31st Mar 2014
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mapfre Familiar, Compañía de Seguros y Reaseguros, S.A. v. Whois Privacy Services Pty Ltd / Vertical Axis Inc.
Case No. D2014-0020
1. The Parties
The Complainant is Mapfre Familiar, Compañía de Seguros y Reaseguros, S.A. of Madrid, Spain, represented by Elzaburu, Spain.
The Respondent is Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia (“First Respondent”) / Vertical Axis Inc. of Christ Church, Barbados (“Second Respondent”), represented by ESQwire.com PC, United States of America.
2. The Domain Name and Registrar
The disputed domain name <mapfree.com> (“the Domain Name”) is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2014. On January 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 9, 2014, 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 January 10, 2014 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 amendment to the Complaint on January 15, 2014.
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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced January 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response February 5, 2014. The Response was filed with the Center February 5, 2014.
The Center appointed Karen Fong, Mario A. Sol Muntañola and The Hon Neil Brown Q.C. as panelists in this matter on March 12, 2014. The Panel finds that it was properly constituted. Each member of 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 company within the MAPFRE Group (“the Group”), Spain’s main insurance company and a major business presence in the country. It is also one of the leading insurers in Latin America. The Complainant’s predecessor in title was founded in Spain in August 1933. Since then the Group has expanded. It now has a workforce of 34,390 employees around the world. The Group has 423 direct offices and 2,732 delegate offices in Spain and 243 companies in 46 countries. Its annual revenue in 2011 was EUR 23,530 million. The Group also has a presence in the United States and Australia. The Complainant and the Group companies use the trade mark MAPFRE in relation to its insurance business. It owns trade mark registrations of MAPFRE and MAPFRE and logo in many countries including Spain, the European Community, United States and Australia. The earliest trade mark registration filed in evidence dates back to April 1, 1996. MAPFRE is ranked at 357 in the Forbes Global 2000 Leading Companies in 2012.
The Domain Name was registered on August 23, 1997. The Second Respondent acquired the Domain Name on October 2, 2006. The Second Respondent is in the business of registering common word domain names for investment and development. The Domain Name is connected to pay-per-click (“PPC”) advertising links. One the left side of the home page of the website connected to the Domain Name (“the Website”) submitted in evidence by the Complainant, there are links to sites which are connected to maps, photographs and books. On the bottom of the home page are links to insurance related sites. At the top of the home page there are two button links which say “BUY IT” and “RENT IT”. At the time of writing this decision, the Website has on the left side of the home page, similar links as the copy submitted in evidence by the Complainant but in a different order. However on the bottom of the home page of the Website, the links shown are not insurance related but map and phone related.
5. Parties’ Contentions
Identical or Confusingly Similar
1. The Complainant has registered and unregistered rights in the name MAPFRE in connection with its insurance business.
2. The Domain Names is confusingly similar to the MAPFRE trade mark as the terms are practically identical.
Rights or Legitimate Interests
3. There is no bona fide offering of goods or services on the part of the Respondent as even though the Domain Name has been registered for years, the Website does not have content of its own. It contains links to third party websites and indications that the Domain Name is for sale and rent.
4. The PPC links to insurance related websites which is the business sector of the Complainant and the sector in which the Complainant has a reputation.
5. The Respondent has not been commonly known as MAPFREE nor does it own any trade mark or rights in this term.
6. The Complainant’s representatives sent a warning letter via email to the First Respondent on May 30 and August 7, 2013. No response was received from the First Respondent which is an indication of the lack of rights or legitimate interests as someone who did have rights or legitimate interests would make it known after receipt of a cease and desist letter.
Registered and Used in Bad Faith
7. The Website states that the Domain Name is for sale or for rent. This is a clear indication that seeking commercial gain from the sale or rent of the Domain Name was the main purpose behind its registration.
8. The Website has no content of its own but contains PPC links to websites related to insurance which is the area of trade of the Complainant.
9. This is evidence of the Respondent’s intention to take advantage of the prestige of the Complainant’s trade mark. The links to the insurance related websites also show that the Respondent did not buy the Domain Name for the meaning that lies behind the words MAP and FREE but betrays a deliberate intention to create a likelihood of association with the Complainant’s trade mark.
10. The First Respondent has been subject to numerous WIPO decisions showing a pattern of conduct of registering and using domain names that correspond to third party marks.
Identical or Confusingly Similar
1. The Complainant’s trade mark is for the word MAPFRE whilst the Domain Name is made up of the descriptive words “map” and “free”. Where a mark is descriptive, small differences matter when finding whether the Domain Name is identical or confusingly similar to the trade mark.
