Club Bolivar v. Megalink SRL
Claim Number: FA0911001295131
Complainant is Club Bolivar (“Complainant”), represented by Diana Becerra, Florida, USA. Respondent is MegaLink SRL (“Respondent”), Bolivia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clubbolivar.com>, registered with Tucows 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 17, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 19, 2009.
On November 18, 2009, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <clubbolivar.com> domain name is registered with Tucows Inc. and that the Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. 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 November 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 14, 2009 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 14, 2009.
An Additional Submission was received from Complainant on December 18, 2009. A timely Additional Submission was received from Respondent on December 23, 2009.
On December 21, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Club Bolivar is a successful Bolivian football team which has held a registered trademark for its name since 1981. Complainant contends that the <clubbolivar.com> domain name is identical to its CLUB BOLIVAR mark. Complainant contends that Respondent is not authorized to use its mark. Given the popularity of Club Bolivar, Complainant states that Respondent would have had actual or constructive knowledge of the CLUB BOLIVAR mark at the time the domain name was registered in 2000.
Complainant sent a cease and desist letter to Respondent on September 21, 2009. Shortly thereafter Respondent discontinued using the site. Subsequently, Respondent reactivated the site.
Respondent does not dispute that the domain name is identical to Complainant’s mark. Respondent states that there can be no confusion that the domain name in dispute is the official site of the football team because there is a disclaimer on the site. Respondent states that the site is not trying to compete with the football team but to support the team because Respondent’s representative, Javier Galvez, is an ardent fan of the team. Respondent claims to be making a proper use of the domain name as the site offers, for example, news and a forum to “chat” about the team. Respondent states that on the site “there is absolutely no goods being sold, nor any services sold . . . related to the trademark.”
C. Additional Submissions
In its Additional Submission Complainant states that Respondent’s disclaimer “is very small and is located in the left side of the page and in order for users to see it, users will have to scroll all the way down the page.” Complainant states that Respondent’s website displays several Google ads. Complainant contends that Respondent must necessarily be receiving revenue from click-through fees.
Respondent’s Additional Submission states that Respondent will put a disclaimer on every page of the site if necessary. Respondent has also now made a reference in the site to the “Official Club Bolivar” website. Respondent states that the use of the CLUB BOLIVAR mark in the domain name should not give “rise to a serious problem” because Complainant waited many years to bring this Complaint. Respondent contends that the placement of Google ads establishes his legitimate interest in the domain name. Respondent contends that the Complainant wants to have a new website and that the “easiest way to do so is to deprive . . . Respondent of its domain name.”
Complainant has established rights in the CLUB BOLIVAR mark through its trademark registration with the Bolivian National Service for Intellectual Property (“SENAPI”) (Reg. No. 73195-C, issued November 26, 1981). Because Respondent has placed ads on the site, and presumably receives click-through fees from third-parties, Respondent has not established a bona fide fan site.
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 established rights in the CLUB BOLIVAR mark for the purposes of Policy ¶ 4(a)(i) through its trademark registration with the Bolivian National Service for Intellectual Property (“SENAPI”) (Reg. No. 73195-C, issued November 26, 1981). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s <clubbolivar.com> domain name is identical to its CLUB BOLIVAR mark. The disputed domain name differs from Complainant’s mark only in that the space has been removed and the generic top-level domain (“gTLD”) “.com” has been added to the end of the mark. Removing a space does nothing to distinguish a domain name from the mark. Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i).
Accordingly, the disputed domain name is not sufficiently distinguished from, and is identical to, Complainant’s CLUB BOLIVAR mark pursuant to Policy ¶ 4(a)(i).
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”).
In its Complaint, Complainant contends that Respondent is not commonly known by the <clubbolivar.com> domain name, nor has it ever been the owner or licensee of the CLUB BOLIVAR mark. The WHOIS record for the disputed domain name identifies Respondent as “Megalink SRL.” Although Respondent claims that “as an individual [he] has been commonly known by the domain name,” Respondent has offered no evidence to support this assertion. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See America W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
The primary argument in support of the position that Respondent has a legitimate interest in the domain name is the contention that the resolving site is a bona fide fan site. But Complainant points out that ads appear throughout the site which indicate that Respondent likely receives click-through fees from these commercial hyperlinks. The majority view is that to be considered a bona fide fan site there must be no commercial activity involved. E.g., Universal City Studios, Inc. v. David Burns and Adam-12 Dot. com, D2001-0784 (WIPO Oct. 1, 2001; see generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions ¶ 2.5.
This principle is consistent with the general rule that the misdirecting of internet users to third-party websites with the presumptive collection of “click-through” fees from the third-parties does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisified.
Complainant contends that Respondent gains commercially from the diversion of Internet users to the website that resolves from the disputed domain name. Complainant has pointed out that Respondent has placed links to third-party websites on the website that resolves from the disputed domain name, and is undoubtedly collecting “click-through” fees from those websites. Thus, the Panel finds that Respondent is using the disputed domain name for commercial gain through creating a likelihood of confusion with Complainant’s mark; thus, pursuant to Policy ¶ 4(b)(iv), the Panel finds that this use is evidence of Respondent’s registration and use in bad faith. See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
Respondent asserts that because the Complainant has waited nine years since the registration of the domain name to initiate this proceeding, Complainant must not truly believe the Respondent is causing harm to the Complainant. Thus, Respondent contends that bad faith has not been established. Although it is possible to infer that Complainant was aware of the disputed domain name well before it filed the Complaint, there is nothing in the record to substantiate such knowledge on the part of the Complainant. Because the Policy has no express time bar or statute of limitations, the Panel is not prepared to hold, on this record, that the delay in initiating this proceeding should defeat the Complaint. Moreover, the doctrine of laches, which some panels have found not applicable in UDRP proceedings, see, e.g., E.W. Scripps Co. v. Sinologic Ind., D2003-0447 (WIPO Jul. 1, 2003); Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum, Dec. 29, 2003), requires that the party asserting laches show prejudice. Here, Respondent claims to be a strong fan and supporter of Club Bolivar. It would be difficult for Respondent to show prejudice if Respondent’s presumably charitable work in supporting the team would ultimately inure to the benefit of the team.
Respondent’s use of a disclaimer is also not a defense. “The existence of a disclaimer cannot cure bad faith, when bad faith has been established by other factors.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions ¶ 3.5.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clubbolivar.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 11, 2010
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