2 June 2020
The WIPO Arbitration and Mediation Center has decided, in response to a complaint filed by H&A on behalf of Consorci de Turisme de Barcelona, to transfer the domain name “barcelonavisit.com” to that organization in accordance with the Uniform Domain Name Dispute Resolution Policy (UDRP) in Case No. D2020-0316.
Reported facts
The Consorci de Turisme de Barcelona (the Consortium) is a Spanish public entity, established in 1993, by the Barcelona City Council, the Chamber of Commerce, Industry and Navigation of Barcelona and the Foundation for the Promotion of Barcelona. The Consorci is officially entrusted with the promotion and dynamization of the tourist, cultural and commercial offer of Barcelona and its surroundings, which it does in person through a wide network of offices and tourist information booths, as well as through the Internet and the main social networks, under various brands, including VISIT BARCELONA, a registered trademark for different promotional services. It also owns several domain names such as visitbarcelona.com and barcelonaturisme.com, the former being redirected to the latter.
The Consorci detected the existence of a domain name under which services related to the promotion of tourist activity in Barcelona were provided (the Consorci being the only entity officially recognized for this purpose) under the domain name barcelonavisit.com. At the beginning of this year 2020, it addressed a complaint to the holders of the mentioned domain name for bureaucracy, stating the ownership of its trademarks and domain names which could be confused with “barcelonavisit.com” and that it is the only entity officially authorized to promote tourism in Barcelona. Consequently, the owners were urged to transfer in favour of the Consortium “barcelonavisit.com”.
As it is already known, the arbitration procedure is mandatory for any domain name holder if the claimant claims before the arbitration service provider that:
– The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
– the domain owner has no rights or legitimate interests in respect of the domain name and
– that the domain name has been registered and is being used in bad faith
In order to comply with these requirements, the Consorci indicated that:
– The disputed domain name was identical to the trademarks with the simple alteration of the order of the two terms, and that the risk of confusion was increased by the fact that the Respondent was operating in the same tourist sector as the Consortium.
– That the holder of the domain name does not hold any rights that protect the name BARCELONA VISIT
– That the domain name was applied for in bad faith, as the trademark VISIT BARCELONA is well known in the tourism sector, and that it had also offered to transfer the domain name for 20,000 Euros, this type of offer being one of the elements that prove bad faith, according to a large number of WIPO decisions that give rise to an interpretative criterion contained in the Overview of WIPO Panel Views on Selected UDRP Questions, third edition. The use of the domain name, moreover, is made in an attempt to seek confusion with the Consorci, offering services in a very similar way and on a website configured in a similar way to the Consorci, seeking to increase traffic to the infringing website.
In the absence of any response from the Respondent, the panelist (arbitrator) in charge of this case decided to rule that there is similarity between the Consorci’s trademarks and the disputed domain name, to the extent that there is a likelihood of confusion about the ownership of the domain name. According to the documents provided by H&A on behalf of the Consortium, the Respondent does not appear to have any rights in the name it uses as a domain name.
In the expert’s opinion, there seems to be a clear desire to maintain the confusion, since the domain name barcelonavisit.com redirects to the domain name “barcelonatourisme.eu”, which is identical to the Consorci’s basic domain name (barcelonatourisme.com), except for the top level domain under which it is hosted. From this, the expert concludes that the will to cause confusion and attract traffic to her domain is evident, although she does not pronounce on the ownership of the mentioned domain name under . eu as it is not subject to the procedure, but she emphasizes that it has been registered on 10 February 2020, that is, once the procedure she is now studying has started.
The expert stresses that the website presented by the defendant (even now that it uses the domain name barcelonatourisme.eu which redirects to “barcelonavisit.com”) ) is very similar to that of the Consorci in its appearance, arrangement of content, content itself and ultimately image offered to the visitor, which deepens the certainty of bad faith on the part of the Respondent in trying to create confusion with the Consorci’s domain (and activity) to take advantage of the fame generated by that entity, since it operates in the same branch of activity.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant is not the Respondent, nor is it the owner of the domain name. The use of the disputed domain name and the content of the website to which it is associated support this conclusion.
Accordingly, the Panelist resolves that the domain name be transferred to the name of the Consortium.
It would seem that, so long after domain names are among us and the normalization of the Internet world (which some call the parallel universe and others a new continent) is a daily reality, conflicts concerning domain names with trademarks would have disappeared. Far from it, last year 2019, 5,567 domain name recovery procedures were registered at WIPO according to the UDRP, ten percent more than in 2018 (5022) and most of them (between 70 and 80%) are related to a “.com” domain name.
The worst thing is that the owner of well-known trademarks does not know about the “cybersquatting” of his mark by a domain name on the Internet until he encounters the “cybersquatting”. It is then that he discovers that it is expensive to recover the domain name and it is not always easy, as we recently saw in this same space with the “campofrio.com” case. The requirements to use the UDRP arbitration system are very demanding and the procedure must be carried out by an expert in these procedures as are the components of our team in H&A.
If the transfer of the domain name is not successful in one of these procedures, the owner will be forced to forget his trademark as a domain name or to initiate a long, costly and, like any legal procedure, uncertain outcome. Therefore, in our comprehensive advice when protecting a distinctive sign that identifies a company in an unmistakable way, we include a study of the possibility of obtaining the equivalent domain name to avoid unwanted surprises.
It is better to spend a small amount at the time of putting a mark into circulation, and reserving the corresponding domain names, than to have to resort to arbitration and judicial procedures to recover them, not counting the damage that our sign can suffer in the time until the recovery becomes effective. Damage that, sometimes, is irreparable.
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