Automóviles de Luarca, S.A. v. NUCOM, Domain Name Brokers

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Automóviles de Luarca, S.A. v. NUCOM, Domain Name Brokers

Case No. D2005-0282

1. The Parties

The Complainant is Automóviles de Luarca, S.A., Gijón, Spain, represented by

Ernst & Young Abogados S.L., Madrid, Spain.

The Respondent is NUCOM, Domain Name Brokers, Inverness, United Kingdom of

Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <alsa.com> (‘Disputed Domain Name’)

is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration

and Mediation Center (the “Center”) on March 18, 2005. On March 22, 2005,

the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com

a request for registrar verification in connection with the domain name at issue.

On April 11, 2005, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by

email to the Center its verification response confirming that the Respondent

is listed as the registrant and providing the contact details. The Center verified

that the 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 April 12, 2005. In accordance with the Rules, paragraph

5(a), the due date for Response was May 2, 2005. The Response was filed with

the Center on April 21, 2005.

The Center appointed Hub. J. Harmeling as the Sole

Panelist in this matter on May 13, 2005. 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

The facts relevant to the current dispute are set

out in the Complaint and the Response. Considering the evidence submitted, the

Panel finds the following facts to have been established.

The Complainant, Automóviles de Luarca, S.A., a company

incorporated under the laws of Spain, holds rights in ALSA (Spanish commercial

name) and A.L.S.A. (Spanish trademark). In 1996, the Complainant registered

the domain name <alsa.es>.

The Respondent, NUCOM, Domain Name Brokers, of Inverness,

UK, registered the disputed domain name <alsa.com> on January 31, 1999.

5. Parties’ Contentions

A. Complainant

First, the Complainant asserts that the disputed domain

name is identical to the Complainant’s ALSA mark. See Policy, paragraph

4(a)(i). The Complainant contends that ALSA is well-known internationally, specifically

in the European Union, and that the Complainant is commonly referred to by that

acronym. Without submitting supporting documents or further specification, the

Complainant states that it has obtained “some Community Trademarks and

International Trademarks” for this acronym. The Complainant states that

ALSA is one of the most well-known Spanish trademarks. In this respect, the

Complainant refers to a study carried out by an independent agency attached

to the Spanish Ministry of Economy and Finance. Finally, the Complainant states

that it is a “pioneer” in the use of the Internet in Spain, as it

registered the domain name <alsa.es.> on September 17, 1996, while the

opportunity to do so arose only one month earlier, on August 1, 1996.

Second, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Policy, paragraph 4(a)(ii). The Complainant states that the Respondent has no prior rights in or registered trademarks for ALSA and has never been known by the disputed domain name. According to the Complainant, the Respondent does not use the disputed domain name for any legitimate non-commercial or fair use without intent for commercial gain. Nor, asserts the Complainant, has the Respondent used, or demonstrably made preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.

Finally, the Complainant argues that the disputed

domain name was registered and is being used in bad faith. See Policy,

paragraph 4(a)(iii). Referring to a statement made in the Whois database to

the effect that the disputed domain name might still be available, and to what

the Complainant regards as the suspicious contact details of the Respondent,

the Complainant contends that the Respondent acquired the disputed domain name

primarily for the purposes of selling or leasing it for valuable consideration

in excess of its out-of-pockets costs. In support of that allegation, the Complainant

submits evidence that the disputed domain name resolves not to a functioning

website but to an announcement that the disputed domain name is available for

sale. Furthermore, the Complainant argues that the Respondent set “exorbitant”

prices for leasing or selling the disputed domain name when the cost of domain

name registration and annual renewal fees are taken into account. E-mail correspondence

attached to the Complaint shows that as in January 2004, in response to an inquiry

from the Complainant’s counsel, the Respondent said that the disputed

domain name could be purchased for 199,950 United States dollars or leased for

3,999 United States dollars per month. The Complainant also argues that since

the disputed domain name was registered more than three years after the Complainant

registered <alsa.es>, the Respondent could in the meantime have become

aware of the fame of the Complainant’s trademark or at least have known

about the Complainant’s business.

B. Respondent

The Respondent contends that the Complainant has no

worldwide trademark in or rights to the exclusive use of the ALSA name, in part

because the Complainant’s business is confined to a limited number of

countries. According to the Respondent, “hundreds of thousands of different

organizations, people and other entities” share those initials, and the

Complainant is not even the most famous among them. The Respondent provides

a list of 40 domain names registered by many different organizations, all consisting

of the letters “alsa” and a top-level domain name (e.g., <alsa.net>

and <alsa.cz>) and argues that there is nothing unique about the Complainant’s

registration of <alsa.es>. Emphasizing its argument that the Complainant

is not the most well-known company among those using the term “alsa”the

Respondent says that the Complainants’ website appears only ninth on the

list when “alsa” is used as a search term on Yahoo, and that five

of the websites ranked above it are related to “Advanced Linux Sound Architecture.”

