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February 15, 2011 / Nate Harris

Groupalia’s Post-Registration Evidence Misses Mark

Summary of Groupalia Compra Colectiva, S.L. v. Andrea Santini

(WIPO Case No. D2010-1979)

Filed: November 18, 2010; Decided: January 26, 2011 (Panelist: Tony Willoughby)

Disputed domain name: <groupalia.info>, <groupalia.net>, and <groupalia.org>

groupalia.info

The Parties

Complainant Groupalia Compra Colectiva (“Groupalia”) provides a discount voucher service to online shoppers in Spain, Italy, Mexico, Chile, Argentina, and Brazil. Though Groupalia claims to have been founded in 2009, none of the domains through which it operates were registered before March 2010. Given that the company’s business is conducted completely online, “the Panel is left wondering what online activity the Complainant was undertaking in 2009 when it claims to have been founded.”

Respondent Andrea Santini registered the disputed domain names on April 26, 2010, at which time he claims to have been unaware of Groupalia. The disputed domains point to pay-per-click landing pages. According to Mr. Santini, the idea to register the disputed domain names came about as follows:

The idea was suggested by my girlfriend at the beginning of the year, when we were attending a new year’s eve party. She noticed that it was hard for [J]ewish expat[s] to meet together especially with people sharing the same beliefs and interests. I had no difficulty to agree to her idea (I am Catholic) and few months after, talking again about the topic, we decided to buy the domain “GroupAlia” as union of the words “Group” and “Alia”. Alia is a [J]ewish name, contraction of Aliyah, name of my girlfriend’s best friend in Argentina, [a c]ountry that she had to leave to move to Germany when she was a child. This fact, together with the Jewish meaning of the name, made us think that the name GroupAlia was perfect for a website which wanted to unify people, allowing them to fell less lonely being away from their native land.

Though in the course of his investigation Mr. Santini had visited Groupalia’s website, he felt that the differences between the parties’ respective services meant there would be no conflict. [The Panel notes the apparent contradiction that Mr. Santini claims both to have been unaware of Groupalia at the time of registration and to have visited their site but saw no issue with registering the disputed domains.]

Identical or Confusingly Similar

The Panel finds no evidence to support Groupalia’s assertion that its name is “a well-known fully registered trade mark.” Rather, Groupalia owns trademark applications, which are not evidence of trademark rights. The Panel finds that Groupalia has built up trademark rights in the GROUPALIA since the inception of the business (be that in 2009 or 2010). As the timing of such rights is irrelevant under this first prong, the Panel finds that the disputed domain names are identical to Groupalia’s mark.

Rights or Legitimate Interests

Mr. Santini’s explanation for why he registered the disputed domains is not supported by any evidence of record. Nonetheless, in light of the finding of lack of bad faith below, the Panel doesn’t come to a conclusion on this prong.

Bad Faith

Groupalia attempted to show bad faith through evidence of the fame of its mark GROUPALIA. It introduced evidence showing that, on the day before the complaint was filed, it had a million users; furthermore, a “Groupalia” search on Google that day returned a large number of entries relating to Groupalia.

As the Panel points out, however, that evidence fails to demonstrate Groupalia’s fame as of the date the disputed domains were registered.

The Panel speculates that, had Mr. Santini used the disputed domains for their supposed purpose, this dispute would not have arisen. Instead, the domains hosted advertising links. Critically, however, Mr. Santini asserts that the domain registrar–not Mr. Santini–earned the revenue from the advertising. “The Panel accepts this explanation.”

Furthermore, the Panel points out several times that there was nothing on Groupalia’s website to indicate that Mr. Santini’s registration of the disputed domains would constitute a “violation of [Groupalia]’s trade mark rights[.]”

Though there are problems both with the complaint and the response, the complainant has the burden of proving its case. Here, Groupalia has not proven that it was being targeted by Mr. Santini.

Decision

The complaint is denied.

Commentary

Not a bad decision, but the Panel gets a little off track in pointing out that Groupalia’s website did not make clear that registering similar domains (such as the disputed domain names) would “violate” Groupalia’s trademark rights. A trademark owner is not obligated to put an express warning to would-be cybersquatters on its site; the bad faith requirement will weed out any innocent infringers, and any bad faith infringers wouldn’t be swayed by a warning anyway.

This decision also highlights the need to introduce evidence for a relevant time period, i.e., at the time of registration of the disputed domain names.

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