The Complainant is Turisme de Barcelona, Spain, represented by Marquespatent SL, Spain.
The Respondent is Arrival Marketing Ltd, United Kingdom of Great Britain and Northern Ireland, represented by Goodman Derrick LLP, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The Disputed Domain Name <barcelonapass.com> is registered with NetNames.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2009. On January 8, 2009, the Center transmitted by email to NetNames a request for registrar verification in connection with the Disputed Domain Name. On January 12, 2009, NetNames 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 Disputed Domain Name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2009. The Response was filed with the Center on February 3, 2009.
The Center appointed Alistair Payne as the sole panelist in this matter on February 10, 2009. 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 was founded in 1993 by Barcelona City Hall, the Official Chamber of Commerce, Industry and Navigation of Barcelona and the Barcelona Promotion Foundation. The Complainant is the body responsible for promoting the city of Barcelona as a tourism destination. The Complainant's website at “www.barcelonaturisme.com” provides a range of information on the city of Barcelona.
The Complainant is the owner of two Spanish combined word/device mark registrations which incorporate the name BARCELONA PASS. These marks were registered with effect from September 28, 1994 and March 22, 2004 respectively. The Barcelona Pass is a pass book product which offers discounts for places of interest in Barcelona and is offered as a gift together with travel documents that a customer receives from their travel agent.
The Respondent is a tourism specialist, creating and managing smart card pass systems. The Respondent's smart card pass system currently operates in London, New York, Philadelphia and Paris. The Respondent has strategic marking technological relationships with the operators of the smart card pass system in Stockholm, Jersey and York. The Respondent is the registered owner of the following domain names, some of which appear to resolve to active websites, in respect of the cities in which it smart card system is operational: <londonpass.com>, <newyorkpass.com>, <philadelphiapass.com>, <parispass.com>, <yorkpass.com>, <jerseypass.com> and <stockholmpass.com>.
The Respondent registered the Disputed Domain Name on July 19, 2000. The Disputed Domain Name currently resolves to an inactive website.
The Complainant sent the Respondent a cease and desist letter written in Spanish on July 21, 2008. The Respondent replied to this letter on July 28, 2008, requesting that same letter be re-sent in English. The Complainant as requested by the Respondent re-sent the original cease and desist letter, written in English, to the Respondent on August 4, 2008. The Respondent did not respond to this letter.
5. Parties' Contentions
A. Complainant
The Complainant contends that the Disputed Domain Name infringes their registered and unregistered usage rights in their BARCELONA PASS marks.
The Complainant contends that the Disputed Domain Name is identical to their BARCELONA PASS marks. The Complainant contends that their Barcelona Pass pass book product has been operating since 1994.
The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainant contends in particular that the Disputed Domain Name does not appear to be linked to any bona fide offer for products or services. The Complainant furnishes evidence that the Disputed Domain Name resolves to an inactive website.
The Complainant contends the Respondent cannot be considered to have made verifiable preparations to use the Disputed Domain Name.
The Complainant contends that, as the Respondent's primary business involves the creation of passes with discounts and benefits for visiting the main attractions of certain cities, it is inferable that should the Respondent start to actively utilize the Disputed Domain Name it would do so in order offer identical or similar products to that of the Complainant.
The Complainant contends that the Disputed Domain Name was registered and is being used in bad faith. The Complainant supports this contention by suggesting that the Respondent, as an operator in the tourism sector, could not have been unaware of the Complainant's Barcelona Pass pass book product. The Complainant contends that it has offered this product since 1994.
The Complainant contends that the Disputed Domain Name was not registered in order to make a bona fide offer of products or services but rather to prevent the Complainant, as owner of the BARCELONA PASS mark, from registering the Disputed Domain Name. The Complainant supports this contention by stating that the Disputed Domain Name has been inactive for more than a period of eight years. The Complainant also contends that this eight year period of inactivity is evidence of use in bad faith.
The Complainant contends that prior to the Complaint the Complainant had made attempts to reach an amicable agreement with the Respondent with regard to the Disputed Domain Name. A copy of a cease and desist letter, sent initially in Spanish and subsequently in English to the Respondent requesting that the Disputed Domain Name be transferred to the Complainant is included in evidence.
The Complainant contends that the failure to reply to the cease and desist letter is evidence of bad faith.
The Complainant requests in accordance with paragraph 4(i) of the Policy, for the reasons summarized above and more particularly set out in the Complaint, that the Disputed Domain Name be transferred to the Complainant.