According to the Respondent, this system is used by thousands of computer programmers

worldwide, one of whom is currently leasing the disputed domain name.1

Furthermore, the Respondent claims to have received more than 300 inquiries

concerning the disputed domain name, the “vast majority” of which

came from parties independent of the Complainant.

The Respondent says that

it registered the disputed domain name six years ago because of its short and

desirable combination of only four common letters, which made it “a highly

marketable domain name with many different possible end users.” The Respondent

claims that it did not know of the Complainant’s existence until the latter

made inquiries about acquiring the disputed domain name from the Respondent

in 2003. As the Respondent did not know about the Complainant’s existence

at the time of registration, the disputed domain name was not registered in

bad faith. Nor, according to the Respondent, has it been used in bad faith,

as the leasing or reselling of valuable generic or highly popular domain names

does not in itself constitute bad faith. According to the Respondent, the business

of leasing or reselling desirable domain names is performed by many large companies,

a contention the Respondent supports by referring to a website that provides

an overview of high-value domain name sales. Also, the Respondent emphasizes

that the Complainant approached it, and that the Respondent never made any unsolicited

approach to the Complainant. The Respondent asserts that the Complainant must

be aware that there are many other “end users” who would be interested

in the disputed domain name and that the Complainant probably commenced this

proceeding in order to obtain the disputed domain name at a price below its

fair market value.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the

following elements in order to obtain relief:

(i) The disputed domain name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the

disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad

faith.

The Complainant carries the burden of proof on each of these elements, see

Do the Hustle, LLC v. Tropic Web, WIPO

Case No. D2000-0624 (August 21, 2000), and they will be examined in turn

below.

A. Identical or Confusingly

Similar

The Panel finds that the Complainant has protected rights in the ALSA mark.

Previous panels have established that registration of a mark, irrespective of

where it is registered, gives a complainant rights in the mark within the meaning

of Policy, paragraph 4(a)(i). Because the “essence of the Internet is

its world wide access,” a respondent’s registration of a disputed

domain name may be challenged on the basis of its confusing similarity to a

mark registered in any country. See Thaigem Global Marketing Limited v. Sanchai

Aree, WIPO Case No. D2002-0358 (July 16, 2002);

Bennett Coleman & Co. Ltd. v. Steven S. Lalwani, WIPO

Case No. D2000-0015 (March 11, 2000).

Since the disputed domain name is identical to a mark in which the Complainant

holds rights (putting aside the .com TLD), the Panel finds the first element

to be established.

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent: (1) has no prior rights or registered

trademarks in the ALSA mark; (2) has never been known by the disputed domain

name; (3) does not use (and has not prepared to use) the disputed domain name

for the bona fide offering of goods and services (the offering of the

disputed domain name itself for sale or lease apparently not being “legitimate”

according to the Complainant); and (4) has not made any legitimate non-commercial

or fair use of the disputed domain name without intent for commercial gain.

The Panel finds that the Complainant has made a prima facie showing that

the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent therefore bears the burden of demonstrating the contrary. See

H.J.M De Vries, Leidseplein Beheer B.V. v. O.E.W. van der Zwan, WIPO

Case No. D2004-0174 (June 7, 2004).

The Respondent does not explicitly claim to have a legitimate interest, nor

does it refer to any of the “safe harbors” of paragraph 4(c) of

the Policy. Its main argument is directed to the third element of the Policy,

namely bad faith. In the interests of completeness and clarity, however, the

Panel notes that the thrust of the Respondent’s argument – that

there is nothing wrong with dealing for profit in domain names that have “many possible

end users” – could be regarded as implicitly claiming that such

dealing constitutes a legitimate interest in the domain names offered for sale.

There is some support for the position that domain name dealers have a legitimate

interest in descriptive, generic, or acronymic domain names that they offer

for sale, and some authority to the contrary. This Panel notes that even if

the reselling of this type of domain name constitutes a legitimate interest,

the Complainant still must establish the Respondent’s bad faith. On the

specific facts of this case, it has failed to do so, as will be explained in

the following section.

C. Registered and Used in Bad Faith

Prior decisions establish that the fact that the Respondent is a domain name

broker does not ipso facto mean that its registration and use of the

disputed domain name has been in bad faith. See, e.g., University

of Maryland University College v. NUCOM Domain Brokers & Urban Music Underground

Club, WIPO Case No. D2002-0081

(April 29, 2002) (<umuc.com>). The Complainant therefore must go beyond

proving that the Respondent is a domain name broker. Paragraph 4(b) of the Policy

mentions four circumstances that constitute evidence that the registration and

use of the disputed domain name had been in bad faith. Both the Complainant

and the Respondent focus on paragraph 4(b)(i), so the Panel will also direct

its attention to that paragraph.

