Sport.cat : Catalunya domain lost in trademark dispute

Directnic

UDRP result: Transfer domain.

Catalunya is seeking independence from Spain, and the domain Sport.cat has been lost via the UDRP process.

The Complainant is Ediciones Deportivas Catalanas, SA, domiciled in Barcelona, ​​Spain, represented by EMME & PI, Spain.

They possess a number of trademarks for “SPORT” and “SPORTS” dedicated to the edition of books, magazines and newspapers, among which the sports newspaper SPORT stands out. They operate Sport.es among other domain names.

The Respondent stated that it never intended to sell the disputed domain name, Sport.cat, but “fell into the trap” of responding to a reckless, derisory, offer of EUR 600 from the Claimant to acquire the disputed domain name.

Respondent’s counter-offer was a minimum of 200,000 euro and that might have sealed the case.

Manuel Moreno-Torres, sole panelist at the WIPO, ordered the domain Sport.cat to be transferred to the Complainant.

Full details on this decision follow.

Ediciones Deportivas Catalanas, SA c. Whois Privacy Service / Daniel Va Moreno

Case No. D2017-1090

1. The Parties

The Complainant is Ediciones Deportivas Catalanas, SA, domiciled in Barcelona, ​​Spain, represented by EMME & PI, Spain.

The Respondent is Whois Privacy Service, domiciled in Manacor, Spain / Daniel Va Moreno, domiciled in Gerona, Spain, represented by Manuel de Luque Abogados.

2. The Domain Name and Registrar

The Complaint is about the disputed domain name <sport.cat>.

The disputed domain name registrar is Corporate Solutions IP, LLC.

3. Procedural Iteration

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2017. On June 2, 2017, the Center sent a request for registration verification to the Registrar by email. Domain name in dispute. On June 5, 2017, the Registrar sent to the Center, by e-mail, its reply, revealing the registrant and contact information of the disputed domain name, which differ from the respondent’s name and the contact information indicated in the Complaint. The Center sent an electronic communication to Claimant on June 7, 2017, providing the registrant and the contact details disclosed by the Registrar, and inviting the Claimant to make an amendment to the Complaint. The Claimant filed an Amended Complaint on June 12, 2017.

The Center verified that the Complaint along with the Amended Complaint (hereinafter collectively referred to as the “Complaint”) met the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the The Uniform Domain Name Dispute Resolution Policy (the “Regulation”), and the Additional Regulation of the Uniform Domain Name Dispute Resolution Policy (the “Additional Regulation”).

In accordance with paragraphs 2 and 4 of the Rules of Procedure, the Center formally notified the Respondent of the Complaint, initiating proceedings on June 16, 2017. In accordance with paragraph 5 of the Rules of Procedure, the Complaint was July 6, 2017. The Writ of Answer to the Complaint was presented to the Center on July 6, 2017.

The Center appointed Manuel Moreno-Torres as sole member of the Administrative Group of Experts on July 24, 2017. The Expert considers that his appointment conforms to the rules of procedure. The Expert has submitted the Declaration of Acceptance and Impartiality and Independence, as requested by the Center in accordance with paragraph 7 of the Regulations.

In accordance with Articles 10 and 11 of the Regulations on the General Powers of the Expert and on the language of the procedure, the writ of Complaint and answer to the Complaint in Spanish is accepted and, therefore, this language in which the Decision is issued .

4. Background of Fact

The Claimant is dedicated to the edition of books, magazines and newspapers, among which the sports newspaper SPORT stands out.

The Claimant is the owner, among others, of the following marks:

Spanish Patent and Trademark Office (“OEPM”)

2.650.353

SPORT MOTOR

April 27, 2005

SPTO

2,436,128

SPORT

October 26, 2001

SPTO

2,312,380

SPORT

April 12, 2000

SPTO

2,056,170

SPORT CATALA

November 6, 1996

SPTO

1,234,254

SPORT MAGAZINE

February 15, 1988

SPTO

1,146,671

SPORT PHOTO

May 14, 1986

The Claimant is the owner of the following domain names in relation to the SPORT sign: <sport.es>, <sport-english.com>, <sport-japanese.com> and <sportcasino.es>.

