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PepsiCo, Inc. v. Kieran McGarry [2005] GENDND 647 (5 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Automóviles de Luarca, S.A. v. NUCOM, Domain Name Brokers

Case No. D2005-0282

1. The Parties

The Complainant is Automóviles de Luarca, S.A., Gijón, Spain, represented by Ernst & Young Abogados S.L., Madrid, Spain.

The Respondent is NUCOM, Domain Name Brokers, Inverness, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <alsa.com> (‘Disputed Domain Name’) is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2005. On March 22, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On April 11, 2005, iHoldings.com Inc. d/b/a DotRegistrar.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 April 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2005. The Response was filed with the Center on April 21, 2005.

The Center appointed Hub. J. Harmeling as the Sole Panelist in this matter on May 13, 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, Automóviles de Luarca, S.A., a company incorporated under the laws of Spain, holds rights in ALSA (Spanish commercial name) and A.L.S.A. (Spanish trademark). In 1996, the Complainant registered the domain name <alsa.es>.

The Respondent, NUCOM, Domain Name Brokers, of Inverness, UK, registered the disputed domain name <alsa.com> on January 31, 1999.

5. Parties’ Contentions

A. Complainant

First, the Complainant asserts that the disputed domain name is identical to the Complainant’s ALSA mark. See Policy, paragraph 4(a)(i). The Complainant contends that ALSA is well-known internationally, specifically in the European Union, and that the Complainant is commonly referred to by that acronym. Without submitting supporting documents or further specification, the Complainant states that it has obtained “some Community Trademarks and International Trademarks” for this acronym. The Complainant states that ALSA is one of the most well-known Spanish trademarks. In this respect, the Complainant refers to a study carried out by an independent agency attached to the Spanish Ministry of Economy and Finance. Finally, the Complainant states that it is a “pioneer” in the use of the Internet in Spain, as it registered the domain name <alsa.es.> on September 17, 1996, while the opportunity to do so arose only one month earlier, on August 1, 1996.

Second, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Policy, paragraph 4(a)(ii). The Complainant states that the Respondent has no prior rights in or registered trademarks for ALSA and has never been known by the disputed domain name. According to the Complainant, the Respondent does not use the disputed domain name for any legitimate non-commercial or fair use without intent for commercial gain. Nor, asserts the Complainant, has the Respondent used, or demonstrably made preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.

Finally, the Complainant argues that the disputed domain name was registered and is being used in bad faith. See Policy, paragraph 4(a)(iii). Referring to a statement made in the Whois database to the effect that the disputed domain name might still be available, and to what the Complainant regards as the suspicious contact details of the Respondent, the Complainant contends that the Respondent acquired the disputed domain name primarily for the purposes of selling or leasing it for valuable consideration in excess of its out-of-pockets costs. In support of that allegation, the Complainant submits evidence that the disputed domain name resolves not to a functioning website but to an announcement that the disputed domain name is available for sale. Furthermore, the Complainant argues that the Respondent set “exorbitant” prices for leasing or selling the disputed domain name when the cost of domain name registration and annual renewal fees are taken into account. E-mail correspondence attached to the Complaint shows that as in January 2004, in response to an inquiry from the Complainant’s counsel, the Respondent said that the disputed domain name could be purchased for 199,950 United States dollars or leased for 3,999 United States dollars per month. The Complainant also argues that since the disputed domain name was registered more than three years after the Complainant registered <alsa.es>, the Respondent could in the meantime have become aware of the fame of the Complainant’s trademark or at least have known about the Complainant’s business.

