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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Abertis Infraestructuras, S.A. v. Syed Hussain (PDAPB)
Case No. D2006-1007
1. The Parties
The Complainant is Abertis Infraestructuras, S.A., Barcelona, Spain, represented by Landwell, PricewaterhouseCoopers, Spain.
The Respondent is Syed Hussain (PDAPB), New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <abertisautostrade.com> is registered with Abacus
America Inc. dba Names4Ever.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2006. On August 9, 2006, the Center transmitted by email to Abacus America Inc. dba Names4Ever a request for registrar verification in connection with the domain name at issue. On August 9, 2006, Abacus America Inc. dba Names4Ever transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 24, 2006. The Center verified that the Complaint together with the amendment to 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 August 25, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2006.
The Center appointed Torsten Bettinger as the sole
panelist in this matter on October 2, 2006. 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 the company Abertis Infraestructuras, S.A., a company incorporated under Spanish law as a Sociedad Anуnima.
The Complainant provides management services for motorways, telecommunications infrastructures and car parks for airports and logistics platforms.
The Complainant is the owner of a Community Trademark and numerous national trademarks registrations for the word “ABERTIS” in several countries. The Complainant’s trademarks were registered before the date of the registration of the disputed domain name.
The Complainant is currently merging with the Italian company Autostrade S.p.A., a company incorporated under Italian law as a Societа per Azioni. Autostrade S.p.A. is the registered owner of an Italian trademark registration AUTOSTRADE.
The disputed domain name was registered on April 22, 2006,
and is currently used for a SEDO parking website.
5. Parties’ Contentions
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant argues that the disputed domain name is identical with the trademarks ABERTIS and AUTOSTRADE as it fully incorporates both trademarks.
In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant contends that none of the situations described in paragraph 4(c) of the Policy can be established in this case. In supports of this assertion the Complainant states that
- the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or made demonstrable preparations to use the domain name;
- the website available at the disputed domain name merely offers the domain name for sale;
- the Respondent is not known under the names “ABERTIS”, “AUTOSTRADE” or “ABERTISAUTOSTRADE” and does not have rights in the names or an authorization or license to use the Complainant’s trademarks in his domain name.
In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainant asserts that the domain name was registered with the intent to sell it to the Complainant. In support of this assertion the Complainant argues that
- the Respondent has registered the Complainant’s widely known and distinctive trademarks shortly after the merger between the Complainant and AUTOSTRADE S.p.A. was announced;
- the Respondent was aware of the Complainant’s trademarks when registering the disputed domain name;
- the Respondent has used the domain name in bad faith as he has tried to sell the domain name to the Complainant for an amount exceeding the out of pocket costs for the domain name registration;
- the Respondent is acting in bad faith as he has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and has engaged in a pattern of such conduct.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has provided evidence of trademark registrations consisting of the term “ABERTIS” and proven that the disputed domain name is confusingly similar to the Complainant’s marks.
The test of confusing similarity under the Policy
is confined to a comparison of the disputed domain name and the trademark alone,
independent of the products for which the domain name is used or other marketing
and use factors, usually considered in trademark infringement cases (See Arthur
Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO
Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics
Supplies Pty, Ltd., WIPO Case No. D2001-0110;
Dixons Group Plc v. Mr. Abu Abdullaah, WIPO
Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO
Case No. D2003-0327; BWT Brands, Inc and British American Tobacco (Brands),
Inc v. NABR, WIPO Case No. D2001-1480
and Britannia Building Society v. Britannia Fraud Prevention, WIPO
Case No. D2001-0505).
The domain name <abertisautostrade.com> consists of a combination of the Complainant's trademark ABERTIS and the trademark AUTOSTRADE owned by AUTOSTRADE S.p.A.
The Complainant’s mark ABERTIS is widely known. The addition of the term “Autostrade” to the Complainant’s mark does not adequately distinguish the Respondent’s domain name from the Complainant’s mark.
Persons who are not aware of the Complainant’s intended merger with AUTOSTRADE S.p.A. are likely to conclude that the domain name is simply an extension of the Complainant’s business and will be mislead into believing that the domain name refers to the Complainant.
Persons who have knowledge of the Complainant’s intended merger with
AUTOSTRADE S.p.A. will be bound to think that the domain names have a connection
with the merged entity (See Sociйtй des Produits Nestlй SA v. Stuart Cook,
WIPO Case No. D2002-0118 and L’Air
Liquide v. MIC, WIPO Case No. D2001-1246).
The Panel thus finds that the domain name <abertisautostrade.com> is confusingly similar to the trademarks in which the Complainant has exclusive rights and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. However, it is consensus view among Panelists that if the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and the Respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the Respondent may lack a legitimate interest in the domain name.
The Complainant asserts that the Respondent has neither a license nor any other permission to use the Complainant’s trademark ABERTIS. The Respondent has not denied these assertions. The Panel thus finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name which wholly incorporates the Complainant’s mark.
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
The Panel finds that the Respondent’s use of the domain name in order to redirect Internet users to a parking website with links to traders of new or used cars and thus capitalize on the Complainant’s mark is not a bona fide use pursuant to paragraph 4(c)(i) of the Policy.
Further, nothing in the record suggests that the Respondent trades under the domain name or the mark ABERTIS, or is commonly known by said domain name or the mark ABERTIS.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
The Panel is also convinced that the Respondent has registered and has been using the domain name in bad faith.
The Complainant’s trademark and company name “ABERTIS” is widely known. The Respondent registered the domain name shortly after the merger between the Complainant and AUTOSTRADE S.p.A. was announced. It is therefore inconceivable that the Respondent has registered the domain name unaware of the Complainant’s rights in its trademarks ABERTIS.
The Respondent registered a domain name which combines the Complainant’s trademark ABERTIS and the trademark of the company with which the Complainant intends to merge.
This and the fact that the domain name redirects to a SEDO parking website on which the disputed domain name is offered for sale irresistibly leads to the conclusion that the Respondent’s registration of the domain name was an opportunistic act by an alert entrepreneur with the view to making profit by either selling the domain name for valuable consideration in excess of out of pocket costs directly related to the domain name or diverting traffic intended for the Complainant’s site to a parking website in the hope that he will earn click-through revenue from the diverted traffic. This qualifies as bad faith under paragraph 4(b)(iv) and 4(b)(i) of the Policy .
Moreover, the Respondent’s default in this proceeding reinforces an inference of bad faith. If the Respondent had arguments that he acquired the domain name in good faith and had good faith bases for using the domain name, he should have asserted them.
The Panel therefore concludes that the Respondent
registered and is using the domain name <abertisautostrade.com> in bad
faith and that the requirement of paragraph 4(a)(iii) of the Policy is satisfied.
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 <abertisautostrade.com>
be transferred to the Complainant. Although the disputed domain name incorporates
the Complainant’s mark and Autostrade S.p.A.’s mark, the intended
merger of these two companies makes transfer to the Complainant an appropriate
remedy here (See Chevron Corporation v. Young Wook Kim, WIPO
Case No. D2001-1142).
Dated: October 31, 2006