Under that paragraph, the Complainant must show

circumstances indicating

that you [the Respondent] have registered or you have acquired the domain name

primarily for the purpose of selling, renting, or otherwise transferring the

domain name registration to the complainant who is the owner of the trademark

or service mark or to a competitor of that complainant, for valuable

consideration in excess of your documented out-of-pocket costs directly related

to the domain name.

(emphasis added). The Respondent admits that its purpose in registering the

disputed domain name was indeed selling or leasing it to others for a profit.

It argues, however, that because it did not know of the Complainant’s

existence or make an unsolicited offer to sell the disputed domain name to the

Complainant, it did not act in bad faith. The italicized words in the Policy,

taken literally, support the Respondent’s position, at least insofar as

paragraph 4(b)(i) is concerned.

This consideration raises the question whether the Policy is intended to distinguish

between a respondent who targets a particular trademark holder and one who registers

a domain name that he suspects will be “of interest” to many businesses,

at least some of which will presumably have protected rights in similar marks.

After considering the nearly unanimous views expressed by previous panels, the

Panel concludes that the circumstances of this case do not demonstrate bad faith

within the meaning of the Policy.

First, the Panel finds that the Complainant has failed to show that the Respondent

knew of the Complainant’s existence when it registered the disputed domain

name. The disputed domain name is a combination of four letters that might be

– and apparently is – used by many organizations in many countries.

Although the Respondent might be one of the best-known companies in Spain, that

does not prove that the Respondent in Scotland knew or should be deemed to have

known of the Complainant and its ALSA mark. The report submitted by the Complainant

does not mention the nationality of the people who were surveyed, and the study

reveals that spontaneous recognition of Spanish brands is weak in other countries.

The Complainant mentions that it has acquired European and international trademarks

but submits no supporting evidence. Finally, the Respondent has shown that many

parties use ALSA in their public activities, and there is nothing in the record

to show that Respondent was more likely to know of the Complainant than any

of those other parties.

Still, it could be argued that by registering this simple four-letter combination

for (as the Respondent admits) the very reason that many “possible end

users” use that combination as an acronym for business and other activities,

the Respondent has violated the rights of all of the entities that have cognizable

interests in the ALSA mark. That position has not been taken by the majority

of previous WIPO UDRP panels. Besides the <vz.com> and <umuc.com>

cases cited previously, the respondent also prevailed in a dispute over <kcts.com>.

See KCTS Television Inc. v. Get-on-the-Web Limited, WIPO

Case No. D2001-0154 (April 20, 2001). The Panel has found no prior decisions

taking the contrary view, at least not explicitly. In a dispute over <rbconline.com>,

the panel noted in the “Parties’ Contentions” section of the

decision the Respondent’s argument that thousands of companies shared

the initials “RBC,” but the panel did not address that argument

in the “Discussion and Findings” section of the decision. See

Royal Bank of Canada v. Namegiant.com, WIPO

Case No. D2004-0642 (September 21, 2004). Another panel two weeks ago ordered

the transfer of <itil.com>. In that case, however, the respondent failed

to file a response, and the panel credited the complainant’s evidence

that its mark had achieved worldwide prominence in the very industry in which

the respondent apparently functioned. See The Lords Commissioners of Her

Majesty’s Treasury v. ITIL International, WIPO

Case No. D2005-0230 (May 10, 2005). Indeed, that panel was presided over

by the same learned chairman who presided in the <umuc.com>, <vz.com>,

and <kcts.com> cases, reinforcing the point that the circumstances in

the <itil.com> case were exceptional. In the present case, as previously

discussed, there are no such circumstances, as the Complainant has not shown

any likelihood that the Respondent was aware of its existence.

Accordingly, the Panel does not find that the Complainant has proven registration

and use of the disputed domain name in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Hub J. Harmeling

Sole Panelist

Dated: June 9, 2005

1 There is an apparent factual conflict between the Complaint and the Response. The Respondent says the disputed domain name has been leased to a programmer involved in Advanced Linux Sound Architecture, while the Complainant says the disputed domain name resolves to a web page announcing “THIS DOMAIN NAME IS FOR SALE!” The parties’ inconsistent accounts may be only a matter of timing. Attached to the Complaint is a printout of “http://www.alsa.com” showing nothing but the offer for sale and the Respondent’s contact details. The printout is undated, however, and given the correspondence between the parties beginning in late 2003, it is conceivable that the printout was made as long as one year ago or more. Currently, the disputed domain name resolves to “http://www.alsa-project.org”, which is indeed a page about Advanced Linux Sound Architecture. It may well be, therefore, that the Respondent has leased the disputed domain name to a computer programmer; if so, it is not clear whether the lease occurred before or after the Complaint was filed or the Respondent otherwise had notice that the Complainant disputed the Respondent’s right to retain the registration. The Panel would like to emphasize, however, that the date when the disputed domain name was leased – or even whether it has in fact been leased at all – is not relevant to the Panel’s analysis.