B. Respondent

The Respondent contends that the Complainant has no worldwide trademark in or rights to the exclusive use of the ALSA name, in part because the Complainant’s business is confined to a limited number of countries. According to the Respondent, “hundreds of thousands of different organizations, people and other entities” share those initials, and the Complainant is not even the most famous among them. The Respondent provides a list of 40 domain names registered by many different organizations, all consisting of the letters “alsa” and a top-level domain name (e.g., <alsa.net> and <alsa.cz>) and argues that there is nothing unique about the Complainant’s registration of <alsa.es>. Emphasizing its argument that the Complainant is not the most well-known company among those using the term “alsa”the Respondent says that the Complainants’ website appears only ninth on the list when “alsa” is used as a search term on Yahoo, and that five of the websites ranked above it are related to “Advanced Linux Sound Architecture.” According to the Respondent, this system is used by thousands of computer programmers worldwide, one of whom is currently leasing the disputed domain name.¹ Furthermore, the Respondent claims to have received more than 300 inquiries concerning the disputed domain name, the “vast majority” of which came from parties independent of the Complainant.

The Respondent says that it registered the disputed domain name six years ago because of its short and desirable combination of only four common letters, which made it “a highly marketable domain name with many different possible end users.” The Respondent claims that it did not know of the Complainant’s existence until the latter made inquiries about acquiring the disputed domain name from the Respondent in 2003. As the Respondent did not know about the Complainant’s existence at the time of registration, the disputed domain name was not registered in bad faith. Nor, according to the Respondent, has it been used in bad faith, as the leasing or reselling of valuable generic or highly popular domain names does not in itself constitute bad faith. According to the Respondent, the business of leasing or reselling desirable domain names is performed by many large companies, a contention the Respondent supports by referring to a website that provides an overview of high-value domain name sales. Also, the Respondent emphasizes that the Complainant approached it, and that the Respondent never made any unsolicited approach to the Complainant. The Respondent asserts that the Complainant must be aware that there are many other “end users” who would be interested in the disputed domain name and that the Complainant probably commenced this proceeding in order to obtain the disputed domain name at a price below its fair market value.

6. Discussion and Findings

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

(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 disputed domain name has been registered and is being used in bad faith.

The Complainant carries the burden of proof on each of these elements, see Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (August 21, 2000), and they will be examined in turn below.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has protected rights in the ALSA mark. Previous panels have established that registration of a mark, irrespective of where it is registered, gives a complainant rights in the mark within the meaning of Policy, paragraph 4(a)(i). 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 (July 16, 2002); Bennett Coleman & Co. Ltd. v. Steven S. Lalwani, WIPO Case No. D2000-0015 (March 11, 2000).

Since the disputed domain name is identical to a mark in which the Complainant holds rights (putting aside the .com TLD), the Panel finds the first element to be established.

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent: (1) has no prior rights or registered trademarks in the ALSA mark; (2) has never been known by the disputed domain name; (3) does not use (and has not prepared to use) the disputed domain name for the bona fide offering of goods and services (the offering of the disputed domain name itself for sale or lease apparently not being “legitimate” according to the Complainant); and (4) has not made any legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain. 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 therefore bears 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 (June 7, 2004).

The Respondent does not explicitly claim to have a legitimate interest, nor does it refer to any of the “safe harbors” of paragraph 4(c) of the Policy. Its main argument is directed to the third element of the Policy, namely bad faith. In the interests of completeness and clarity, however, the Panel notes that the thrust of the Respondent’s argument – that there is nothing wrong with dealing for profit in domain names that have “many possible end users” – could be regarded as implicitly claiming that such dealing constitutes a legitimate interest in the domain names offered for sale. There is some support for the position that domain name dealers have a legitimate interest in descriptive, generic, or acronymic domain names that they offer for sale, and some authority to the contrary. This Panel notes that even if the reselling of this type of domain name constitutes a legitimate interest, the Complainant still must establish the Respondent’s bad faith. On the specific facts of this case, it has failed to do so, as will be explained in the following section.