The disputed domain name <sport.cat> was registered on May 13, 2013. The disputed domain name is used to host a web page that has a link to the Google Play platform where you can download an application Called ” Finger Futbol “.

5. Arguments of the parties

A. Plaintiff

The Claimant alleges identity between the marks of its ownership and the disputed domain name <sport.cat>. In addition, it states that SPORT enjoys the value of a renowned brand. It provides a printed copy of the first pages of the digital versions of the newspaper in Spanish, English and Japanese, Internet traffic data of the digital version that ascends monthly to more than seven million visitors, corresponding to Spain more than four million, as well as Documentary published by the Office of Justification of the Diffusion in relation to the year 2016 that show a publication data of 42,235 copies of daily circulation with a market share equivalent to 13% in Spain and 35% in Catalonia.

It also provides other supporting evidence which, according to the Claimant, confirms the renowned value of its SPORT brand. Thus, on the international digital presence especially with editions geolocalized in certain Latin American countries, on their presence in social networks (Facebook, Twitter, Instagram, Google plus or Diario Port on Youtube), on the programs that have in the audiovisual area making informative Newspapers, weekly gatherings or radio programs with retransmissions via streaming matches of FC Barcelona. It also provides evidence on mobile applications (” apps “) to promote their activities as well as evidence of certain activities sponsored by the newspaper SPORT as the Catalan Sports Festival or the FC Barcelona Campus.

Moreover, the Claimant insists that none of the cases provided for in paragraph 4.c) of the Policy that can be considered as legitimate ownership of the Respondent. Respondent asserts that the Respondent does not use the disputed domain name in relation to a bona fide offer of goods or services because its intention is to mislead consumers in an equivocal manner, taking advantage of the prestige of its brand. Therefore, the Internet user accessing the website hosting the disputed domain name will be redirected to the Google Play platform where you can download the app called ” Finger Futbol ” owned by the foreign company “Simplifidenet Limited”.

Likewise, in relation to this second requirement, it is considered that it is not established that Simplifidenet Limited is commonly known by the term “sport” or that Defendant Daniel Va has legitimate rights or interests in the use of the term “sport”. Nor is it known that any of the above are holders of a Spanish, Community or international brand incorporating the name “sport”. It further concludes by claiming that the Claimant has not granted a license agreement authorizing third parties to register the disputed domain name or to use the SPORT trademark as a domain name.

As regards the third of the requirements, the Claimant bases its request on the fact that at the time of registration of the disputed domain name the SPORT brand was renamed and the Respondent, without having any right, proceeded to register. In addition, it considers that the use of the disputed domain name is in bad faith because its only purpose is to generate confusion as to the business origin of the web page and thus achieve an improper use of the reputation and reputation of the SPORT brand for Attract Internet users.

Insists that in addition to reproducing the SPORT trademark in the disputed domain name the Respondent reproduces the trademark image on the web. This circumstance causes Internet users to mistakenly believe that both the web page and the app promoted on it are in some way related to the Claimant.

And finally, the Claimant states that the Respondent only intended to profit from the sale of the disputed domain name. In that sense it provides a set of emails in which the Respondent states among others that “I would only disengage from it if I received a large sum of money, not less than 200,000 euros.”

B. Respondent

The Respondent acknowledges that the disputed domain name <sport.cat> fully reproduces the trademark of the SPORT Claimant but denies that such generic terms such as the word “sport” Any physical activity exercised as a game or competition whose practice involves training and subjection to rules.

He states that despite the abundant documentation presented to support the renowned character of the SPORT brand, the fact is that it does not constitute proof that the disputed domain name <sport.cat> was essential to its business strategy. Proof of this is that the domain name in dispute was free in the year 2013 when it registered.

He denies that the reason for the registration of the disputed domain name was to attract Internet users to the website of his property creating confusion in the users and consumers for profit. On the contrary, he shows himself to be an entrepreneur in the areas of software programming, web development and programming, marketing, SEO, ASO and design that have materialized in the ” Finger Futbol ” application and the “www.scorescenter.com” beta.

