Sociedad General de Aguas de Barcelona, S.A. v. Jose Manuel Soriano Garcia
Case No. D2007-1465
1. The Parties
The Complainant is Sociedad General de Aguas de Barcelona, S.A., of Barcelona, Spain, represented by Sugrañes, S.L., Spain.
The Respondent is Jose Manuel Soriano Garcia, of Barcelona, Spain.
2. The Domain Name and Registrar
The disputed domain name <agbartower.com> is registered with Primus Telecommunications t/a PlanetDomain & PrimusDomain.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2007. On October 4, 2007, the Center transmitted by email to Primus Telecommunications t/a PlanetDomain & PrimusDomain a request for registrar verification in connection with the domain name(s) at issue. On October 12, 2007 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 October 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 1, 2007. The Response was filed with the Center on October 30, 2007.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on November 6, 2007. 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 legal holder of the following Trademark No 2.444.122 TORRE AGBAR in class 38.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that the domain name <agbartower.com> is quasi-identicalto the Registered Trademarks no 2.444.122 TORRE AGBAR which has achieved a notorious meaning as the result of being a building, belonging to Sociedad General de Aguas de Barcelona, S.A.
The Complainant further alleges that the registered trademark entitles the owner to prevent any unfair use of it that might damaged or cause any prejudice in accordance with the terms of section 34.3.e) of Trademark Act 17/2001, and therefore the Respondent has not made a legitimate use of the disputed Domain Name.
Finally the Complainant alleges that by registering the disputed Domain Name the respondent acted in bad faith due to the recognition of the brand “AGBAR”
B. Respondent
The Respondent asserts that the term “agbartower” is not only a trademark but an Internet “nick” which includes the word “art”. This term is commonly used as a unique Internet tag in places like “www.flickr.com” with the word “art” in it.
The Respondent further alleges that he has been promoting for some time not only his agbartower website but others sites under his control, where the common content is the “Agbar Tower”, as he is a fan of this building.
He also asserts that the Complainant should not have the privilege of being the holder of the disputed Domain Name on the basis of being the holder of a registered trademark.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panelist as to the principles the Panelist is to use in rendering its decision. “A Panelist shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules an any rules and principles of law that it deems applicable”. Here, as the Complainant and Respondent are domiciled in Spain and the evidence of registration and use of the Domain Name relate principally to activity in the same country, it would be appropriate for the Panel to refer to the law of Spain.
A. Identical or Confusingly Similar
The Panel finds that the disputed Domain Name is confusingly similar to the TORRE AGBAR mark in which the Complainant clearly has established rights through registration and use. The critical examination under the first element of paragraph 4 (a) is simply whether the mark and the Domain Name are, when directly compared, confusingly similar. See Wal-Mart Stores, Inc. v. Richard Macleod d/b/a For Sale,
WIPO Case No. D2000-0662 (domain name incorporating a mark in its entirety is confusingly similar). In this case, the disputed Domain Name do not incorporate Complainant’s trademark TORRE AGBAR, but the English translation of such trademark. The Panel thus notes that there is only partial similarity between the disputed Domain Name and the complainant’s trademark (in that they both contain, pronunciation aside, the word “agbar”).
Notwithstanding, a semantic similarity between a trademark and a domain name can also exist if the trademark and the Domain Name contain word elements of different languages if a considerable part of the public understands the meaning of the translation. See e.g. Compagnie Generale Des Establissements Michelin - Michelin & Cie. v. Graeme Foster,
WIPO Case No. D2004-0279. The Panel observes that Complainant’s registered trademark is identical with the English translation of Complainant’s trademark TORRE AGBAR. Bearing in mind the easy translation of the mark from Spanish to English and the worldwide knowledge of Jean Nouvel work where the Torre Agbar is one of his most fascinating works, the Panel finds confusing similarity to be the case here.
Accordingly, the Complainant has met his burden under paragraph 4(a)(i) as the disputed Domain Name is confusingly similar to the trademark in which Complainant has exclusive rights.
B. Rights or Legitimate Interests
The Complainant clearly has not authorized or consented to the Respondent’s use of the TORRE AGBAR mark. The distinctive quality of the mark, as evidenced by registration and use, is beyond question. The Respondent does not deny that he was familiar with the Complainant, his services and the Torre Agbar when he registered the disputed Domain Name, and nothing in the record reflects that the Respondent has ever been commonly known by the disputed Domain Name.