C. Registered and Used in Bad Faith

Prior decisions establish that the fact that the Respondent is a domain name broker does not ipso facto mean that its registration and use of the disputed domain name has been in bad faith. See, e.g., University of Maryland University College v. NUCOM Domain Brokers & Urban Music Underground Club, WIPO Case No. D2002-0081 (April 29, 2002) (<umuc.com>). The Complainant therefore must go beyond proving that the Respondent is a domain name broker. Paragraph 4(b) of the Policy mentions four circumstances that constitute evidence that the registration and use of the disputed domain name had been in bad faith. Both the Complainant and the Respondent focus on paragraph 4(b)(i), so the Panel will also direct its attention to that paragraph.

Under that paragraph, the Complainant must show

circumstances indicating that you [the 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.

(emphasis added). The Respondent admits that its purpose in registering the disputed domain name was indeed selling or leasing it to others for a profit. It argues, however, that because it did not know of the Complainant’s existence or make an unsolicited offer to sell the disputed domain name to the Complainant, it did not act in bad faith. The italicized words in the Policy, taken literally, support the Respondent’s position, at least insofar as paragraph 4(b)(i) is concerned.

This consideration raises the question whether the Policy is intended to distinguish between a respondent who targets a particular trademark holder and one who registers a domain name that he suspects will be “of interest” to many businesses, at least some of which will presumably have protected rights in similar marks. After considering the nearly unanimous views expressed by previous panels, the Panel concludes that the circumstances of this case do not demonstrate bad faith within the meaning of the Policy.

First, the Panel finds that the Complainant has failed to show that the Respondent knew of the Complainant’s existence when it registered the disputed domain name. The disputed domain name is a combination of four letters that might be – and apparently is – used by many organizations in many countries. Although the Respondent might be one of the best-known companies in Spain, that does not prove that the Respondent in Scotland knew or should be deemed to have known of the Complainant and its ALSA mark. The report submitted by the Complainant does not mention the nationality of the people who were surveyed, and the study reveals that spontaneous recognition of Spanish brands is weak in other countries. The Complainant mentions that it has acquired European and international trademarks but submits no supporting evidence. Finally, the Respondent has shown that many parties use ALSA in their public activities, and there is nothing in the record to show that Respondent was more likely to know of the Complainant than any of those other parties.

Still, it could be argued that by registering this simple four-letter combination for (as the Respondent admits) the very reason that many “possible end users” use that combination as an acronym for business and other activities, the Respondent has violated the rights of all of the entities that have cognizable interests in the ALSA mark. That position has not been taken by the majority of previous WIPO UDRP panels. Besides the <vz.com> and <umuc.com> cases cited previously, the respondent also prevailed in a dispute over <kcts.com>. See KCTS Television Inc. v. Get-on-the-Web Limited, WIPO Case No. D2001-0154 (April 20, 2001). The Panel has found no prior decisions taking the contrary view, at least not explicitly. In a dispute over <rbconline.com>, the panel noted in the “Parties’ Contentions” section of the decision the Respondent’s argument that thousands of companies shared the initials “RBC,” but the panel did not address that argument in the “Discussion and Findings” section of the decision. See Royal Bank of Canada v. Namegiant.com, WIPO Case No. D2004-0642 (September 21, 2004). Another panel two weeks ago ordered the transfer of <itil.com>. In that case, however, the respondent failed to file a response, and the panel credited the complainant’s evidence that its mark had achieved worldwide prominence in the very industry in which the respondent apparently functioned. See The Lords Commissioners of Her Majesty’s Treasury v. ITIL International, WIPO Case No. D2005-0230 (May 10, 2005). Indeed, that panel was presided over by the same learned chairman who presided in the <umuc.com>, <vz.com>, and <kcts.com> cases, reinforcing the point that the circumstances in the <itil.com> case were exceptional. In the present case, as previously discussed, there are no such circumstances, as the Complainant has not shown any likelihood that the Respondent was aware of its existence.

Accordingly, the Panel does not find that the Complainant has proven registration and use of the disputed domain name in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Hub J. Harmeling
Sole Panelist

Dated: June 9, 2005