S.A. Cortefiel v. The Gallery Group
[Indexed as: Cortefiel v. The Gallery Group]
[Indexed as: pedrodelhierro.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. WIPO D2000-0162
Commenced: March 23, 2000
Judgment: 2 May 2000
Presiding Panelist: Roberto A. Bianchi
Second level domain name - Domain name dispute resolution policy
- Spanish Trademark - Community trademark -Formal Response - Default decision
- Famous or well-known trademark - Identical - Confusingly similar - Righhts
or legitimate interests - Knowledge of products and fame and trademark
registrations Evidence to prove good faith - Pattern of conduct - Bad faith
registration - Acting in bad faith - Applicable principles of law.
Complainant was registrant of Spanish trademark, Pedro del Hierro.
Respondent registered the domain name, pedrodelhierro.com and has applied
for registration of the mark "Pedro del Hierro" (graphic mark) as a Community
Mark. Complainant alleged that its registered trademark and the registered
domain name were identical and that the Respondent appeared to have no
rights or legitimate interests in respect of the domain name at issue and
appeared to have registered the said domain name in bad faith.
Respondent sent an email to the WIPO Center offering an explanation
of the about the status of the domain name and how it should be considered.
The case manager responded, attaching the Notification and specifying the
deadline for filing a Response and stated therein that "those involved
with the registration of the domain name should file a Response should
they wish to have their views considered." Respondent did not submit a
subsequent Response and thus did not contest the allegations of the Complainant.
Respondent subsequently sent an email on behalf of Respondent, stating
that the previous email was its Response submission.
Held, Domain Name Transferred to Complainant.
Because of its late submission and content, Respondent's second email
will not be considered. The first email, which was received before the
deadline for submitting a Response lacked the minimum formal elements to
be considered as a formal Response. Pursuant to paragraph 5(b)(i) of the
ICANN Rules, the Response shall respond specifically to the statements
and allegations contained in the complaint and include any and all bases
for the Respondent to retain registration and use of the disputed domain
name. In case of default, under ICANN Rules, the Panel shall proceed to
a decision on the complaint, and shall draw such inferences therefrom,
as it considers appropriate. However, the Panel may not proceed automatically
to a default decision in Complainant's favor because Complainant must prove
that each of the three elements of paragraph 4(a) of the ICANN Rules were
present. Also, Mr. Ruiz' email does contain some statements and assertions
that, while not allowing the Panel to consider it a formal Response, certainly
merit attention "in fairness and to avoid any prejudice".
The second level domain name pedrodelhierro is clearly identical
or confusingly similar to the Complainant marks. Respondent has not formally
contested complainant's allegations in this respect because of its default.
The missing spaces are not a material difference, as spaces technically
cannot be reflected in a domain name registration. The addition of ".com"
makes the domain name confusingly similar to such trademarks. Mr. Ruiz'
email, which states that its company understands that Complainant wishes
to use its marks as a domain name, further supports this finding. Such
understanding would not have been expressed, had the domain name at issue
not been identical or confusingly similar to the marks of the Complainant.
Respondent did not contest Complainant's allegations in respect of
the lack of legitimate intellectual property right to the domain name because
of its formal default. The fact that PEDRO DEL HIERRO is a famous or well-known
mark in Spain was uncontested. While the name, "Pedro Hierro" could
certainly be a common Spanish person name, the addition of the word "del"
in the domain name registration suggested slavishly copying to reflect
- without any right thereto - the famed or well-known Complainant's marks
in a corresponding domain name. Also, Respondent was The Gallery Group,
and not "Mr. Pedro Hierro". The rights and legitimate interests in the
domain name must be the Respondent's rights and interests, and not any
other person's whatsoever. In absence of any evidence that such "Mr. Pedro
Hierro" really existed, and that he was the real owner of the domain name,
and that the contentions in Mr. Ruiz' email were true, Respondent had to
prove its own rights or legitimate interests in the domain name at issue.
It failed to do so.
There was no contention in the record that Respondent might have
rights to or legitimate interests in the domain name. Respondent, in an
email to the Complainant's trademark attorney, stated that it included
"the registration of domain names on behalf of third parties" among its
services. This fact suggested that Respondent was registering domain names
in its own name presumably without any rights or interests in such domains.
Therefore, Respondent had no rights to or legitimate interests in the domain
name at issue.
Complainant's contention, that Respondent registered the domain in
bad faith, by taking deliberate steps to ensure that its true identity
cannot be determined, was true. Respondent attempted to hide behind the
alleged and not proven existence of a "Pedro Hierro," while simultaneously
not evidencing any of its own rights or interests. Respondent conducted
business in Madrid, Spain, where PEDRO DEL HIERRO was a famous mark and
products and where services covered under such marks were sold and provided.
Thus, Respondent must have known and most likely knew at the time of registration
about the products and services of the Complainant, and about their fame
on the Spanish market.
