INFORMATIZACION DE EMPRESAS, S.L.U. (IESA) v. Soluciones Corporativas IP, c/o Whois Proxy et al.
Claim Number: FA2012001925314
Complainant: INFORMATIZACION DE EMPRESAS, S.L.U. (IESA) of Madrid, International, Spain.
Complainant Representative:
Complainant Representative: ROEB Y CÍA, S.L. of Madrid, Spain.
Respondent: Whois Privacy Service Protects this domain / Soluciones Corporativas IP, c/o Whois Proxy of Manacor, Illes Balears, International, ES.
Respondent Representative:
REGISTRIES and REGISTRARS
Registries: Charleston Road Registry Inc.
Registrars: Soluciones Corporativas IP, SL;
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
James Bridgeman, as Examiner.
Complainant submitted: December 17, 2020
Commencement: December 17, 2020
Default Date: January 4, 2021
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The Complainant is engaged in the provision of real estate and property management and has adduced clear and convincing evidence of its ownership of
Spanish registered trademark TUCOMUNIDAD.COM EL PORTAL DE TU COMUNIDAD (mixed word, colour and figurative) registration number TM3.622.977 filed on July 12, 2007 for goods and services in classes 9, 36, 38, 42.
The Complainant asserts but has not provided any evidence of its ownership of the five other Spanish trademarks containing the word “TUCOMUNIDAD”:
TM4.038.085 “TUCOMUNIDAPP”, TM4.066.116 “TUCOMUNIDAD.COM”, TM4.065.890 “TUCOMUNIDAD”, TM4.097.865 “TUCOMUNIDAD.APP” and TM4.097.851 “TUCOMUNIDAD.APP”.
The disputed domain names <comunidad.app> was registered on May 8, 2020 and the registrant avails of a proxy service to conceal his or her identity and resolves to a web location with a prominent banner that states: “TUCOMUNIDADAPP por y para administradores y propietarious de edificios”..
The disputed domain name <tucomunid.app> was registered on May 6, 2020 and resolves to a web location with content relating to property services.
The disputed domain name <tucomunidad.app> was registered on March 12, 2020 and resolves to a web location with property related content.
Each of the web locations to which the disputed domain names resolve, prominently contain links to a well-known third-party owned Internet shopping website.
There is no information available about Respondent except for that provided in the Complaint. Respondent has not filed any Response.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
Complainant has adduced clear and convincing evidence of its ownership of the abovementioned trademark registration and its use of the the term “TUCOMUNIDAD” for what it describes as a “Spanish public a technological project” providing a portal application that manages more than 150.000 neighbours’ communities and 3.000 firms.
The trademark rights relied upon by Complainant are very specific in that Spanish registration number TM3.622.977 is a combination of word, color and a figurative device.
Nonetheless, the disputed domain names <tucomunid.app> and <tucomunidad.app> are identical to the word element in the Complainant’s mixed trademark and as it is well established that the bar for determining confusing similarity should not be set high when applying the test in Policy paragraph 4(a)(i).
This Panel finds that the disputed domain names <tucomunid.app> and <tucomunidad.app> are confusingly similar to the trademark in which Complainant has rights.
The disputed domain name <comunidad.app> however is a generic term and this Panel finds that it is not confusingly similar to Complainant’s trademark. To find otherwise would be to find that Complainant has the exclusive right to use the word “comunidad”, which would be too far to stretch the leniency normally allowed when applying Policy paragraph 4(a)(i). Complainant may have a remedy in another Forum.
This Panel finds that the Complainant has not established that the disputed domain name <comunidad.app> is confusingly similar to the mark in which Complainant has rights.
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names <tucomunid.app> and <tucomunidad.app> which shifts the burden of production to Respondent to prove his or her rights. There is no evidence that Respondent is known by the disputed domain name and the evidence adduced illustrates that Respondent isusing the disputed domain names without aurhtority to present online content that gives the false impression that the disputed domain names are in some was associated with Complainant. Respondent has failed to meet the burden of production to show he or she has any rights in either <tucomunid.app> and <tucomunidad.app>.
The evidence adduced shows that Respondent has without licence or authority registered the disputed domain names <tucomunid.app> and <tucomunidad.app> which are being used to attract Internet traffic to a web location that presents the Internet user with links to a third party Internet shopping website. This is clear and convincing evidence that the domain names <tucomunid.app> and <tucomunidad.app> were registered and are being used in bad faith.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration:
<tucomunid.app> and <tucomunidad.app>.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be RETURNED to the control of Respondent: <comunidad.app>.
James Bridgeman, Examiner
Dated: January 04, 2021
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