the Domain Name knowing and intending that it should represent the name of the Complainant’s complex and the Complainant’s registered service mark (then the device of a golfer in combination with the name ALENDA) in order to connect it to a website associated with his business. The issue is whether he did it ‘innocently’ unaware of the potential for confusion and simply in order to exploit his business opportunities at or around the Complainant’s resort or whether he did it in full knowledge of the potential for confusion and with a view to capitalizing on it.

The Panel was ready and willing to accept, if it could be shown, that contrary to the Complainant’s assertion, the Respondent did have the consent of the Complainant to register the Domain Name and/or that, contrary to the assertion of the Complainant, the Complainant knew of the existence of the Domain Name and the website to which it was attached and consented to it. However, that needed to be shown and one would have thought that it could so easily have been shown. Despite a clear invitation to produce something in support, the Respondent declined to accept that invitation.

The Panel is left to conclude that the Respondent knew perfectly well that the Complainant did not know of the website and did not consent to the use of the Domain Name and that the Respondent’s story in that regard is not to be relied upon.

That being so, it is not difficult for the Panel to conclude that the Respondent registered the Domain Name and is using it in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

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 name, <golfalenda.com>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist

Dated: February 14, 2005