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Caprabo, S.A. v. Business Centre [2005] GENDND 419 (2 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caprabo, S.A. v. Business Centre

Case No. D2005-0262

1. The Parties

The Complainant is Caprabo, S.A., Barcelona, Spain, represented by March & Asociados, Spain.

The Respondent is Business Centre, Corydon, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2005. On March 14, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On March 14, 2005, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 March 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2005.

The Center appointed Dr. Luca Barbero as the Sole Panelist in this matter on April 14, 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 Complaint is based on the Spanish Trademark No. 995.049 “CAPRABO” in class 35; Spanish Trademark No. 2,477,836 “CAPRABO” in class 35; Spanish Trademark No. 2,477,837 “CAPRABO” in class 39; Spanish Trademark No. 1,106,972 “CAPRABO” in class 38; International Trademark No. 806.334 “CAPRABO” in classes 35 and 39 extended to France, Morocco and Portugal.

The Respondent registered the domain name on December 29, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant is a company created in 1959 and is presently rated the third company of national capital in food products distribution in Spain. The Complainant is the owner of more than 600 commercial establishments and 32 fuel stations identified as CAPRABO. There are more than 19,000 workers in Spain and has a turnover of about 30 million Euros.

The Complainant is the owner of Spanish Trademark No. 995.049 “CAPRABO” in class 35, filed on January 1, 1982, and granted on September 2, 1982; Spanish Trademark No. 2,477,836 “CAPRABO” in class 35, filed on May 23, 2002, and granted on November 20, 2002; Spanish Trademark No. 2,477,837 “CAPRABO” in class 39, filed on May 23, 2002, and granted on November 20, 2002; Spanish Trademark No. 1,106,972 “CAPRABO” in class 38, filed on May 28, 1985, and granted on January 2, 1986; International Trademark No. 806,334 “CAPRABO” in classes 35 and 39, filed on November 25, 2002, and granted on march 28, 2003, being currently in force in France, Morocco and Portugal.

The Complainant attached to the Complaint copies of the official record documents of the trademarks.

The Complainant is the owner, amongst others, of the following domain names:

“<caprabo.com>, <caprabo.net>, <caprabo.info>, <capraboacasa.com>, <caprabo.es>, <capraboacasa.net>, <capraboacasa.info> and <capraboacasa.es>.

“The Complainant points out that the company name is CAPRABO, S.A and that the disputed domain name <caprabosa.com> “is identical from the denominative and phonetic point of view to the trademarks “CAPRABO” and coincides in all its wording with the company name of the Complainant CAPRABO S.A. highlighting that the consumer will surely be confused”.

With reference to the issue of rights or legitimate interests in respect of the disputed domain name, the Complainant indicates that “the Respondent is identified as a building center and this representation has no prove that anyone, besides the Complainant, neither posses any trademark “CAPRABO” or “CAPRABOSA” or use the same as company name, being commonly known by the same nor that a name corresponding to the domain name has been use with a bona fide of goods or services”.

Addressing the issue of the registration and use in bad faith, the Complainant indicates that it became aware mid-January 2005 of the existence of the registration on December 29, 2004 for <caprabosa.com, as a result of several contacts from Spanish companies.

The Complainant attached to the Complaint a notarized document attesting the contents of the website published at “www.caprabosa.com” where a supposed company which was identified as “Caprabo Ordenadores, S.A.” was offering computer products online and purchasing computer parts.

From this document it appears evident that the Respondent was using the name and the logo of the Complainant in the mentioned website. Moreover, the Complainant received claims from companies which distribute computer products as they thought that they were selling to the Complainant; the Respondent was in fact using the identification number of Caprabo, S.A, forging official documents in order to prove the identity of the two subjects.

The Complainant indicates that the Respondent on January 11, 2005, placed an order to the company CDC AUGUSTA, S.L for the amount of 67,283.69 euros. This company requested the Respondent to provide the identification number of the company in order to incorporate them as client and received a falsified record of the IAE containing the company identification number of the Complainant, together with a copy of a falsified bank transfer made for the amount of 67,283.69 euros, which was never transferred. Notarized copied of these documents and their translations into English are attached to the Complaint.

The Complainant concludes that the Respondent has intentionally attempted to attract for commercial gain, Internet users to its website, by creating a likelihood of confusion and also that such domain name registration prevents the Complainant from using the disputed domain name; therefore the domain name was registered and is used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

6.1. Domain Name Identical or Confusingly Similar

The Complainant has provided evidence of ownership of the trademark registration for CAPRABO.

It is well established in prior decisions that “when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words”. Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“chart”, “music”, “arena”, “sweep”, “nfl” and “coliseum” added to PEPSI mark); Experian Information Solutions Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 (“credit” added to EXPERIAN mark); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“parts” added to OKIDATA mark); Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (“buildingsociety” added to BRITANNIA mark); Chanel Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (“chanelstore” and “chanelfashion” found to be confusingly similar to the CHANEL mark).

In the present case, the only difference with the registered trademark is the addition of “SA” characterazing the nature of Complainant’s company and therefore the domain name <caprabosa.com> is also identical to Complainant’s company name. The Panel finds that the addition of the acronym of the company type to a registered trademark is certainly not sufficient to exclude the confusing similarity of the domain name, in particular if the resulting domain name is also identical to the company name of the Complainant.

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademarks of the Complainant in accordance with paragraph 4(a)(i) of the Policy.

6.2. Rights and Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

(a) that he has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute; or

(b) that he is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) that he intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

Furthermore, there is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainant’s trademark and name under any circumstance.

The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordancewith paragraph 4(a)(ii) of the Policy.

6.3. Registration and Use in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s 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 the holder’s website or location or of a product or service on the holder’s website or location.

As to the use and registration in bad faith, the Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation and endorsement of Respondent’s services.

The Respondent has indeed reproduced the Complainant’s logo and lettering of the registered trademark and published it at the online location corresponding to <caprabosa.com>. With reference to the use of a domain name to ingenerate confusion with competing activities see Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”); Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (“Respondent’s registration and continued use of the contested domain name for re-directing Internet users, i.e., particularly customers and potential customers of the Complainant from the Complainant’s website to the website of Bestnet, Inc., a company which directly competes with the Complainant, constitutes bad faith and use.”); Marriott International, Inc. v. Vladimir Kyznetsov, National Arbitration Forum Case No. FA95648 (October 24, 2000) (bad faith where respondent registered the domain name <marriottrewards.com> and used it to route Internet traffic to another website that “promotes travel and hotel services . . . identical to the services offered by the Complainant”).

Furthermore, the Panel finds that the falsified documents containing the company identification number of the Complainant and the copy of a falsified bank transfer made for the amount of 67,283.69 euros are to be considered additional circumstances evidencing the bad faith of the Respondent.

In view of the above, the Panel finds that the Respondent registered and used the Domain Name in bad faith, in accordancewith paragraph 4(a)(iii) of the Policy.

7. Decision

In light of the foregoing, the Panel decides that a) the Domain Name registered by the Respondent is confusingly similar to the Complainant’s trademarks, that b) the Respondent has no rights or legitimate interests in respect of the Domain Name and c) that the Domain Name has been registered and used in bad faith.

Accordingly, the Panel requires that the registration of the domain name <caprabosa.com > be transferred to the Complainant.

Luca Barbero
Sole Panelist

Dated: May 2, 2005