The Respondent considers that the Complainant is obstructing its business activity and that the allegations that the purpose of registering the disputed domain name is to profit from the traffic derived from the Complainant’s domain name <sport.es> .

As regards the second of requirements, it considers that the Respondent has provided evidence justifying the demonstrable preparations for using the contested domain name in relation to a bona fide offer of its products and services. Among them, says to be the application ” Finger Futbol “. Therefore, the real intention is to implement a business project dedicated to the sport directed to the Catalan community.

Furthermore, it denies that there was any intention to confuse consumers or tarnish the SPORT brand. He notes that the Irish company Simplifidenet Limited owns and owns the application ” Finger Futbol ” that is promoted and downloaded on the web “www.sport.cat” without obtaining any economic benefit.

And the Respondent concludes that it never intended to sell the disputed domain name <sport.cat>. It fell into the trap of responding to a reckless, derisory, offer of EUR 600 from the Claimant to acquire the disputed domain name with a response that referred to an exorbitant figure. Therefore, it denies having speculated but simply merely answered in similar terms to the reckless bid of the Claimant.

6. Debate and conclusions

Pursuant to paragraph 4 (a) of the Policy, we proceed to analyze whether the following requirements are met:

(I) that the disputed domain name is identical, or similar to the point of creating confusion to a mark of goods or services over which the Claimant has rights;

(Ii) that the Respondent has no legitimate rights or interests with respect to the domain name;

(Iii) that the disputed domain name has been registered and is being used in bad faith.

In order to have criteria for interpreting the circumstances existing in this case, the Expert will resort to interpretations made mainly in previous decisions agreed within the framework of said Policy, as well as in the Synopsis of the opinions of the expert groups On certain issues related to the UDRP Policy , third edition (“Synopsis prepared by WIPO 3.0”).

A. Identity or similarity to the point of causing confusion

The Claimant has provided sufficient and forceful documentation to demonstrate ownership of the SPORT trademark.

It is a doctrine established in previous decisions under the Policy that the analysis of this first requirement refers exclusively to the comparison between the trademark and the disputed domain name and that when the trademark is recognizable the requirement is fulfilled (see Synopsis prepared by WIPO 3.0 , section 1.7 ).

Moreover, in general, the analysis does not take into account the generic first level domain of the disputed domain name, in this case “.cat”.

Thus, the analysis of this first requirement must be made between the Claimant’s SPORT mark against the Respondent’s disputed domain name <sport.cat>. Obviously, when the Complainant’s trademark is reproduced in full in the disputed domain name, identity exists.

As aforesaid, the identity between the contested domain name and the trademark of the Complainant complies with this first requirement in the terms of paragraph 4 (a) (i) of the Policy.

B. Rights or legitimate interests

It is proven in the record that the Claimant has not in any way authorized the Respondent to use its trademark as a domain name. Likewise, it has been proven that the company “Simplifidenet Limited” of which the Respondent claims to own, has not been known in the market under the term “sport”. It has also been proven that the Respondent or its mercantile company lack trademark rights over said term.

In addition, Claimant considers that the Respondent’s activity does not fit into the assumption in paragraph 4 (c) (iii) of the Policy as there is no evidence of the use of the disputed domain name or demonstrable preparations for its use, Relation to a bona fide offer of products and services. On the contrary, the Claimant considers that the disputed domain name <sport.cat> is intended to deceive Internet users who are looking for the official SPORT website but find the Respondent’s site.

That being the case, the Expert understands that there is reasonable evidence to conclude that the Claimant

Has prima facie demonstrated that the Respondent has no legitimate rights or interests over the disputed domain name. In these circumstances it is up to the Respondent to establish its rights or

Legitimate interests over the disputed domain name.

Respondent defends his right and legitimate interest based on the following: first, in the existence of preparations to use the disputed domain name in a web portal that “will inform about all his works related to the sport”, among the Which is the application ” Finger Futbol ” and “focused on the Catalan community”. And, secondly, the fact that its company Simplifidenet Limited, which operates the website under the disputed domain name, has not attempted to confuse consumers or attempted to tarnish the SPORT trademark of the Claimant.