B. Respondent
The Respondent denies the allegations put forward by the Complainant.
The Respondent does not accept the Complainant's contention that the BARCELONA PASS product has been available since 1994 nor does it accept the Complainant's contention that the Barcelona Pass product is well-known. The Respondent supports this contention by referring to the fact that the Complainant has provided minimal supportive evidence. The Respondent considers that a similar product offered by the Complainant, Barcelona Card, in contrast is marketed considerably more on the Complainant's website.
The Respondent contends that the BARCELONA PASS product is not sold directly to customers rather it is only available to the travel trade who then in turn pass it on free of charge to their customers.
The Respondent contends that the Complainant's evidence of use falls well short of what is necessary to establish that it has built up significant goodwill and reputation in relation to their mark. The Respondent supports this contention by alluding to the fact that the Complainant has not provided any figures for the number of discount books sold to the travel trade or the number of discount books that are provided by the travel trade to consumers.
The Respondent contends that up until it received the Complainant's cease and desist letter it was not aware of the Complainant's Barcelona Pass product.
The Respondent acknowledges that the Complainant has registered Spanish trademarks in respect of BARCELONA PASS. The Respondent notes that the Spanish Trade Mark No. 2 618 816 which was registered by the Complainant in respect of BARCELONA PASS is a word/device mark as opposed to a word mark. The Respondent contends that the Complainant's other registered Spanish trademark 2 587 334 is irrelevant to the dispute as it was registered by the Complainant after the registration of the Disputed Domain Name.
The Respondent contends that in order for it to prepare for its anticipated expansion into new cities it has registered a number of domain names, including the Disputed Domain Name, which incorporate combinations of city names or tourist attractions with the suffix “pass”. The Respondent contends that it has registered these domain names in good faith and has done so with the intention of establishing active sites or links.
The Respondent contends that the Complainant's mark and the Disputed Domain Name are neither identical or confusingly similar.
The Respondent has produced evidence showing that it is currently operating its smart card system under the following product descriptions: London Pass, New York Pass, Paris Pass, Philadelphia Pass, York Pass, Jersey Pass, and Stockholm Pass.
The Respondent contends that it did make considerable verifiable preparations to use the Disputed Domain Name. In this regard the Respondent contends that in 2007 it decided to proceed with its plans to introduce its smart card pass system to Barcelona and call it the Barcelona Pass. The Respondent contends that it engaged in two meetings with the Complainant to discuss the viability of introducing the smart card pass system to Barcelona in December 2007 and December 2008. To this end the Respondent has provided a copy of an e-mail exchange between the Complainant and the Respondent concerning a meeting between both parties on December 12, 2007. The Respondent has also furnished a copy of a power point presentation which it purports to have presented to the Complainant at a meeting in December 2008. Respondent contends that up until it received the Complainant's cease and desist letter it was not aware of the Complainant's Barcelona Pass product. Respondent contends that during the course of its meetings with the Complainant in 2007 and 2008 it was never made aware of the Complainant's Barcelona Pass product.
The Respondent summarizes its position in this regard by stating that prior to receiving notice of the Complaint the Respondent had made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods and services.
6. Discussion and Findings
A. UDRP Elements
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Disputed Domain Name is identical or confusingly similar to a trade 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 Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.
B. Identical or Confusingly Similar
The Complainant contends that it has both registered and unregistered rights in BARCELONA PASS. The Complainant has provided evidence of two registrations with the Spanish Trademark Office of word/device marks. One mark was registered with effect from September 28, 1994 while the other mark was registered with effect from March 22, 2004. The Respondent contends that the latter mark is of no relevance to these proceedings as it was registered after the registration of the Disputed Domain Name. The Panel does not accept this contention as registration of a domain name before a complainant acquires trade mark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to when the date of which the owner of the trade or service mark acquired rights.
The Panel notes that the Complainant has failed to establish that it has built up significant goodwill and reputation in relation to either mark. The evidence relied upon by the Complainant to this end does not support its contention that it has established unregistered rights. Particularly in light of the generic nature of the individual words “Barcelona” and “Pass” the Panel notes that no substantive evidence has been adduced to support the contention that BARCELONA PASS has become an well-known product or that it enjoys a substantial degree of secondary meaning in relation to the Complainant's product.
