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Familia #Torres : A trademark holder lost #UDRP against a family

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A Hispanic family member won the UDRP against their domain, FamiliaTorres.com, after a trademark holder asserted rights to the TORRES mark.

Registered in 2002, the domain’s birthday clearly predates the registration of the Complainant’s mark, FAMILIA TORRES, in 2018.

Although the Complainant, Miguel Torres S.A. of Barcelona, Spain, holds several other TORRES marks going back to 1958, the WIPO panelist, Ian Lowe, found no bad faith use or registration in the case of FamiliaTorres.com and ordered the domain to remain with the Respondent.

There was no finding of Reverse Domain Name Hijacking, despite the panelist stating:

” The Panel has also noted that the Complainant was arguably coy about admitting that it had only adopted the ‘Familia Torres’ brand very recently.”

Full details on this decision follow:

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Miguel Torres S.A. v. Hugo Torres
Case No. D2018-2704

1. The Parties

The Complainant is Miguel Torres S.A. of Barcelona, Spain, represented by Curell Suñol S.L.P., Spain.

The Respondent is Hugo Torres of Miami, Florida, United States of America (“United States”), represented by Muscovitch Law P.C., Canada.

2. The Domain Name and Registrar

The disputed domain name <familiatorres.com> (the “Domain Name”) is registered with Domain.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2018. On November 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 24, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 26, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 29, 2018.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint on December 3, 2018.

On December 7, 2018, the Center sent an email communication to the Parties acknowledging that the compliance with the word limit provided in the WIPO Supplemental Rules was overlooked concerning the amended Complaint (noting that the original Complaint was compliant) and inviting the Complainant to submit an amended Complaint. The Complainant filed a second amended Complaint on December 10, 2018. The Center verified that the Complaint together with the further amended Complaint satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules.

In accordance with the Rules, paragraphs 2 and 4, the Center formally re-notified the Respondent of the amended Complaint, and the proceedings commenced on December 11, 2018.

In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2019. The Response was filed with the Center on December 24, 2018.

The Center appointed Ian Lowe as the sole panelist in this matter on January 9, 2019. 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 Complainant is a leading Spanish wine producer founded in 1870 by Jaime Torres and his brother Miguel Torres. Torres wines are produced on three continents and sold in 150 countries.

The Complainant is the proprietor of a number of registered trademarks in respect of the word mark TORRES, including:

– Spain trademark number 321331, registered on March 16, 1958, class 33;

– United States trademark number, 897048 registered on August 18, 1970, class 33;

– European Union trademark number, 1752526 registered on October 1, 2001, class 33; and

– International trademark number 756841, registered on April 24, 2001, class 33, designating over 50 territories.

On June 7, 2017 the Complainant applied to register FAMILIA TORRES as a European Union trademark. It was registered on October 16, 2018.

The Complainant operates a website at ‘www.torres.es’, whose domain name was registered on November 21, 1995. It registered the domain name <familiatorres.es> on January 31, 2018.

The Domain Name was registered on April 1, 2002. It currently resolves to a website displaying photographs of holidays taken by the Respondent’s family. The Respondent is Hispanic-American. He was born in Managua, Nicaragua in 1965 and his family migrated to the United States when he was three years old.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its TORRES trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

In particular, the Complainant contends that the trademark TORRES is well-known world-wide for wine, and that from at least October 1, 2018 until the date of filing the Complaint the Domain Name resolved to a pay-per-click parking page comprising links to a number of websites concerned with wine and wine accessories, including those of competitors of the Complainant. Accordingly, it alleges that the Respondent is making commercial use of the Domain Name. The Complainant denies that the Respondent’s surname could give rise to a legitimate interest or rights in the Domain Name both because its name is not ‘Familiatorres’ and because the Respondent is not making bona fide use of the Domain Name.

Having had the opportunity to amend the Complaint after the original Complaint was filed, the Complainant alleges in the Amended Complaint that the Respondent only changed the contents of his website to comprise information about his family’s travels after he was given notice of the Complainant’s grounds for complaint in an attempt to establish a defence to the Complaint.

In addition to the above submissions, the Complainant relies on the fact that the WhoIs record in respect of the Domain Name was redacted for privacy as further establishing bad faith registration and use on the part of the Respondent.

B. Respondent

The Respondent contends that he originally arranged for the Domain Name to be registered on his behalf by a colleague in April 2002 because it corresponded to his family name and, since the Torres family is Hispanic-American, they are also known as ‘Familia Torres’, ‘familia’ being Spanish for ‘family’. At the time the Domain Name was registered the Respondent was not aware of the Complainant or its TORRES trademark. The Respondent has used the Domain Name for email since 2002, and his wife, son and daughter now also use the Domain Name for their respective email services. The Respondent also registered the domain name <familytorres.com> on April 3, 2006.

The Respondent denies that he has ever used the Domain Name for commercial purposes. He maintains that the Domain Name only started resolving to a webpage comprising pay-per-click links after his Registrar updated its Registration Agreement to allow itself to populate unconfigured domain names with a webpage comprising advertisements for its own benefit. The Respondent contends that he only became aware that this was the case after he was notified of the original Complaint and promptly took steps to set up a modest website at the Domain Name to ensure there was no longer any offending use by the Registrar.

The Respondent points out that since the European Union General Data Protection Regulation (GDPR) was implemented in May 2018, WhoIs records generally omit or conceal personal data regarding the registrant of a domain name and that such “standard” redaction should not be regarded as evidence of bad faith on the part of the Respondent.

The Respondent finally asserts that the Complainant only adopted the FAMILIA TORRES brand in 2018 which is why it only then became interested in acquiring the Domain Name some 16 years after it was registered by the Respondent.