2. This is especially in the context of use on the Internet where because of the need for language economy, very small differences matter.
3. A small difference in spelling also matters where the meanings of the words in a domain name and trade mark are different as in this case.
4. The Complainant’s consumers are sophisticated entities and individuals who will not be confused.
Rights or Legitimate Interests
5. The registration of domain names consisting of common words are permissible on a first come first served basis and such registration establishes a respondent’s legitimate interest provided the domain name was not registered with a trade mark in mind.
6. The Domain Name comprises commonly used dictionary words. The Second Respondent registered the Domain Name because of its common meaning and not because it is a trade mark. This gives rise to rights or legitimate interests in the Domain Name.
7. Corroboratory evidence comes from the fact that the Respondent has registered many combined descriptive word domain names that incorporate the word “map” followed by another English word or that incorporate the word “free”.
8. There is no evidence that the Second Respondent registered the Domain Name with the MAPFRE trade mark in mind.
9. The Second Respondent uses the Domain Name in connection with the bona fide provision of advertising services. This is an accepted business practice. PPC links constitute use of the domain name for the bona fide offering of goods and services.
10. There is no evidence that any links related to the goods and services covered by the Complainant’s marks have ever appeared on the Website.
11. The Complainant does not have a monopoly over the common dictionary words which form the Domain Name.
Registered and Used in Bad Faith
12. The Respondent acquired the Domain Name on October 2, 2006 after the prior owner allowed it to expire. The reason for the purchase was because it contained a combination of two common English words, “map” and “free” to which it believes that no party could claim exclusive rights.
13. The Respondent registered the Domain Name without targeting of the Complainant’s trade mark or business.
14. The Respondent has been registering common word domain names for investment and development since 2002. Its business model is to develop or otherwise monetize the domain names in order to generate revenue from these assets.
15. The Respondent hosts underdeveloped domain names with domain name parking services that pay a share of the advertising revenue they generate.
16. The Respondent did not register the Domain Name with the Complainant’s trade mark in mind and had no knowledge of the Complainant or its web site, its business name or trade mark when it acquired the Domain Name seven years ago.
17. The Respondent has registered thousands of other domain names incorporating common words.
18. The Respondent has registered several other domain names that include the word “map” including but not limited to: <mapgames.com>, <maphacks.com>, <maphelp.com>, <maphouse.com>, <mapparis.com>, <mapsaver.com>, <mapschool.com>, <mapsign.com>, <mapsearch.com>, <maproad.com>, <mapvideos.com>, <mapoftheworld.com>, <mapatour.com>, <mapfurniture.com>, <maplibrary.com>, <maprated.com>, <maptests.com>, <mapsofcentralamerica.com>, <mapsofnigeria.com>, <railwaymap.com>, <addressmaps.com>, <aviatormaps.com>, <bettermap.com>, <centralparkmaps.com>, <createyourownmap.com>, <downloadfreemaps.com> and <freemobilemaps.com>.
19. The Respondent also owns many domain names that include an English word followed by “free” including: <audiofree.com>, <betafree.com>, <checksfree.com>, <couterfree.com>, <dairyfree.com>, <easyfree.com>, <doublefree.com>, <gunfree.com>, <hungerfree.com>, <iconfree.com>, <ironfree.com>, <jpegfree.com>, <junkfree.com>, <karaokefree.com>, <learningfree.com>, <literaturefree.com>, <loadfree.com>, <promotionfree.com>, <resortfree.com>, <sitefree.com>, <studyfree.com>, <translationfree.com> and <weaponsfree.com>.
20. The Complainant has not established that the Respondent had intent to create a likelihood of confusion as to the source, affiliation, or endorsement of the Website. There is a lack of advertising targeting goods or services offered by the Complainant.
21. The use of privacy services does not support a finding of bad faith where there is no evidence that the Complainant was unable to contact the Respondent or serve it with the Complaint.
22. The fact that the Complainant registered the Domain Name after it has expired is a signal that any trade mark claim to the Domain Name was abandoned and that the Domain Name could be registered in good faith.
23. The long delay in the Complainant taking action raises the inference that the Complainant did not believe that the Domain Name was registered in bad faith.
Doctrine of Laches
24. The Complainant has not explained why it took such a long time to initiate the Complaint. The long delay in taking action bars the Complaint under the doctrine of laches which has been recognized under the Policy.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 was registered and being used in bad faith.
B. Preliminary Procedural Issue – Proper Respondent
The Complaint was initially issued against the First Respondent, a privacy or proxy registration service which was the registrant appearing in the WhoIs at the time the Complaint was filed. The Complaint was later amended to include the underlying registrant, the Second Respondent, after its identity was revealed by the Registrar.
