The Complainant is Eroski S. Coop, Elorrio, Spain, represented by Ander Bikandi, Elorrio, Spain.
The Respondent is Sergei P, Minsk, Belarus.
2. The Domain Name and Registrar
The disputed domain name <eroskiviajes.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2006. On January 24, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On January 24, 2006, eNom 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 February 9, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2006.
The Center appointed Stefan Abel as the Sole Panelist
in this matter on March 21, 2006. 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 Spanish company operating supermarkets and travel agencies. It is the reported owner of numerous Spanish trademarks “EROSKI” registered in various classes. Complainant also holds the Spanish trademarks M 2251088 “VIAJES EROSKI” for services of a travel agency and M 2251089 “VIAJES EROSKI” registered for hotel reservation services and other services. Both trademarks have been registered in the year 2000 already.
“Viajes” is the Spanish term for “travel”. The Complainant uses the trademark “EROSKI VIAJES” extensively for numerous travel agencies all over Spain and in brochures and advertisings in Spanish newspapers for its travel agency services.
Further to that, Complainant owns and uses numerous domain names containing its company name “EROSKI”, in particular <chartereroski.com>, <chartereroski.net>, <viajeseroski.biz> and <viajeseroski.info>.
Many of these domain names have been registered several years ago, including the domain name <viajeseroski.info>, which has been created in September 2001.
The Respondent registered the contested domain name
on June 5, 2005. The Respondent’s site at the disputed domain name contains
a large number of links to numerous commercial websites under different categories
including the category travel and others, such as business, cars, education,
insurance, legal, shopping.
5. Parties’ Contentions
A. Complainant
In summary, the Complainant’s contentions are as follows:
The disputed domain name is confusingly similar to the trademarks No. M 2251089 “VIAJES EROSKI” and No. M 2251088 “VIAJES EROSKI”. The mere inversion of the elements “viajes” and “eroski” in the Respondent’s domain name does not render the domain name dissimilar since the element “viajes” is a generic term only indicating this services offered by the Complainant.
The Respondent has no right or legitimate interest in respect of the domain name. He is not affiliated with or has been licensed by Complainant and there is no evidence that the Respondent is known by the name EROSKI or “EROSKI VIAJES” and neither the Spanish Patent and Trademark Office nor the Spanish Business Registration Office show any holder other than the Complainant holding rights with regard to “EROSKI”. By providing links to websites promoting travel agency services the respondent merely seeks to attract Internet users to its website.
The Respondent registered the disputed domain name in bad faith. He must have known of the Complainant’s famous trademark before he registered the domain name and it is being used intentionally to mislead Internet users.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
The policy provides for transfer of the domain name if the domain name establishes each of the following elements set out in par. 4(a)(i)(2)(iii) of the policy.
- The Respondent’s domain name is identical of confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain; and
- the domain name has been registered and is being used in bad faith.
Par. 4 (b) of the policy sets out the circumstances which, in particular but without limitation, shall be evidence of registration and use of the domain name in bad faith.
A. Identical or Confusingly Similar
The domain name at issue is confusingly similar to the Complainant’s company name “EROSKI”, to its registered trademarks “EROSKI” and to the trademarks “VIAJES EROSKI”.
The disputed domain name consists of the Complainant’s trade name and trademarks “EROSKI” in combination with the term “viajes”. The Spanish word “viajes” indicates typical services, namely travel agency services, that the Complainant provides under its trade name and trademarks in Spain. The term “viajes” added to the Complainant’s company name and trademarks “EROSKI” in the domain name therefore does not only lack any distinctive character with regard to these signs owned by the Complainant but reinforces the confusing similarity of the domain name to these trademarks of the Complainant in the view of the Spanish speaking public.
The same considerations apply with regard to the Complainant’s trademark “VIAJES EROSKI” that, to the Spanish public, is dominated by the element “EROSKI” for the reasons set out before.
As a general rule, the addition of a generic term to a domain name consisting
of a trademark rarely excludes a finding of confusing similarity under the policy.
This finding is consistent with a number of previous UDRP decisions (see e.g.
WIPO Case No. D2003-0735Grupo Televisa,
S.A. Televisa S.A. de C.V. Comercio Mas, S.A. de C.V. Estrategia Televisa, S.A.
de C.V. Videoserpel, Ltd. v Registrant [email protected] 9876543210 <televisaespectaculos.com>).
The Panel finds that the first element of the policy has been satisfied.
B. Rights or Legitimate Interests
The term “EROSKI VIAJES” or the first part of it “EROSKI” is not reflected on the homepage at the disputed domain name as a designation for the owner of the website or for a product or service. Further to that, the Respondent does not use the disputed domain name in connection with a particular website providing travel agency services as the descriptive part of the disputed domain name “viajes” indicates (in view of the Spanish speaking public) but uses the domain name for a site containing links to various subjects such as business, cars, insurance, legal, shopping, etc.
By producing evidence on these circumstances, the Complainant has established a prima facie case that the respondent lacks rights or legitimate interests in the domain name. The evidentiary burden therefore shifts to the Respondent. The Respondent must then by concrete evidence demonstrate its rights or legitimate interests in that domain name in order to refute the prima facie case. The Respondent has made no such showing.
The Panel finds that the Respondent’s default in refuting the prima
facie case made by the Complainant is sufficient to establish this element
of the policy. It is an impossible task for the Complainant to prove a negative
that is primarily within the knowledge of the Respondent’s such as the
lack of rights and legitimate interests in the domain name. Producing evidence
that the Respondent prima facie has no rights or legitimate interests
in the domain name must therefore be regarded as sufficient to establish the
requirement of par. 4(a)(ii) if the Respondent fails to rebut the prima facie
case. This finding is consistent with the consensus in previous UDRP decisions
(see e.g.. WIPO Case No. D2004-0110Belupo d.d. v. WACHEM d.o.o <belupo.com>).
C. Registered and Used in Bad Faith
The Complainant has established this element in accordance with par. 4(b)(ii) and (iv) of the policy for the following reason:
The Panel finds that by using the domain name to offer links to commercial websites, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusing of the Complainants trademarks as to the source, sponsorship and affiliation of the website. The domain name combines the Complainant’s “EROSKI” trademarks with a term which, in the view of the Complainant’s Spanish customers, is descriptive of one of the Complainant’s fields of service, namely travel agency services. In addition to that, the Respondent’s website provides, among other things, links to travel agencies and internet users are therefore likely to get the idea that the Respondent’s site of the disputed domain is an official site of the Complainant, sponsored by the Complainant or affiliated with the Complainant. Such likelihood of confusion would attract more customers to the site of the disputed domain name which will result in commercial gain as the Respondent’s site provides links to numerous commercial websites.
The Panel finds that the Respondent acted intentionally. There is no reason
to conceive that the Respondent did register the domain name without having
the Complainant and its trademarks in mind. The Respondent’s intention
to use the disputed domain name as a reference to the Complainant and its trademarks
is obvious considering that the Complainant has registered its trademarks and
domain names years before the registration of the disputed domain name and that
Respondent’s could therefore have become easily aware of the Complainant’s
domain names and trademarks containing the term “EROSKI” and its
activities in travel agency services.
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, <eroskiviajes.com> be transferred to the Complainant.
Stefan Abel
Sole Panelist
Dated: April 4, 2006
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