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Arizona Leather Co. v. Chris Frank [2005] GENDND 503 (8 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

B and J García, S.L., Arnedo, Spain v. Gorila

Case No. D2004-1071

1. The Parties

The Complainant is B and J García, S.L., Arnedo, Spain, represented by Javier Sáenz, Arsys Internet, S.L., La Rioja, Spain.

The Respondent is Gorila, Agoura Hills, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name is <gorila.com>. It is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2004.

On December 17, 2004, the Center transmitted by e-mail to Go Daddy a request for registrar verification in connection with the domain name at issue. On December 17, 2004, Go Daddy transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and billing contacts. Go Daddy also confirmed that the language of the registration agreement is English. 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 “Supplement 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 January 6, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2005. The Respondent filed a Response with the Center on January 26, 2005.

The Center appointed Fabrizio La Spada as the Sole Panelist in this matter on February 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 Complainant is a company which started its operations in 1992. The purpose of the company, as recorded in the Spanish Register of Companies, is to buy and sell property.

The Complainant is the owner of several trademarks consisting of the word GORILA, registered in Spain, as community trademarks or on the international register. In particular, the Complainant is the owner of the following trademarks (amongst others):

Word mark GORILA, No. 0146597, registered in Spain (filing date: October 19, 1943, last renewed on May 30, 1985) in international class 25.

Word trademark GORILA, N° 001863844, registered as community trademark (filing date: September 21, 2000; registration issued on November 5, 2001) in international classes 10, 18 and 25 for, amongst other products, clothing, footwear, in particular footwear with rubber soles, headgear.

Word trademark GORILA, N° 581555, registered in the international register, based in Spain with designations of Benelux, Switzerland, Germany, France, Italy, Portugal, Russia (registration date: February 10, 1992) in international class 25.

The claimant is also the owner of several domain names, including <gorila.es>, <gorila.info>, <gorila.net>, <gorila.org> and <gorila.biz>.

The Complainant’s trademarks GORILA are used by the Complainant and its group companies in Spain and other countries in connection with products in the shoe industry.

The Respondent, “GORILA”, is an individual named Karim Yomtobian, also doing business as Movie Name. Mr. Yomtobian registered the domain name on May 20, 1998. The registrant’s name changed several times between 1998 and the date of filing of the complaint. On April 8, 2003, the registrant was “movie name inc.”. On December 2, 2003, the registrant was “Success inc.”. On May 11, 2004, the registrant was “Malibu TV (For Sale Domain $12500)”. Finally, at the time of filing of the complaint in the present proceedings, the registrant’s name was “GORILA”.

Despite these numerous changes, the Respondent stated in its response that he has been personally using the domain name since 1998.

The domain name is active and resolves to an Internet website on which the Respondent presents a general list of Internet links, in several categories, such as “cheap flights”, “skate”, “cheap air tickets”, “gorilla”, etc.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the domain name is “completely identical” to the name GORILA, registered as Spanish, community and international trademarks by the Complainant. It also mentions that, according to several prior panel’s decisions, Internet users can reasonably expect to find a company’s or trademark’s website at the domain names which coincide with these names.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name. In this respect, the Complainant alleges that the Respondent does not own any trademark registration under the name GORILA. It also states that the Respondent has no relation or connection with the name GORILA and does not make any commercial or non-commercial fair use of this name.

Finally, the Complainant submits that the domain name was registered and is being used in bad faith. To support this allegation, the Complainant mentions the following main points:

On April 8, 2003, the registrant of the domain name was “movie name inc.”, which is a well-known company devoted to registration and holding of domains in bulk for subsequent sale to the owners of the trademarks corresponding to such domain names. The Complainant cites several prior decisions issued under the UDRP procedure, which ordered the transfer of domain names owned by “movie name”. Respondents in the cases cited by the Complainant were: movie name company, Yomtobian enterprises Inc., and Sayed Yomtobian.

On May 11, 2004, the registrant of the domain name was “Malibu TV (For Sale Domain $12500)”. The Complainant alleges that this registrant as well as the administrative contact have had long-standing cyber-squatting activities.