The Panel does not accept the Complainant's contention that the Disputed Domain Name is identical to its registered marks. As the Respondent rightly points out, the registered marks are combined word/device marks, not word marks. However the Panel is satisfied that the Disputed Domain Name is at the least confusingly similar to Complainant's marks. Moreover, the Panel considers that the words “Barcelona Pass” are the dominant element of the Complainant's combined word/device marks and an Internet user familiar with the logos would reasonably suppose that the Disputed Domain Name is connected with the logos and the Complainant. See Mentor ADI Recruitment Ltd (trading as Mentor Group) v. Teaching Driving Ltd, WIPO Case No. D2003-0654.
The Panel considers that the Disputed Domain Name is confusingly similar to the Respondent's marks. The Panel considers that the Complainant has satisfied Paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
It is the Complainant's burden to prove that the Respondent lacks rights or legitimate interests. Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. As it is difficult to produce evidence to support a negative statement, the threshold for the Complainant to prove a lack of legitimate interest is low. Once a prima facie case is shown the burden of proof then shifts to the Respondent who must demonstrate its rights or legitimate interests to the Panel.
Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that can be brought forward by the Respondent, which if found by the Panel to be proved based on its evaluation of all evidence presented, shall be demonstrative of the Respondent's rights or legitimate interests to the Disputed Domain Name for the purposes of Paragraph 4(a)(ii):
(i) (demonstrable preparations to) use the domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(ii) an indication that the registrant has been commonly known by the domain name even if has acquired no trademarks rights; or
(iii) legitimate non-commercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
It is generally regarded as sufficient prima facie proof, for a complainant to show that “the disputed domain name is identical or confusingly similar to its mark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise.” Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857. The Panel is satisfied that the Complainant has made out a prima facie case against the Respondent.
The Respondent contends that it has made demonstrable preparations to used the Disputed Domain Name in connection with a bona fide offering of goods or services prior to the dispute. In this connection the Respondent has provided evidence that it operates smart card pass systems for a range of tourist destinations around the world. These destinations include: New York, London, Paris, Philadelphia, Stockholm, Jersey and York. The Respondent has provided evidence that it operates websites at some of the above listed destinations: <londonpass.com>, <newyorkpass.com>, <philadelphiapass.com>, <parispass.com>, <yorkpass.com>, <jerseypass.com> and <stockholmpass.com>.
The Respondent contends that in order to facilitate the anticipated expansion of its smart card pass system into new cities it has registered a number of domain names, including the Disputed Domain Name, all of which incorporate combinations of city names or tourist attractions with the suffix “pass”. The Respondent says that it has registered its domain names with the intention of establishing active websites. The Respondent concedes that at present the Disputed Domain Name resolves to an inactive website. However the Respondent contends that it has made considerable verifiable preparations to use the Disputed Domain Name.
The Disputed Domain Name was registered on July 19, 2000. The Respondent says that in 2007 it decided to proceed with its plans to introduce its smart card pass system to Barcelona. In keeping with its existing business model the pass would be called the “Barcelona Pass”. In this regard the Respondent submits that its representatives attended meetings with key personnel from the Barcelona tourism industry. The Respondent has provided evidence of an e-mail exchange between itself and the Complainant concerning a meeting which took place between both parties on December 12, 2007. The Respondent has also provided evidence of a power point presentation made to the Respondent in December 2008 concerning its proposal to introduce its smart card pass system to Barcelona.
The Respondent contends that it was unaware of the Complainant's Barcelona Pass product prior to receipt of the Complainant's cease and desist letter. The Respondent notes that during its meetings with the Complainant in 2007 and 2008 no reference was made by the Complainant to its Barcelona Pass product nor was any suggestion made by the Complainant that the introduction by the Respondent of its smart card pass system under the name “Barcelona Pass”, or its use of the Disputed Domain Name would create a risk of confusion.
The Panel is satisfied from evidence adduced that on the balance of probabilities the Respondent has made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services prior to this dispute and has therefore satisfied Paragraph 4 (c)(i) of the Policy. Accordingly the Panel considers that the Respondent has shown that it has rights or legitimate interests in the Disputed Domain Name.
For the reasons provided above the Panel considers that the Complainant has failed to satisfy the requirements of Paragraph 4(a)(ii) of the Policy. The Complainant's case must therefore fail.
D. Registered and Used in Bad Faith
The Panel does not consider that a decision based on paragraph 4(a)(iii) of the Policy is required as the Complainant fails under paragraph 4(a)(ii) of the Policy for the reasons provided above.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Alistair Payne Sole Panelist
Dated: February 24, 2009
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