The Complainant is Bella Terra Travel, LLC of San Francisco, California, United States of America (“United States”), internally represented.
The Respondent is Laurent Coene of Annecy-le-Vieux, France, self-represented.
The disputed domain name <bellaterratravel.com> is registered with Gandi SAS (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2018. On October 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 11, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant sent two email communications to the Center on October 31, 2018 and November 5, 2018. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 5, 2018.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2018. The Response was filed with the Center on November 26, 2018.
The Center appointed Luca Barbero as the sole panelist in this matter on December 11, 2018. 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.
The disputed domain name <bellaterratravel.com> was registered on September 24, 2004 and is currently pointed to a website providing information about Bellaterra, a quarter of Cerdanyola del Vallès, in the metropolitan area of Barcelona, Spain.
According to the information provided by the parties, the Respondent registered the disputed domain name in its name, prior to the incorporation of the Complainant, for use in the promotion of the services of the Complainant, of which the Respondent was a member until the end of 2014. The Respondent’s wife was also one of the founders of the Complainant and cooperated with it until June 24, 2018, when it withdrew from it.
After the withdrawal of the Respondent’s wife from the Complainant, the Complainant requested the Respondent’s cooperation to obtain control of the disputed domain name, but the Respondent opted to retain it and transfer it to another registrar in September 2018, pointing it to the current website described above.
The Complainant states that the Respondent and his wife registered the disputed domain name, through the registrar GoDaddy, in September 2004 when forming “Bella Terra Travel”, prior to the Complainant’s namesake company being formally formed in 2005.
The Complainant asserts that the costs of the disputed domain name were subsequently reimbursed to the Respondent and his wife, as reflected in the Complainant’s financial statements.
The Complainant informs the Panel that, in August 2018, after the Respondent and his wife had ceased to cooperate with the Complainant, it verified that access to the GoDaddy account with the previously used password were not successful and password recovery/change effort indicated that the Respondent’s personal email address was linked to the account. Therefore, the Complainant made efforts to reach the Respondent, through its attorney and directly, but without obtaining the needed information. Thereafter, on September 27, 2018, the Respondent transferred the disputed domain name to the current Registrar, causing to the Complainant a loss of website, email, and other communications as well as access to all systems connected to the disputed domain name and thus creating significant impact to the Complainant’s business.
The Complainant asserts that “Bella Terra Travel has been operating continuously using the <bellaterratravel.com> domain name since September 2004 under an unregistered common law trademark”, as it provides travel services for European travel specializing in France, Italy, and Spain. The Complainant explains that the name BELLA TERRA TRAVEL was chosen at formation to enable the Complainant to support travel across the globe and that the Complainant has been expanding outside of the mentioned three main countries in recent years and is planning to launch a campaign to support this effort. Such campaign was scheduled to launch on October 9, 2018 but was postponed due to the issue involving the disputed domain name.
The Complainant also claims that the Respondent would presumably use the disputed domain name for a travel experience, and that such use for this or similar purposes is an infringement of the Complainant’s rights, causing confusion in the marketplace and impacting the Complainant’s business.
The Complainant contends that the Respondent does not have rights to the disputed domain name and that transferring it to another registrar and intentionally restricting access to the disputed domain name by the Respondent is an act of conversion.
The Complainant points out that the disputed domain name remained in continuous use until it was hijacked October 3, 2018, and that the Respondent does not have the right to use, sell, or profit in any way from the disputed domain name.
The Complainant states that the disputed domain name has been registered by the Respondent in bad faith since, during its departure from the Complainant, the Respondent repeatedly indicated that it wanted to “kill the business”. Moreover, on October 3, 2018, the Respondent indicated in an email to the Complainant its intention to provide the disputed domain name to someone other than the Complainant seemingly for profit and in retaliation for its departure from the business.
The Complainant stresses that the disputed domain name was intentionally hijacked and kept from the Complainant, and that the DNS servers were redirected without warning almost immediately after the Respondent sent the above-cited email to the Complainant. It thus concludes that the transfer of the disputed domain name to the current Registrar and the redirection of the same to a web page providing information about the Spanish town Bellaterra were done intentionally to disrupt the Complainant’s business.
The Respondent confirms that he registered the disputed domain name in its name prior to the creation of the Complainant and that it has continued to keep it in his name ever since, even after he left the Complainant’s company in 2015.
The Respondent also states that the terms of the contract for its departure from the Complainant were defined by the Complainant and did not mention the disputed domain name, that his wife is not related to the disputed domain name, and that he has now decided to use the disputed domain name for other purpose.
The Respondent further denies the Complainant’s claims of its willingness to “kill” the business and states that the disputed domain name does not infringe any trademark.
He also notes that several other entities out there could claim interest in the disputed domain name, such as “BellaTerra Travel Group”, “Terra Bella Travel”, and the city of Bellaterra.
The Respondent asserts that it was his wife who originally created the company and was working alone for about 8 years, being financially helped by the Respondent and the current members of the Complainant. When the Respondent and his wife moved to Asia, the other members of the Complainant started to get more and more involved in the company and, in the end, the Respondent’s wife was pushed out of the company which was taken over by the other members.
The Respondent submits that the disputed domain name is not currently used for commercial purpose but only to provide information about the city of Bellaterra. The Respondent states that he did not receive compensation for it and that he has no plans to change the current use.
The Respondent further claims that the disputed domain name is not for sale or rent, that he has no intentions to sell it to anyone, and that he has no plan to compete against the Complainant and its website “www.travelbellaterra.com”, as he is currently working in a company active in a different field.
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Complainant relies on common law trademark rights over the name BELLA TERRA TRAVEL, stating that the sign has been used continuously to promote the namesake business since September 2004 in connection with the Complainant’s travel services in France, Italy and Spain.
As stated in Section 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. […] Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning.”
The Panel has reviewed the documents and statements submitted by the parties in details and notes that the Complainant has not submitted evidence highlighting the use of the sign BELLA TERRA TRAVEL either online or offline apt to demonstrate that the sign has become a distinctive identifier which consumers associate with the Complainant’s services. Indeed, the Complainant has submitted only financial records showing payments for some renewals of the disputed domain names, a letter signed by the Respondent showing a logo BELLA TERRA TRAVEL, and limited correspondence with the Respondent showing the Complainant’s use of email addresses based on the disputed domain name.
In view of the above, and since the Panel finds that the Complainant has also not provided evidence of ownership of unregistered or common law trademark rights for BELLA TERRA TRAVEL, the Panel finds that the Complainant has failed to demonstrate that the disputed domain name is identical or similar to a trademark in which it has rights according to paragraph 4(a)(i) of the Policy.
Beyond this, given the prior relationship between the Parties, there is insufficient evidence in the case file to come to a conclusion. Noting also the claim to an action for conversion, this case seems appropriate for the Parties to address in court.
For the foregoing reasons, the Complaint is denied.
Date: January 6, 2019
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