WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tine Hagemeister v. Stephen Jonathan Dight

Case No. D2015-0709

1. The Parties

The Complainant is Tine Hagemeister of Marbella, Malaga, Spain, represented by Estudio Jurídico Baylos, Spain.

The Respondent is Stephen Jonathan Dight of Marbella, Malaga, Spain, self-represented.

2. The Domain Name and Registrar

The disputed domain name <marbellainternational.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in Spanish with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2015. On April 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 21, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. On April 27, 2015, the Center informed the parties that the Complaint had been submitted in Spanish and that the language of the Registration Agreement for the disputed domain name was English. The Center requested the Complainant to provide it with (1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in Spanish; or (2) submit the Complaint translated into English; or (3) submit a request for Spanish to be the language of the administrative proceedings. On April 28, 2015, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

On April 30, the Complainant filed an amended Complaint, translated into English.

The Center verified that the Complaint together with the amended 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 May 8, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2015. The Response was filed with the Center on June 5, 2015.

The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on June 17, 2015. 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 owner of the following Spanish trademark registration:

INTERNATIONAL MARBELLA PROPERTY CONSULTANTS number 3107010, applied for January 9, 2014, and registered May 5, 2014.

The disputed domain name <marbellainternational.com> was originally registered on April 4, 2012.

Both parties are engaged in the real-estate business in the city of Marbella, Spain.

The Complainant has submitted evidence showing that around the time of Complaint filing, the disputed domain name resolved to a website stating, inter alia: “Welcome to the home page of Marbella International…We help discerning clients buy and sell quality property on the Costa del Sol. We are based in Marbella…” The website also contained a significant amount of place holder “Lorem ipsum” text.

5. Parties’ Contentions

A. Complainant

With reference to the first element, the Complainant asserts that the disputed domain name <marbellainternational.com> incorporates the terms “international” and “marbella” which are the most distinctive terms of its Spanish trademark INTERNATIONAL MARBELLA PROPERTY CONSULTANTS but located in reverse position. Thus, there is a practical identity between the disputed domain name <marbellainternational.com> and the Complainant’s trademark.

She also states that the disputed domain name <marbellainternational.com> was registered on April 4, 2012, subsequent to the registration of the Complainant’s domain name <internationalmarbella.com>, which took place on March 23, 2011.

In respect to the second element, the Complainant alleges that the Respondent does not hold any trademark in relation to “Marbella International” and the Complainant has not authorized in any manner such registration. The Complainant is to be considered the only legitimate user of the disputed domain name as a result of her registration and use of the trademark. For such, it provides evidence as to the existence and content of the website of the Complainant by October 2011.

In addition, the Complainant states that the Respondent is using the disputed domain name to host a website which serves to hinder the business of a competitor and which is almost indentical to the website of the Complainant.

Finally, the Complainant claims that the Respondent has registered and is using the disputed domain name <marbellainternational.com> in bad faith. The Complainant’s assertion as to the registration is based on the fact that the disputed domain name registration infringes the Complainant’s trademark INTERNATIONAL MARBELLA PROPERTY CONSULTANTS. While having reached notoriety through years of use, the Respondent knew or should have known of the Complainant’s trademark. Therefore the registration is in bad faith due to notoriety considerations of the Complainant’s trademark.

Besides, the Respondent’s offering the disputed domain name for sale at a profit of EUR 15,000 to the Complainant clearly demonstrates bad faith of registration and use of the disputed domain name.

B. Respondent

In the Response, prior to addressing the three elements of the UDRP, the Respondent describes his professional background in the real estate sector including his partnership with Mr. Oprea (colleague of the Respondent). The Respondent considers himself and his partner to be “well-known in the agency community”. He acknowledges ownership of the disputed domain name as well as of the domain name <marbella.international>. On June 10, 2014, the Respondent expressed interest to the Registrar in buying the domain name <marbellaliving.com>. Later, the Respondent rebranded his business into “Marbella Living”.

On June 11, 2014, he briefed his web designer about the steps they took in order to build a website.

During ongoing negotiations between the parties, the Respondent agreed to sell his business and the corresponding disputed domain name for EUR 15,000. However, the deal was never completed by the Complainant.