However, we can not accept what was alleged by the Respondent. In the Expert’s view, the full reproduction of a well-known trademark in a domain name can reasonably lead to confusion for consumers. Because in a normal situation consumers expect to find on the web under the disputed domain name content associated with the Complainant itself and not to a third party outside of it. We note that the website under the disputed domain name also reproduces the SPORT sign, even in the format and colors used by the Claimant on its website. The Expert further notes that the application offered by the Respondent is called ” Finger Futbol ” and not “Sport”. Therefore, the association brought by the Respondent results in a more than likely confusion regarding Respondent’s identity as to the source, sponsorship, affiliation or promotion of its website or the products listed on its page Web. The Expert concludes that the Respondent intended to divert consumers from the Claimant.

To conclude, Respondent has not destroyed the presumption of the lucrative nature of its business activity because it has not provided evidence and indicates otherwise as it appears in the additional information of the product once in “Google Play”. In this regard, the Respondent insists on its allegations in the fact of being an entrepreneur who has a company abroad. Manifestation that contradicts the claim of the Respondent according to which the exploitation “does not obtain any economic benefit”.

On the other hand, we mean that the Respondent does not use the disputed domain name for the general comment on sports activities as alleged in its brief. In fact it dedicates it exclusively for the commercial exploitation of its product ” Finger Futbol “.

For the foregoing, this Expert understands that the absence of rights or legitimate interests of the Respondent in the disputed domain name has been demonstrated and therefore declares that the second requirement of paragraph 4 (a) .ii) of the Policy is met.

C. Registration and use of the bad faith domain name

The third requirement of the Policy is that Respondent has registered and used the disputed domain name in bad faith. It is an indication of bad faith, among other assumptions, the prior knowledge of the mark by who has registered a domain name identical or similar to a trademark. In this sense, prior knowledge may derive from any of the following circumstances: the domicile of the applicant for the domain name, the extent of use of the trademark or the notorious or renowned character of the trademark or even subsequent acts of the Respondent in relation to Use of the mark or sign.

From the record it has been proven that the SPORT brand is reproduced in full in the domain name in dispute. That the SPORT brand enjoys renowned value in Spain. That both parties have their domicile in Catalonia where the newspaper SPORT has a market share of 35%. It has also been proven that the disputed domain name <sport.cat> directs to a website that reproduces the Claimant’s SPORT mark, even in the format and colors used by the Claimant on its website.

As aforesaid, and also taking into account the selection by the Respondent of the generic first level domain of the disputed domain name, in this case “.cat” (intended for the Catalan speaking community), we must conclude as more likely that Respondent Was aware of the existence of the SPORT brand at the time of registration.

In addition and as we have understood in the previous requirement we must conclude that with the registration of the disputed domain name the Respondent sought to generate, for profit, the possibility of confusion with the trademark of the Claimant as regards the source , Sponsorship, affiliation or promotion of your website or products listed on its website. This conclusion is reinforced by the use of the Claimant’s SPORT trademark, including in the format and colors used by the Complainant on the Respondent’s website, which provides an application called ” Finger Futbol “. Therefore, the Expert understands that the facts set forth comply with the requirements established in paragraph 4.b.iv) of the Policy.

Finally and as for the negotiation between the parties, it is true that there was interest in the sale of the disputed domain name <sport.cat> by the Respondent in an amount that exceeds the cost directly related to it. Therefore, the assumption of fact established in paragraph 4 (b) (i) of the Policy must also be declared complied with.

For the foregoing, the Expert understands that paragraph 4 (a) (iii) of the Policy has been complied with.

7. Decision

For the reasons stated, in accordance with paragraphs 4 (i) of the Policy and 15 of the Rules of Procedure, the Panel of Experts orders that the disputed domain name <sport.cat> be transferred to the Claimant.

Manuel Moreno-Torres
Single Expert
Date: July 31, 2017


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