The Complainant is Generalitat de Catalunya of Barcelona, Spain, represented by Nominalia Internet, S.L. of Barcelona, Spain.
The Respondent is Hello Domain of New York, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <generalitatdecatalunya.com> is registered with
Melbourne IT trading as Internet Name Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2005. On January 5, 2005, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On January 6, 2005, Melbourne IT trading as Internet Name Worldwide 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 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 January 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 25, 2005.
The Center appointed Nathalie Dreyfus as the sole
panelist in this matter on March 4, 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 the Government of the Autonomous Community of Catalonia (Catalunya). The Autonomous Community of Catalonia forms part of the Territorial Organization of the Spanish State in accordance with article 137 of the Spanish Constitution, and is recognised and governed by the Statute of Autonomy of Catalonia, approved by the Spanish Organic Law 4/1979 of 18 December.
The name, GENERALITAT DE CATALUNYA is the official name to designate the Government of the Comunidad Autonoma (Autonomous Region or Community) of Catalonia, in fact the name GENERALITAT DE CATALUNYA has been used for seven hundred years to identify the executive organisation created by the General Parliament of the Confederation of the Catalonia-Aragon Crown.
The Government of Autonomous Community of Catalunya, by using the name GENERALITAT DE CATALUNYA, is engaged in large advertising campaigns in the media, including newspapers, television and magazines in order to promote its services to the citizens.
On the other hand, the Catalan Government also uses this name to promote its tourism industry, all over Spain and in other countries.
The Complainant does not own any registered trademark.
Generalitat of Catalonia is the registrant of the following second level domain names, under the name GENERALITAT DE CATALUNYA: <generalitatdecatalunya.net>, <generalitatdecatalunya.org>, <generalitatdecatalunya.biz>, <generalitatdecatalunya.info>.
The Complainant provided evidence of said domain name
registrations.
5. Parties’ Contentions
A. Complainant
The Catalan Government uses this name in large advertising campaigns in the media, including newspapers, television and magazines in order to promote its services to the citizens and also to promote its tourism industry, all over Spain and in other countries.
For all these reasons, the name GENERALITAT DE CATALUNYA, has acquired the
status of well-known mark, according to several UDRP decisions (Generalitat
de Catalunya v. Luis Toribio Troyano, WIPO
Case No. D2003-1004, <generalitatdecatalunya.net>; Generalitat
de Catalunya v.Thomas Wolf, Wolf Domains, WIPO
Case No. D2002-1124, <generalitatdecatalunya.info> and <gencat.info>).
In both cases, it has been proved that the name GENERALITAT DE CATALUNYA effectively performs the function of a trademark and constitutes a well-known one.
The domain name in dispute <generalitatdecatalunya.com> is identical to the mark GENERALITAT DE CATALUNYA because the relevant part of the domain name is “generalitatdecatalunya”, without taking into account the term “.com” corresponding to the first level generic domain.
The Respondent has neither used nor made demonstrable preparations to use the domain name <generalitatdecatalunya.com> in connection with a bona fide offering of goods or services.
The Respondent is not referred to or commonly known by the disputed domain name.
Finally, it is evident that the Respondent is not making a legitimate, non-commercial, or fair use of the disputed domain name; on the contrary, the Respondent is using the domain name <generalitatdecatalunya.com> to confuse and divert Internet users to a travel agency web page, and simultaneously is tarnishing the Complainant’s trademark.
The Complainant is convinced that the Respondent, at the time of registration, was aware of the mark GENERALITAT OF CATALONIA, and was not unaware that behind the name GENERALITAT DE CATALUNYA is found the Government of the Generalitat of Catalonia.
The use of the domain name has, according to the Complainant, been done unscrupulously and with the expectation of benefitting from the reputation of the aforesaid name. As in accordance with the criteria established in paragraph 4(b)(iv) of the Policy, the Complainant states that the Respondent has attempted to attract, for commercial gain, Internet users to its website thus creating a likelihood of confusion with the Complainant´s famous name and trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and of products or services on that website.
For all the above reasons, the Complainant requests the transfer of the domain name.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions and is therefore in default.
6. Discussion and Findings
According to Paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trade mark 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 used in bad faith.
A. Identical or Confusingly Similar
According to paragraph 4(a)(i) of the Policy, the first circumstance that must be established is that the Domain Name be considered identical or confusingly similar to the GENERALITAT DE CATALUNYA mark in which the Complainant holds rights.
First, it has to be determined whether the Complainant has trademark rights
in the name in order to allow it to initiate the present procedure. The Panel
finds that previous UDRP decisions regarding GENERALITAT DE CATALUNYA have duly
established the Complainant’s rights (see Generalitat de Catalunya
v. Thomas Wolf, Wolf Domains, WIPO Case
No. D2002-1124; and Generalitat deCatalunya v. Luis Toribio Troyano,WIPO Case No. D2003-1004). The test applied
to distinguish protected trademarks of this kind from those which are non protectible
bears reference to whether the mark, by its use, has acquired distinctiveness
so as to distinguish the goods or services of one enterprise from those of another.
It is accepted that the Complainant in this case has proven this element by establishing that the name GENERALITAT DE CATALUNYA, is used for important advertising campaigns in newspapers, on television and in magazines in order to promote its services to the citizens. It also uses this sign to promote its tourism industry all over Spain and in other countries.
The name GENERALITAT DE CATALUNYA is used in connection with different services.
Consequently, it has been duly held in Generalitat de Catalunya v. Thomas
Wolf, Wolf Domains, WIPO Case No. D2002-1124
that “...Complainant has proved that the name GENERALITAT DE CATALUNYA
performs the function of a trademark by distinguishing information services
throughout the Autonomous Community of Catalonia, and that said mark is a well-known
trademark according to evidence submitted by Complainant”.
