Endebe Catalana S.A. v. Andrew Codina
Claim Number: FA0111000102636
The Complainant is Endebe Catalana, S.A., Barcelona, SPAIN (“Complainant”) represented by Josep Carbonell Callico. The Respondent is Andrew Codina, Stoneheaven, Aberdeemshire, UK (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bultaco.net>, registered with Network Solutions, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Panelist is Judge Karl V. Fink (Retired).
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on November 29, 2001; the Forum received a hard copy of the Complaint on December 12, 2001.
On November 30, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <bultaco.net> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 12, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 2, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on December 31, 2001.
On January 18, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Karl V. Fink (Retired) as Panelist.
The arbitrator entered an order dated January 24, 2002 requesting that Respondent translate into English any portion of his Response and any documents he wanted considered by the Panel that were originally submitted in Spanish. Pursuant to that order the Respondent did submit the English translation of some of the documents that he had previously submitted.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
Complainant is a company which is composed of the ten sons of Mr. Francisco Xavier Bultó Marqués, known in the motorcycle field as “Mr. Paco”.
The Spanish company Endebe Catalana, S.L. is the owner of numerous Spanish national trademarks of the name “BULTACO”. The first trademark was registered in 1959. Complainant has also has trademarks containing the name BULTACO or BULTACO CEMOTO in numerous other countries.
Respondent registered the domain name in question to promote another motorcycle’s trademark and to prevent Complainant from the use of the domain name. The web site using the domain name <bultaco.net> refers individuals to a site promoting a different brand of motorcycle.
Respondent’s Response does not address the issues before the Panel.
On April 15, 1999, Endebe Catalana, S.L. and Mr. Marc Teissier signed a contract, which is in effect, in which Mr. Teissier was granted the right to use the BULTACO trademark to produce certain motorcycles. Mr. Teissier was granted the right to have domain names using the name BULTACO TRIO and BULTACO ENDURO.
Complainant has not attached any communication requesting Respondent to close or transfer the domain name.
There is a lawsuit pending between Endebe Catalana and Mr. Teissier, which complains about the use by Mr. Teissier of the <bultaco.net> domain name through a figurehead who is Respondent in this action. That lawsuit will decide the issue of whether Mr. Teissier has the right to use the <bultaco.net> name.
The domain name was registered on December 16, 1997. The majority of Complainant’s trademarks of BULTACO were granted after the domain name was registered.
C. Additional Submissions
As noted above, on request of the Panel, Respondent resubmitted some of its original documents after having them translated into English.
For the reasons set forth below, the Panel finds that Complainant has proven each of the necessary elements to have the name transferred to Complainant.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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 requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has rights in the BULTACO trademark due to its ownership of several BULTACO trademarks around the world, with BULTACO trademarks registered at the Spanish Patent and Trademark Office since 1959. Complainant also contends it has rights due to its wide commercial use of the BULTACO name in relation to its motorcycles and motorcycle accessories. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which a Respondent operates. It is sufficient that a Complainant can demonstrate a mark in some jurisdiction).
The Panel finds that the <bultaco.net > domain name is confusingly similar to Complainant’s BULTACO trademark because the disputed domain links to a motorcycle website and Complainant’s trademark was registered and used in relation to motorcycles and accessories. As a result, the public is likely to associate the domain with Complainant. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant …the Respondent is attracting Internet users to a website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, or endorsement of the Respondent’s website).
The disputed domain name is identical to Complainant’s mark because the addition of a top-level domain like “.net” does not sufficiently distinguish the domain from Complainant’s registered trademark for purposes of finding them identical. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark).
Complainant has proven this element.
Respondent is not commonly known by the “BULTACO” name or the disputed domain name and therefore, has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Respondent’s knowledge of Complainant’s use of the BULTACO name, combined with its use of an identical domain name is evidence that Respondent was using the disputed domain to divert Internet users interested in Complainant’s motorcycle products to its own motorcycle website. This is not a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
Respondent does not assert that it has a right or legitimate interest in the name, rather it asserts that someone else has been granted the right to use the term BULTACO and, therefore, Complainant has no right to prevent Respondent’s use of the domain name.
Respondent has not shown it has any legitimate interest in the domain name and, therefore, Complainant has proven this element.
Respondent’s activity may be determined to be bad faith, even if its does not fall under any of the specific circumstances listed under Policy ¶ 4(b). See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith”).
Respondent has demonstrated bad faith use and registration by registering and using a domain name that is likely to be falsely associated by Internet users with Complainant’s business. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
Complainant’s mark is well known, and it is inevitable that Internet users would associate Complainant with Respondent’s site. Respondent’s registration and use of the confusingly similar domain name suggests opportunistic bad faith. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the domain name would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use); see also Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name “singaporeairlines.com” is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith. Indeed, it is hard to imagine a more blatant exercise in ‘cybersquatting.’”).
Complainant has proven this element.
Complainant has proven each of the required elements and, therefore, it is ordered that the domain name, <bultaco.net>, be transferred to Complainant.
Judge Karl V. Fink (Retired) Panelist
Dated: February 15, 2002
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