Tonterias.com: registro y uso de mala fe, recuperación del dominio
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tonterias S.L v. Sina Taghi
Case No. D2008-0942
1. The Parties
The Complainant is Tonterias S.L, Spain, represented by Bufet Almeida, Abogados Asociados, Spain.
The Respondent is Sina Taghi, of Turkey.
2. The Domain Name and Registrar
The disputed domain name <tonterias.com> is registered with Register.com.
3. Procedural History
The Complaint (in Spanish) was filed with the WIPO Arbitration and Mediation Center (the “Center“) on June 20, 2008. On June 23, 2008, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name(s) at issue. On June 23, 2008, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the language of the proceeding was English, the Complainant filed a translated Complaint in English on June 26, 2008. The Center verified that the translated Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy“), 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 July 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2008
The Center appointed Adam Taylor as the sole panelist in this matter on August 8, 2008. 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
Since 2000 the Complainant has operated a Spanish website at the disputed domain name which enabled users to upload videos and images of “strange and funny situations“. The Complainant asserts it has unregistered trade mark rights to the term "tonterias."
On or before May 23, 2008, the Respondent hijacked the disputed domain name, i.e. it gained control of the disputed domain name without the Complainant’s permission.
On May 23, 2008, the Respondent contacted a Mr. Povedano (described by the Complainant as a webmaster of a number of websites but apparently unconnected with the Complainant) via an online chat facility. The Respondent offered to sell the domain name for $10,000. On the same date, the Respondent sent an email to Mr. Povedano with its bank details.
On May 24, 2008, the Respondent emailed the Complainant directly saying “Hello, Tonterias.com is for sale ;)“.
The Complainant says that, on the same date, the Respondent connected the domain name to a parking page (though there is no printout evidencing this). It seems that on May 25, 2008, the Complainant arranged for its website to be resurrected at the domain name with the help of the company which owned the domain name servers to which the domain name had been moved by the Respondent.
5. Parties’ Contentions
Identical or Confusingly Similar
The disputed domain name is identical or confusingly similar to the Complainant’s trade mark TONTERIAS.
The name “Tonterias.Com“ is very well-known in Spain.
In September 2000, the site was described as one of the most visited Spanish humour websites in the El Mundo Newspaper.
A 2006 article on “www.noticiasdot.com“ refers to the Complainant as having an average of 90,000 daily visitors and 18,000 subscribers to newsletters.
In May 2007 the website was listed in position 3654 in the Alexa.com ranking of most visited websites.
The site featured on the national TV channel CANAL + in September 2007.
After the unauthorized transfer of the domain name became known, the issue was discussed on hundreds of blogs and other websites in Spain.
Rights or Legitimate Interests
The Respondent has no interest in the domain name other than benefiting from the Complainant’s reputation and making a large amount of money from its sale.
The only preparations made by the Respondent in connection with the domain name were to try and sell it to the original and legitimate owner of the domain name.
The Respondent owns no relevant registered trade mark and it is impossible that the Respondent has ever been known by the disputed domain name.
Registered and Used in Bad Faith
The Respondent gained control of the disputed domain name by usurping it in bad faith and without the authorization of the Complainant, the legitimate owner. The Respondent tried to sell the domain name and misleadingly diverted potential customers by pretending to be the Complainant.
Furthermore, the Respondent emailed the Complainant directly offering the domain name for sale.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant relies on unregistered rights.
Paragraph 1.7 of the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions“ addresses the question of what is needed to successfully assert common-law or unregistered trademark rights. The consensus view is stated as follows: “The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition … Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.“
The Complainant claims that it is very well-known in Spain by reference to the names “Tonterias“ and “Tonterias.Com“.
The term “tonterias“ means “nonsense“ in Spanish and is therefore somewhat descriptive. The Complainant has not provided hard evidence such as turnover or market spending - which one might have expected when arguing acquired distinctiveness in a case such as this.
On the other hand, the evidence put forward does indicate that the Complainant has been operating its site for some eight years and that “Tonterias.Com“ is indeed a household name in Spain. Amongst other things there is evidence of extensive coverage in national media in Spain, daily visitors to the site in the tens of thousands and major coverage on Spanish websites and blogs once the hijacking of the disputed domain name became known.
Furthermore, the Respondent has not filed a response denying the Complainant’s assertions.
In these circumstances, the Panel is prepared to conclude that the Complainant has acquired unregistered rights in the term TONTERIAS.COM.
The disputed domain name is identical to the Complainant’s trade mark and the Complainant has therefore established the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.
Clearly the Complainant has not licensed or otherwise authorized the Respondent to use its trademark.
As to paragraph 4(c)(i) of the Policy, the domain name has not been used by the Respondent for a bona fide offering of goods or services; indeed it is difficult to see how any use of the domain name by the Respondent could be said to be bona fide given the circumstances in which it acquired the domain name.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of the Policy.
C. Registered and Used in Bad Faith
It is well-settled that the practice of wrongfully taking control of a domain name from the rightful name holder is of itself evidence of the bad faith use and registration of a domain name. See, eg, JAI A/S v. Site Services International, Richard Sorensen, WIPO Case No. D2007-1685.
While it is not clear exactly how it was done, the disputed domain name has clearly been hijacked by the Respondent, and was shortly thereafter offered for sale back to the Complainant.
The Panel has no doubt that this constitutes registration and use in bad faith.
The Panel therefore finds that the Complainant has established the third element of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <tonterias.com> be transferred to the Complainant.
Dated: August 22, 2008