It has also been held by previous Panels that unregistered trademarks deserve protection provided that national laws constitute the grounds for such protection. Spanish law does, but establishes a higher threshold: said unregistered trademark must be well known.
The same criteria have been recognized as to determine whether a non registered trademark could benefit from the protection allowed to a registered one, ie: perform the function of a trademark and be well known.
For the above mentioned reasons and evidenced in previous cases, the Panel is of the opinion that the name GENERALITAT DE CATALUNYA, has acquired the status of well-known mark.
The identical or confusingly similar character has to be examined. A comparison between the Domain Name and the Complainant’s trademarks shows two main differences between them:
- <generalitatdecatalunya.com> is composed of the same words as included in the name except for the absence of the spaces.
- The Domain Name includes the “.com” suffix.
With regard to the first difference, the Panel considers
that the Domain Name clearly relates to the Complainant’s name, as the
suppression of the spaces is not significant enough to differentiate both words,
as other decisions have pointed-out regarding similar situations (see, for example,
Ahmanson Land Company v. Vince Curtis, WIPO
Case No. D2000-0859).
The second of the above-mentioned differences between
the Generalitat de Catalunya name and the Domain Name is the inclusion of the
“.com” suffix in the latter one. Such an inclusion is due to the
current technical specificities of the Domain Name System (DNS). Therefore,
said difference should not be taken into account in order to evaluate the identity
or similarity between the Domain Name and the Complainant's trademark (see,
for example, A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc.,
Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc, WIPO
Case No. D2003-0172).
As a consequence, the Panel considers that the Domain Name is identical, or at least similar, to the Generalitat de Catalunya name used by the Complainant.
Therefore, the condition set out by Paragraph 4(a)(i) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. In this regard, paragraph 4(c) of the Policy foresees a set of circumstances where the Respondent may be considered as holding said rights or interests. Those circumstances are:
- To have used the Domain Name or to have made demonstrable preparations for its use before any notice of the dispute in connection with a bona fide offering of goods or services; or
- To have been commonly known by the Domain Name, even when no trademark or service mark right has been acquired; or
- 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 or service mark at issue.
As far as the first circumstance is concerned, the Respondent does not show use or preparations for use in connection with a bona fide offering of goods or services. In fact, the Domain Name at issue, <generalitatdecatalunya.com>, directs to an Internet travel agency website, “www.travelnow.com,” which is not the Respondent’s. Besides, the Government of the Communidad Autonoma de Catalunya has never granted the Respondent the right to use this name.
The Respondent has no relationship with the legitimate owner of the rights related to the name Generalitat de Catalunya or any agreement that authorizes the use or registration of this name.
As the domain name directs to the “www.travelnow.com” webpage, which does not link to the Respondent or the Complainant, it appears obvious that the Respondent is using the domain name at issue to confuse and divert Internet users to a travel agency and tarnish the Complainant’s trademark.
Furthermore, it has been previously held that, once
the Complainant has established a prima facie case, the burden is on
the Respondent to provide evidence of its right and legitimate interests in
the domain name (See for example, Southcorp Limited v. Frontier Direct Pty
Ltd,WIPOCase
No. D2004-0949, <penfoldsgrange.net>.
“Panels have consistently found that the burden
is on the Respondent to provide evidence of its right or legitimate interests
under paragraph 4(c). (For a recent affirmation of that principle, see for example
Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor
Chandler International Limited, WIPO Case
No. D2004-0753). That burden arises once the Complainant establishes a prima
facie case against the Respondent”.
In the present case, the Respondent failed to provide evidence of its rights or legitimate interests.
Therefore, according to paragraph 4(c) of the Rules, the Panel concludes that Respondent has no legitimate rights or interests in the disputed domain name.
C. Registered and Used in Bad Faith
The last of the element foreseen by paragraph 4(a) of the Policy is that the Complainant must prove that the Respondent has registered and uses the Domain Name in bad faith.
Generalitat de Catalunya is the official name of the Government of Autonomous Region of Catalonya and this name constitutes a well known name that the public identifies with the Official Organism of the Catalonian Community.
As the Respondent did not file any Response to the above, the Panel, having regard to paragraphs 14(a) and (b) and 15(a) of the Rules, shall decide the present case based only on the arguments evoked by the Complainant.
Previous Panels have recently considered that Respondent’s bad faith
could be presumed taking into account the fame of the Complainant’s mark
(See : AT&T Corp. v. LaPorte Holdings, Inc., WIPO
Case No. D2004-1088, <mobileatt.com>, “Bad faith can
be presumed based on the fame of Complainant’s marks, such that the Respondent
was aware or should have been aware of Complainant’s well-known marks
and claims of rights thereto”.
This is perfectly applicable to the present case.
As far as use in bad faith is concerned, the Complainant has provided evidence of the bad faith use. In fact it seems evident that the Respondent could not have been unaware that many Internet users, given the general reputation of the name Generalitat de Catalunya and the scope of its activities, are seeking the services provided by said institution.
Furthermore, it appears obvious that the Respondent, who redirects the disputed to a third party website, intends to confuse and divert Internet users to a travel agency and is tarnishing the Complainant’s trademark.
Taking into account the above-mentioned elements, the Panel concludes that
the evidence provided by the Complainant regarding the Respondent’s use
of the Domain Name satisfies the requirements foreseen by the Policy, paragraph
4(a)(iii).
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, <generalitatdecatalunya.com> be transferred to the Complainant.
Nathalie Dreyfus
Sole Panelist
Dated: March 18, 2005
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