With reference to the first element, the Respondent asserts that the disputed domain name <marbellainternational.com> is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has no exclusive right in respect of the disputed domain name, which consists of two generic and common words. Had the disputed domain name not omitted the rest of the elements of the Complainant’s trademark, “property” and “consultants”, the issue might be a different matter.

Besides, the Respondent recognizes himself as being a competitor of the Complainant. However, he firmly states that he and his partner do not seek to undermine the Complainant’s business.

With respect to the third element, the Respondent states that there is no evidence to support the contention that the disputed domain name was registered and is being used in bad faith. Further, the Respondent argues that the purpose for such registration was to trade as an estate agent. While the Respondent registered the disputed domain name, the Complainant’s failure in doing so undermines her argument that the combination of “Marbella” and “International” in the disputed domain name is pivotal and essential for her business.

The Respondent contends that he has never sold a domain name and thus, he has never engaged in a pattern of such conduct. And finally, the Respondent’s website was visible by error since the site was under construction at that time. Therefore, he did not attempt to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation.

6. Discussion and Findings

In order for the Panel to decide to grant the remedy of transferring the disputed domain name to the Complainant under the Policy, it is necessary that the Complainant must prove, as required by paragraph 4(a) of the Policy, that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

A. Identical or Confusingly Similar

The Complainant holds the Spanish Trademark INTERNATIONAL MARBELLA PROPERTY CONSULTANTS. The domain name is <marbellainternational.com>. The domain name is identical to a part of the Complainant’s trademark.

The Panel notes and agrees with the Panel in Consorzio del Prosciutto di Parma v. Matthias Gasser, Hanslmeier Fleischwarenfabrik, WIPO Case No. D2003-0474: “Where, however, the Complainant owns a trademark that includes, as part of the mark, a geographic term, such trademark can be invoked in the sense of paragraph 4(a)(i) of the Policy (see for example City of Potsdam v. Transglobal Networx Inc., WIPO Case No. D2002-0856, <potsdam.com>).

The Panel also notes that paragraph 1.4 of the WIPO Overview of WIPO Panel Views on selected UDRP Questions, Second Edition states: “that registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP”.

In addition, the rotation of the terms “International Marbella” for “Marbella International” does not prevent this Panel to find the disputed domain name confusingly similar to the trademark INTERNATIONAL MARBELLA PROPERTY CONSULTANTS.

The Panel concludes that the Complainant has met the test under Policy paragraph 4(a)(i) to show that the disputed domain name is confusingly similar to a trademark in which it has rights.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a) of the Policy.

Once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent. However, the Respondent has not provided enough evidence of circumstances of the type giving rise to a right or legitimate interest in the disputed domain name.

Based on the evidence of record, the website to which the disputed domain name resolves appears to be a partially built site for a real estate business named “Marbella International”, with much of the default Wordpress Latin text is still in place. The Respondent contends that this website was still in the process of being built, and was going to be developed into a “legitimate real estate agency business”. Even granting this, in the Panel’s view the use of a domain name confusingly similar to a direct competitor’s mark to offer competing services does not generate rights or legitimate interests in that domain name. Besides, the Respondent has tried to sell the disputed domain name <marbellainternational.com>.

Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

Both parties have an intensive background in the same sector, both working in leading local real estate businesses. Besides, the Respondent acknowledges being a competitor of the Complainant. The Panel finds that this is enough to suggest previous awareness of each other prior to the registration of the disputed domain name. Such is the case to understand the descriptive profile that the Respondent makes about the Complainant. Therefore, the Respondent knew of the existence of the Complainant’s business.

The Complainant contends that the Respondent’s offer to sell the disputed domain name to the Complainant for EUR 15,000 demonstrates use in bad faith. The Respondent, for its part, characterizes this offer as being made only in response to repeated attempts by the Complainant to enter into negotiations for the disputed domain name. Even if the offer to sell does not reveal bad intent on the part of the Respondent, in the Panel’s view the use of a domain name confusingly similar to a direct competitor’s mark to offer competing services constitutes use in bad faith.

Upon the above mentioned, the Panel finds that the Complainant has established the third element necessary for a finding that the Respondent has engaged in abusive domain name registration and use.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <marbellainternational.com> be transferred to the Complainant.

Manuel Moreno-Torres
Sole Panelist
Date: June 29, 2015