Paragraph 4.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that:
“Most panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant. Some panels, usually in cases where there has been a clear and timely disclosure, have elected to disregard the privacy or proxy service entirely and focus solely on the registrar-confirmed registrant.”
The Panel has recorded its decision against both Respondents. However the findings are based on the actions and activities of the Second Respondent, the underlying registrant. All references to the Respondent in the following paragraphs refer to either the Second Respondent or both.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trade mark MAPFRE.
The Domain Name is not identical to the trade mark. The question is whether it is confusingly similar to the Complainant’s trade mark. The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion.
The word MAPFRE is an invented word without any obvious meaning. It appears to be an acronym of the Complainant’s old company name. There has been no evidence adduced to suggest that it is a misspelling or short form for any word or words. This invented word has to be compared with the Domain Name which is made up of two common and generic words, “map” and “free”. Although visually the difference between the trade mark and the Domain Name consists of the addition of one letter “e” in the Domain Name, the meaning of the trade mark and the Domain Name are entirely different. On a balance of probabilities, the preponderance of Internet users will not be confused by the two. This is strengthened by the fact that MAPFRE from the evidence provided is a well-known trade mark. That being the case, it will be highly unlikely that Internet users will confuse this distinctive mark with a generic descriptive term “map” “free” which they will assume refers to or relates in some ways to free maps. The Complainant has failed to show that the descriptive and generic words “map” and “free” are not to be given their ordinary and popular meaning here but instead is a misspelling of the Complainant’s trade mark which is made up of an invented word.
The majority of the Panel finds that the Domain Name is neither identical nor confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
Notwithstanding its findings under the first element, the majority of the Panel will provide the reasons why the Complaint also fails under the second and third elements of the UDRP.
The majority of the Panel is of the opinion that the Respondent has rights or legitimate interests in the Domain Name. The Domain Name is made up of common and generic words. The accepted principle is that a domain name is legitimate if used within the ordinary meaning of the words used in the domain name, provided that it is not used to target a trade mark owner. This principle has been followed by many UDRP cases and the Respondent has cited a number of decisions to support this including the following: National Gardening Association, Inc. v. CK Ventures Inc., NAF No. 1294457; CNRV, Inc. v. Vertical Axis, Inc., NAF No. 1300901; The Landmark Group v. DegiMedia.com, L.P., NAF 285459; Bacchus Gate Corporation d/b/a International Wine Accessories v. CKV and Port Media, Inc., WIPO Case No. D2008-0321; C Brewer and Sons Limited v. Vertical Axis Inc. / wallpaperdirect.com/ c/o Nameview Inc. Whois IDentity Shield, WIPO Case No. D2009-1759.
The consensus view in WIPO Overview 2.0, paragraph 2.2 states that factors that panels look at when assessing whether there may be rights or legitimate interests would include whether the respondent has registered other domain names containing dictionary words or phrases, and whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning. Where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trade mark value.
The Respondent is in the business of registering domain names incorporating common words. It has provided evidence that it has registered many other domain names which include the word “map” and also many domain names that include the word “free”.
The Website shows that the Domain Name is being used in connection with maps. There are two pictures of maps on the Website and prominent links to map related websites. The Complainant’s evidence shows that the Website was linked to some insurance related sites. The majority of the Panel is of the view that these references are minor and peripheral as there is no evidence that the Complainant was being specifically targeted. The Website for all intents and purposes is being used within the ordinary meaning of the words in the Domain Name.
Accordingly, the majority of the Panel finds that the Respondent is using the Domain Name in connection with advertising services within the meaning of the words comprising the Domain Name which consist of common and generic words and it is doing so in a legitimate manner. This gives rise to a right or legitimate interest in the Domain Name.
E. Registered and Used in Bad Faith
The Complainant has not submitted any evidence of bad faith registration and use. It does not appear that the Respondent was aware of the Complainant’s trade mark or specifically targeting the Complainant when it registered the Domain Name which was an expired domain name. The mere fact that a domain name is acquired for the purposes of sale or rental does not amount to registration in bad faith unless the trade mark was specifically targeted which does not appear to be the case here.
As stated in D above, PPC links genuinely related to the generic meaning of the domain name gives rise to rights or legitimate interests where there is not capitalization on trade mark value. As such, such use would not amount to bad faith.
The Complainant has submitted a number of UDRP decisions to attest to its reputation. The majority of the Panel notes that all the domain names in those cases include the mark MAPFRE within the domain names. None of them included the words “mapfree”.