6. Discussion and Findings

For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:

(i) the 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 Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant relies on its TORRES registered trademarks and its longstanding use of the TORRES mark to establish rights in the TORRES trademark. The Domain Name comprises the entirety of the TORRES trademark together with the Spanish word ‘familia’. The Panel accepts that the addition of this word does not detract from the confusing similarity to the TORRES mark. In any event, however, the Panel notes that the Complainant is also the registered proprietor of the FAMILIA TORRES trademark which, ignoring the generic Top-Level Domain (“gTLD”) “.com”, is identical to the Domain Name. Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant contends as set out above that the Respondent has no rights or legitimate interests in respect of the Domain Name. However, on the basis of the evidence submitted by the Respondent, the Panel accepts that for many years prior to his having notice of this dispute or being aware of any complaint on the part of the Complainant, the Respondent and his family have referred to themselves as ‘Familia Torres’ and have used the Domain Name for their respective email services. The Respondent has produced examples of emails evidencing such use as well as the family’s 2011 Christmas card stating “Best Wishes from la Familia Torres”. The Panel further accepts on the balance of probabilities that prior to the filing of the Complaint, the Respondent was quite unaware of his Registrar pointing the then unconfigured Domain Name to a webpage comprising pay-per-click advertisements; this use apparently having started some 11 years after the Domain Name was registered and no steps having ever been taken by the Respondent to use the Domain Name for a website.

In the circumstances, the Panel finds that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name

C. Registered and Used in Bad Faith

In view of the Panel’s finding above, it is unnecessary to consider whether the Respondent registered and is using the Domain Name in bad faith. Nevertheless, the Panel notes that the Respondent has filed a sworn declaration to the effect that he was unaware of the Complainant or its rights in the TORRES trademark at the time he registered the Domain Name and that he registered the Domain Name for the good faith reason that his Hispanic-American family was known as ‘Familia Torres’.

Although the Complainant has filed a copy of a Google search that appears to suggest some use of ‘Familia Torres’ by the Complainant in 2001 and 2002, there is no clear evidence as to the significance of the results of this search for “Torres Wine” prior to March 31, 2002. The exhibited search page has five hits that appear to have the date ‘1 feb. 2001’, of which two are for the Complainant’s website (referring to Familia Torres) and the other three are third party websites that refer only to ‘Torres’ or ‘Torres family’. Two other hits have the date ‘1 feb. 2002’ of which one is the Complainant’s website (again referring to Familia Torres) and the other a third party website referring to the Torres family surname. It is curious that apparently unrelated web pages have dates of February 1, 2001 and February 1, 2002. Not surprisingly, reproducing that search and clicking on relevant links now takes the user to current webpages of the Complainant.

The Complainant applied to register the FAMILIA TORRES trademark in June 2017 and registered the <familiatorres.es> domain name on January 31, 2018. The Respondent has also filed evidence that the legal representative of the Complainant sent an email to the Respondent on February 14, 2018 attempting to purchase the Domain Name. It appears to the Panel that the Complainant has indeed adopted the ‘Familia Torres’ brand only since 2018 and there is no evidence that the Respondent could have been aware of any such use of the brand by the Complainant at the time of registration of the Domain Name.

The Panel further also accepts that the Respondent was unaware that his Registrar had apparently taken unilateral advantage of amended terms and conditions to point the Domain Name to a parking page featuring pay-per-click advertisements for its own benefit.

Accordingly, in these particular circumstances, the Panel further finds that the Complainant has failed to establish that the Respondent registered or is using the Domain Name in bad faith.

7. Reverse Domain Name Hijacking

Although the Respondent has not sought a finding of Reverse Domain Name Hijacking (RDNH) against the Complainant, the Response refers to the fact that a finding of RDNH has been made in an earlier complaint brought by the Complainant (Miguel Torres S.A. v The Torres Group, WIPO Case No. D2001-1200, <torres.com>). Section 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) notes that UDRP Panels have clarified that a request by the Respondent is not necessary for an RDNH finding to be made. The Panel considers that, in view of its decision and the reasons for it, it is appropriate to consider whether such a finding should be made in this case.

As set out at Section 4.16 of the WIPO Overview 3.0, reasons articulated by Panels for finding RDNH include facts that demonstrate that the complainant: (i) knew that it could not succeed as to any of the required three elements; or (ii) clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint. In this case, the Panel has found the Respondent’s evidence to be compelling in demonstrating long-standing rights and/or legitimate interests in respect of the Domain Name in light of the Respondent’s surname and Hispanic background. At the time the Complainant filed the original Complaint, it was likely not in a position to know of this (given especially that, because of redaction in purported compliance with the GDPR, the Respondent’s identity was not known) and it had seen that (albeit it appears for a limited time, unbeknown to the Respondent) the Domain Name resolved to a parking page featuring pay-per-click links to third party websites including those of competitors of the Complainant.

On the face of it, therefore, the Complainant could argue some justification for filing a complaint, despite the length of time since the Domain Name was registered. On the other hand, it could be argued that by the time the Complainant came to file the amended Complaint it knew the identity of the Respondent and might have anticipated the likely defence on the part of the Respondent. The Panel has also noted that the Complainant was arguably coy about admitting that it had only adopted the ‘Familia Torres’ brand very recently.

On balance, however, the Panel considers that the circumstances are not sufficient to find that the Complaint was brought in bad faith or that a finding of RDNH would therefore be justified.

8. Decision

For the foregoing reasons, the Complaint is denied, but the Panel declines to make a finding of reverse domain name hijacking.

Ian Lowe
Sole Panelist
Date: January 16, 2019


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