Complainants are Bernardo M. Cremades Sanz-Pastor (1st Complainant) and B. Cremades & Asociados (2nd Complainant), S.L., Madrid, Spain, represented by David J.A. Cairns and Alicia Martin Blanco, Spain.
Respondent is Patrick Lucas, Abuja, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <bcremades-aa.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2009. On May 1, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On May 1, 2009, eNom transmitted by email to the Center its verification response confirming that 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” 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 Respondent of the Complaint, and the proceedings commenced on May 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on May 27, 2009.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on June 4, 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
1st Complainant is a Spanish citizen and a lawyer who is the senior partner of 2nd Complainant, a Spanish law firm specialising in commercial and corporate law including international commercial and financial arbitration. 1st Complainant is the proprietor of Spanish registered trademarks B. CREMADES, and BERNARDO CREMADES, and of an international registration of BERNARDO CREMADES registered in respect of a range of legal, financial and business services.
2nd Complainant is the owner of several domain name registrations consisting of, or including the word “B. Cremades”, and operates a website at “www.bcremades.com”.
No information is available in relation to Respondent, save for that set out in the Complaint and shown on the website to which the disputed domain name resolves.
5. Parties' Contentions
A. Complainant
Complainants contend that in addition to owning the registered trademarks referred to above, 1st Complainant has established an extensive international reputation as a lawyer and arbitrator. He has acted as counsel or arbitrator in over 200 arbitrations. Complainants contend that he is a leading Spanish and international arbitration practitioner who has been recognised by many national and international bodies concerned with arbitration and has received, among others, the award of “Chevalier de l'Ordre National du Mérite.” Complainants contend that as a result of this, and as a result of the fame and reputation also of 2nd Complainant, the word “B. Cremades” is a trademark to which substantial goodwill and reputation attaches.
Complainants contend that the disputed domain name differs from the trademark “B. Cremades” only by the omission of the point and the addition of “-aa”. Complainants contend that the letters “aa” suggest the Spanish words “abogados” and “asesores” which are descriptive elements therefore emphasising the trademark element of the disputed domain name and the increasing the risk of confusion. Complainants cite PwC Business Trust v. Mukesh Patel and Comxsys Consulting, Inc,
WIPO Case No. D2000-1666. Complainants therefore contend that the disputed domain name is confusingly similar to a trademark in which they have rights.
Complainants assert that they have never authorised or otherwise consented to the use of their trademarks by Respondent and contend that there is no evidence Respondent has acquired any trademark or service mark rights in the disputed domain name, nor is he commonly known by that name nor making a legitimate non-commercial or fair use of it.
Complainants assert that they became aware of Respondent's webpage in April 2009, when their attention was directed to it by Internet users concerned at the apparently fraudulent use of the domain name on Respondent's webpage. Complainants point to the following as evidence of the fraudulent nature of Respondent's website:
- Under the heading “Bcremades Abogados y Asesores” (“the firm”), services are advertised as “Your Lawyers in Spain”, offering a range of legal and financial services with offices in Madrid and Valencia. Complainants produce directory evidence showing that there is no entry corresponding to the firm at either of the addresses given. Complainants also point to the fact that the address given for Madrid is substantially the same as the Madrid address of 2nd Complainant, save that the street number is 38 rather than 18.
- Of six lawyers listed on Respondent's website, three are members of 2nd Complainant, one is a former member, none of whom is in any way connected with Respondent. None of the six is listed at the address given by Respondent in Whois and on the website.
- On April 22, 2009, 1st Complainant received an email and faxed letter from a U.S. attorney enclosing “a letter received by a client which appears to be a fraud that involves the name of your firm”. The enclosed letter is on letterhead bearing the name of the firm and purporting to be from Luis Ernesto Echecopar Flórez, a member of 2nd Complainant. The letter asked the recipient to participate in a fraudulent scheme to claim an amount of 10.8 million US dollars allegedly deposited by a person, now deceased, having the same surname as the addressee of the letter. The letter gives the apparently fictitious address of the firm and the email address “[email protected].”
Complainant contends that such use of the domain name does not constitute legitimate non-commercial or fair use. Complainant further contends that the proposal contained in the letter constitutes a well-known type of fraud called “advance fee fraud” particularly connected with Nigeria, where Respondent is based.
Complainant contends that the fact that the domain name was registered many years after Complainants' trademarks were registered and had become well-known, and that the website at the domain name incorporates names and details of lawyers working for 2nd Complainant constitutes unmistakable evidence that Respondent knew of Complainants' existence and business at the time of registration. Complainants contend that Respondent is using the disputed domain name intentionally to attract Internet users to Respondent's website for the purpose of promoting a fraudulent scam and is ipso facto not a use in the bona fide offering of goods or services.
B. Respondent
Respondent did not reply to Complainants' contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainants have established ownership of, and reputation in, the trademarks comprising the name “B. Cremades.” It is therefore a trademark in which Complainants, and each of them, have rights. The disputed domain name comprises the same name without the point between the letters B and C and that the addition of “-aa”. The Panel accepts Complainants' submission that neither the omission nor the addition materially affects the identity of the domain name and that furthermore, the addition of the letters “aa” would tend to confirm rather than to diminish the likelihood of confusion.
The Panel therefore finds the disputed domain is confusingly similar to trademarks in which Complainants jointly and severally have rights.
B. Rights or Legitimate Interests
Complainants have made a strong prima facie showing that Respondent has no rights in the disputed domain name and have produced documented evidence that Respondent's interest in the disputed domain name, far from being legitimate, is in fact fraudulent. Respondent has had an opportunity to rebut Complainants' allegations and contentions but has failed to do so.
The Panel is therefore satisfied that Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
On the basis of the content of Respondent's website and the evidence adduced by Complainants, the only reasonable conclusion that can be drawn is that Respondent knowing of the name, fame and reputation of each of the Complainants, has deliberately chosen to appropriate that name and reputation for the purpose of a fraudulent scam, a scam purportedly to share in an illegal appropriation of money, though more likely, for the purpose of extracting money from Complainants through his letters of solicitation.
The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.
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 <bcremades-aa.com> be transferred to Complainants jointly.
Desmond J. Ryan Sole Panelist
Dated: June 18, 2009
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