The web page to which the domain name resolves is a fake web page, automatically created by a service provider named “domainsponsor.com”.

The lack of rights and legitimate interests on the part of the Respondent necessarily implies bad faith in the registration and use of the domain name, since the real purpose of the Respondent is to sell the domain. In addition, according to the Complainant, there is a pattern of bad faith registration and speculation with domain names.

Finally, the Complainant contends that the Respondent should have known the existence of the Complainant trademarks when he registered the domain name.

The Complainant seeks the transfer of the domain name.

B. Respondent

The Respondent explains that he has owned the domain name since June 1998 and that, during the past seven years, he has attempted to use the domain name in good faith and in accordance with legitimate business practices for a news information website. The Respondent alleges that it has long-term plans of creating a documentary movie with the name GORILA.

The Respondent also points out that the Complainant has not complained about its use of the website for seven years, which has to be viewed as a waiver of its rights by the Complainant.

In addition, the Respondent submits the following points:

The Complainant’s trademark is not a US trademark and may be valid, if at all, only in Spain. On this basis, the Respondent expresses doubts that such a foreign trademark could infringe upon its own rights in the United States.

According to the Respondent, the connection between the domain name and Complainant’s trademarks is a mere coincidence and was not initiated by the Respondent to take or steal away any business from the Complainant.

The Complainant has not alleged that it is the holder of a trademark for the terms “gorila.com”.

The Complainant owns and operates the website “www.gorila.es”. However, it does not operate an on-line business, since the “www.gorila.es” website is only a one-page index with no products for sale.

The Respondent has not attempted to intentionally attract unsuspecting Internet users to his website for commercial gain and the Complainant has not offered any evidence to substantiate its argument of bad faith.

The Respondent states that it has not received any complaints from the Complainant that any of its users were mistakenly directed to the Respondent’s website.

Finally, the Respondent states that it has never attempted to offer the domain name for sale above its costs.

On this basis, the Respondent requests that the complaint be dismissed.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A); and

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section B); and

3. The domain name has been registered and is being used in bad faith (see below, section C).

Paragraph 4(a) in fine of the Policy states that the burden of proving that all these elements are present lies with the Complainant.

A. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As regards the first question, the Complainant has provided satisfactory evidence, in the form of electronic excerpts of trademark registrars issued by the Spanish Oficina Española de Patentes y Marcas, the Office of the European Union trademarks and Designs, and the World Intellectual Property Organization that it is the owner of several trademarks, registered as Spanish, Community and international trademarks, consisting of the word GORILA.

As to the second question, the Panel finds that the domain name is identical to the Complainant’s GORILA trademarks. When comparing a domain name and a trademark, the panel must focus on the second-level domain (in this case “gorila”) and disregard the first-level domain (in this case “.com”), which has no distinctive character (see, e.g., Segway LLC v. Chris Hoffman, WIPO Case No. D2005-0023; see also The Forward Association, Inc., v. Enterprises Unlimited, NAF Case No. FA0008000095491). Here, the relevant part of the domain name is identical to the Complainant’s word marks.

The Respondent’s submission that the Complainant does not own any US trademark and, therefore, the domain name is not identical to a trademark in which the Complainant has rights must be dismissed. Indeed, there is no requirement under paragraph 4(a) of the Policy that the Complainant’s trademark be registered in the same country in which the Respondent is domiciled.

Finally, the Respondent submitted in his response that, by not filing proceedings earlier, the Complainant waived its right to seek relief under the UDRP. However, there is no provision in the Policy to the effect that a Complainant’s rights are waived after the expiration of a certain time limit.

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

B. Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in the domain name.

It is notoriously difficult for a complainant to prove such a negative fact. Consequently, Panels have required complainants to establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the respondent to rebut the presumption of absence of rights or legitimate interests (see, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070).

According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable 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; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

On the basis of the statements and documents submitted, the Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the domain name, for the following reasons.