The Respondent claims that he is a fan of Torre Agbar and that he uses the disputed domain name to post images of the Tower. While there does not currently appear to be any website displayed at the disputed domain name, the Respondent states that this is because the content that would "normally" appear at the disputed domain name has (for reasons stated to be unknown to him) been taken down since the dispute began. The Respondent instead invites the Panel to examine material currently accessible at “http://geocities.com/catalancat/torreagbar/”, which the Respondent says is the content which would "normally" appear at the disputed domain name. The Panel has inspected this site, and notes that in addition to the title (which appears in English and Spanish) “Welcome To Hot.Cat, Agbartower.Com And More - Made In Barcelona” it contains an image (albeit a rather abstract one) of what appears to be the distinctive Torre Agbar. It also contains a number of what appear to be sponsored links related inter alia to apartments in Barcelona and luxury catamarans, from which revenue is presumably derived. Immediately beneath these links are the words “Ads by Google”.
While previous panels have noted that so-called advertising revenue arrangements may in certain circumstances be consistent with a legitimate interest in a disputed domain name, their use does not in this Panel’s view sit comfortably within the established concept of non-commercial fair use. (See eg. Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315). At the least, the presence of such advertising on a website raises the bar considerably as to the very clear evidence that a Respondent would need to put on to establish claimed use as a fan site. Whether or not the Respondent is as he claims a fan of the Torre Agbar, the Panel does not believe that it would be appropriate to make a finding of legitimate non-commercial fair use in Respondent’s favour on the case record available here.
It is as noted also legitimate under paragraph 15(a) of the Rules that the Panel should look at principles of law it deems applicable. This Panel considers Spanish law to be applicable since both parties are domiciled in Spain (La Caixa D’Estalvis I Pensions de Barcelona v. Molina Georgesen,WIPO Case No. D2006-1615). In this case, although it is not strictly necessary, because the Panel finds that the Complainant succeeds in terms of the Policy, this Panel believes that article 34 of the Spanish Trademark Law is also applicable. In that sense. The Panel considers that the Complainant has shown prior and superior rights to hold the contested Domain Name.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the Domain Name in bad faith on the basis that the Respondent must have been aware of the Complainant’s trademark prior to registration of the Domain Name and that the Respondent is seeking to take advantage and/or profit from the goodwill acquired by his trademark.
The Panel considers that the Respondent was aware at the time of registration of the disputed domain name, of the prior and exclusive rights by Complainant on the TORRE AGBAR mark. The Respondent himself declares that “Aguas de Barcelona has its offices in this tower and as far as I know they have the trademark TORRE AGBAR registered for a lot of chemicals products, etc”. As a consequence the Panel finds that in registering the Domain Name, the Respondent was aware of the Complainant’s trademark and no matter whether the Respondent was aware or not to be submitted to the UDRP through the registration agreement.
The Panel has also checked the Respondent website-content print out presented by the Complainant Annex to the Complaint which appears substantially consistent with the content discussed above (although some of the sponsored links may differ). However, the mere claim to be a fan site (The Respondent declares: “Below you can see as I use the tower wherever I can. In some websites they called me a “forofo de la torre”) does not preclude Respondent from submitting evidence to sustain such comments or provide Respondent with a clear safe-harbor in the circumstances of this case. In this case, the website managed by the Respondent uses both the disputed Domain Name and the distinctive skyline and figure of the TORRE AGBAR building which in addition to a number of posted sponsored links also links to a different website (“www.gay.cat”) apparently managed by the Respondent, which offers different services. To the Panel, the conduct of the Respondent seems to be a case of using the Domain Name to intentionally attempt to attract – for commercial gain – Internet users to the Respondent’s website by creating a likehood of confusion with the Complainant’s mark and services.
Based on these arguments, the Panel finds that the Domain Name was registered and is being used in bad faith and the Complainant satisfies the paragraph 4(a)(iii) of the Policy.
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, <agbartower.com>, be transferred to the Complainant.
Manuel Moreno-Torres Sole Panelist
Dated: November 12, 2007
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