The Complainant has submitted evidence to try to show that the Respondent has a pattern of conduct preventing a trade mark owner from reflecting its trade mark in a domain name. These decisions are all against the First Respondent, a privacy company rather than the underlying registrant, the Second Respondent. It would have been more persuasive had these decisions been against the Second Respondent.
The mere fact that the Second Respondent has used a proxy service does not of itself amount to a finding of bad faith. There is no suggestion that incomplete contact information was provided. The Second Respondent has taken part in these proceedings and there has been no evidence of cyberflight and any bad faith.
The majority of the Panel is of the view that there has been no bad faith registration and use of the Domain Name.
F. Doctrine of Laches and Delay
In view of the findings above, the Panel is of the view that it does not need to make any determination under this head.
For the foregoing reasons, the Complaint is denied.
The Hon Neil Brown Q.C.
Mario A. Sol Muntañola
Date: March 31, 2014
This Panelist disagrees with the decision of the majority in this matter.
A. Identical or Confusingly Similar
The Complainant has shown that it holds several MAPFRE trade marks since almost 20 years ago, and also has proved the fame and the international expansion of the trade mark.
The test for determining confusing similarity involves a direct comparison of a complainant’s trade mark and the textual string which comprises the domain name. In this case, the Domain Name <mapfree.com> is composed objectively by the MAPFRE marks in their entirety, while merely including the letter “e” at the end. The Panelist believes that an Internet user will identify the term “Mapfre” in the Domain Name, which corresponds to the Complainant’s MAPFRE marks.
Taken separately, the words “map” and “free” are generic terms. The combination of such terms, however, may be a trade mark if they are perceived as source identifier taking into account the link related to insurance that the Website includes.
The Panelist considers that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
First of all, the Respondent has no registered trade marks incorporating the phrase MAPFREE, the Respondent is not known by that word or phrase, and the Respondent does not conduct business under this term.
Secondly, the Website has not content of its own, is not using the Domain Name in any way that is related to its generic meaning (just a picture of a map and some links) and on the first page twelve links to various third party insurance websites appears in the section “Related Links”. The Respondent in its Response attached a copy of the Website without those links, instead of insurance links there are links related to maps. The conduct of the Respondent makes clear the bad faith and the inexistence of legitimate interests in the Domain Name.
The Panelist agrees with the majority’s statement that where domain names consisting of common words or phrases support PPC links that are genuinely related to the generic meaning of the domain name at issue, this may be sufficient to establish rights or legitimate interests in the domain name. However, where links are generated for the purpose of capitalizing on another’s trade mark value, this will generally amount to misleading diversion of Internet traffic and will not evidence a legitimate interest or right in the relevant domain name. In this case there is clear evidence that the PPC links divert Internet users to goods and services competitive with the rights holder, i.e. insurance products.
The Panelist believes that the Respondent’s pay-per-click activities on its website are not bona fide under the Policy because the Respondent is using the Complainant’s mark to promote products in direct competition with those of the Complainant. The Panelist finds that the Respondent is intentionally capitalizing on the similarity between the Complainant’s trade marks and the Domain Name and the confusion caused to Internet users.
Previous UDRP panels have held that the use of the domain name to direct visitors to various third party commercial websites does not constitute legitimate bona fide use under the Policy and does not confer legitimate interests in the domain name, because this intends to derive profit and then this use does not constitute a legitimate noncommercial or fair use of the disputed domain name by the respondent within the meaning of paragraph 4(c)(iii) of the Policy.
Therefore, in the Panelist’s view, the Respondent does not have any rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Domain Name in bad faith. Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith, including (iv) where a domain name is “used to deliberately attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.”
A simple trade mark register search would have informed the Respondent of the existence of the Complainant’s trade marks. Therefore, even if the Respondent had not actually been aware of the Complainant’s rights, a small effort on its part would have revealed those rights. If the Respondent has not made that effort, it has been blind to such rights.
It does not per se constitute bad faith to use domain names for posting parking and landing pages or PPC links. However, if such domain name is obviously exploiting the goodwill associated with the complainant’s mark, this may generally be considered to be unfair use resulting in misleading diversion. In this case, there is no doubt that the Domain Name includes links to direct competitors of the Complainant, trying to divert traffic intended for the Complainant’s website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant’s website. The use and exploitation of trade marks to obtain click-through revenues from the diversion of Internet users has in many decisions (e.g. Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462) been found to be use in bad faith under paragraph 4(b)(iv) of the Policy.
For all these reasons, this Panelist finds that the Respondent registered and used the Domain Name in bad faith and that the Domain Name should be transferred to the Complainant.
Mario A. Sol Muntañola
Date: March 31, 2014