First, there is no evidence on record that, before notice of the dispute, the Respondent has used or prepared to use the domain name in connection with a bona fide offering of goods or services. As a matter of fact, no goods or services are offered by the Respondent under the name GORILA. Although services are offered in the form of a directory of Internet links, the services do not correspond to a bona fide offering by the Respondent. Indeed, the domain name is only used as a link to a generic directory, which is generated automatically by “domainsponsor.com”, as evidenced by the automatic rerouting appearing as URL for the Respondent’s website. In this respect, there is no allegation or evidence that the links contained on the website are related to the Respondent or to the GORILA name.

The Respondent alleged in his Response that he intended to create and operate “a good faith and legitimate news information website at ‘gorila.com’” and that it has long term plans of creating a documentary movie with the name gorila, or “gorila.com”.

As ruled by other panels, what evidence is sufficient to constitute proof of demonstrable preparations to use a domain name will of course depend on the particular circumstances of each case and will vary from case to case. Clearly, it is not necessary to show a fully operational business, for it is sufficient if the steps taken are only preparations. At the other end of the scale, an idea without any real preparations to put the idea into practice cannot be sufficient. At the very least, there must be preparations, even if those preparations were ‘perfunctory’, meaning superficial or mechanical (see DigiPoll Ltd. v. Raj Kumar, WIPO Case No. D2004-0939; Donvand Limited trading as Gullivers Travel Associates v. Gullivers Travel/Gulliver’s Travel Services, Gullivers Travel Agency and Metin Altun/GTA, WIPO Case No. D2004-0741).

In the present case, the Respondent has not provided any evidence of any preparations to use the domain name, even though he registered the domain name in 1998, i.e. almost seven years ago. On the basis of the record, the only tangible preparation to use would be the registration of the domain name itself. However, it is well established that the mere registration of a domain name cannot establish any rights or legitimate interests in it (see Studio Peyo S.A., International Merchandising Promotion and Services (I.M.P.S.) v. WWProductions, WIPO Case No. D2004-0768).

In addition, there is no evidence on record that the Respondent was at any time commonly known by the domain name.

Finally, there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. On the contrary, the domain name is currently used in connection with a generic directory of commercial Internet links.

In accordance with the elements set out above, the Panel finds that the Respondent has no rights nor legitimate interests in respect of the domain name.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, Complainant must prove that the domain name was registered and is being used in bad faith by the Respondent. Paragraph 4(b) of the Policy sets out four circumstances which shall be evidence of the registration and use of a domain name in bad faith. These four criteria are nonexclusive (BolognaFiere S.p.A. v. Bonopera Daniele, WIPO Case No. D2003-0295).

Paragraph 4(b)(i) and (iv) provide as instances of registration and use in bad faith circumstances indicating that:

“(i) […] you [Respondent] have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

[…]

(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line 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.”

In the present case, the Complainant has produced evidence that, before adopting the name GORILA as registrant, the Respondent listed as registrant of the domain name the entity “Malibu TV (For Sale Domain $ 12500)”. The panel considers that this is sufficient to show that the Respondent has registered or acquired the domain name primarily for the purpose of selling it to the trademark owner or a competitor for valuable consideration in excess of its out-of-pocket costs (see, e.g., Hewlett-Packard Company v. Movie Name Company, NAF Case No. FA0108000099087; Microsoft Corp. v. Amit Mehrota, WIPO Case No. D2000-0053).

In addition, by using the domain name <gorila.com>, the Respondent obviously attracted consumers seeking the Complainant’s official website to a website that did not correspond to their expectations, and from which they could be diverted to on-line locations without any relation whatsoever with the Complainant. In other words, the Respondent attempted to misleadingly divert Internet traffic that was initially intended for the Complainant and to profit from such traffic (on this kind of bad faith behavior, see WIPO Case No. D2001-0193 Microsoft Corporation v. Mindkind).

The Panel therefore finds that the domain has been registered and is being used in bad faith.

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, <gorila.com>, be transferred to the Complainant.

Fabrizio La Spada
Sole Panelist

Dated: March 4, 2005