Complainant sent a notarized letter informing the Respondent of the
legitimate rights of the Complainant to the domain name. Respondent did
not respond specifically to the allegations about the Respondent's lack
of rights to the domain name. Instead, Respondent sent an email to Complainant
explaining that as the registrar was too slow at registering the domain
names, the company registered the domains in its own name, and applied
later for Change of the Name of the holder. This explanation sounded less
than credible. Respondent did not present any documents about the lack
of response by the registrar, or about its diligence in effectively trying
to obtain the name change. Respondent presumably knew of the famed marks
of the Complainant at the moment of registration.
Thus, registration was made to prevent the trademark owner to reflect
its trademark or service mark in a corresponding domain name. Respondent
engaged in a pattern of such conduct, which leads to the conclusion under
the ICANN Policy, Paragraph 4(b)(ii) that the domain name registration
was made in bad faith.
Complainant asserted that the only use the Respondent is doing in
relation to pedrodelhierro.com is preventing the Complainant from making
a legitimate use of it, and trying to force the Complainant into a transfer-for-price
negotiation. There is no evidence in the record that the purpose of the
registration or the use of the domain name - if any - has been to lead
the Complainant to such negotiations, and the Complainant fails to proof
such an assertion.
However, the relevant issue is not whether the Respondent is undertaking
a positive action in bad faith in relation to the domain name, but instead
whether, in all the circumstances of the case, it can be said that the
Respondent is acting in bad faith. The distinction between undertaking
a positive action in bad faith and acting in bad faith may seem a rather
fine distinction, but it is an important one. The significance of the distinction
is that the concept of a domain name ‘being used in bad faith' is not limited
to positive action; inaction is within the concept. That is to say, it
is possible, in certain circumstances, for inactivity by the Respondent
to amount to the domain name being used in bad faith".
Following its domain name registration the Respondent's conduct was
very far from any use in good faith. It tried to hide behind a most likely
non-existing person such as a "Mr. Pedro Hierro", it failed to develop
a web site that could refer to any kind of legitimate activity, and it
omitted any other fair use of the domain name. In the Panel's independent
visit to Respondent's web site, by its inaction and by not allowing a connection
to any site or page, Respondent failed to provide any reference to a bona
fide use of the domain name. This is a circumstance of bad faith use as
described in the ICANN Policy, paragraph 4(b), even if such conduct does
not exactly fit within the description of Policy, Paragraph 4(b)(iv) because
the purpose of "commercial gain" cannot be established from an empty site
or page, nor from an impossible connection to servers.
Finally, when the parties have residence in the same country, the
applicable principles of law include those of the country of residence.
Having in mind the common residence in Spain of both Complainant and Respondent,
the laws and principles of the national Spanish law are specially applicable,
together with the rules of the Uniform Policy.
In the Nocilla case, which invoked the Spanish Unfair Competition
Law, the Spanish Court considered that the fact that the "nocilla.com"
site was "under construction" was no obstacle for issuing the injunction
to immediately cease in any kind of use of the trademark NOCILLA or the
domain name nocilla.com. The fact that the defendant knew the plaintiff's
products and its trademark registrations, while keeping its web page was
sufficient basis for the issuance of the injunction. The Panel considers
that similar elements are present in the instant case.
For the foregoing reasons, the Panel finds that the domain name at
issue has been and is being used in bad faith.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Registration Agreements referred to
--
Cases referred to
--
Panel Decision referred to
Talk City, Inc. v. Michael Robertson, WIPO Case D2000-0009, 5(a) 2.
Société Générale de Surveillance S.A. v.
Inspectorate, WIPO Case D2000-0025, 6.3.1.
Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case D2000-0003
Banco Español de Crédito, S.A. v. Miguel Duarte Perry
Vidal Taveira, WIPO Case No. D2000-0018, 3.
Bianchi, Panelist: -
1. The Parties
The Complainant is Cortefiel, S.A., a corporation with legal head office
in Avenida del Llano Castellano 51, Madrid E-28034, Spain (the "Complainant"),
represented by Verónica Palau Hunziker and Amadeu Abril i Abril,
on behalf and in the name of Nominalia Internet SL, Barcelona, Spain.
The Respondent is The Gallery Group, an entity doing business in C.C.
Urb. Monteprincipe, 15 A, Boadilla del Monte, 28668 Madrid, Spain (the
"Respondent").
2. The Domain Name and Registrar
The domain name at issue is pedrodelhierro.com, registered with Network
Solutions, Inc., a Delaware corporation with head office at 505 Huntmar
Park Drive, Herndon, Virginia 20170, United States of America (the "Registrar").
3. Procedural History
On March 15, 2000 a Complaint in accordance with the Uniform Policy
for Domain Name Dispute Resolution, adopted by the Internet Corporation
for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"),
the Rules for Uniform Domain Name Dispute Resolution Policy, approved by
ICANN on October 24, 1999 (the "Rules") and the WIPO Supplemental Rules
for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules")
was submitted by e-mail to the WIPO Arbitration and Mediation Center (the
"Center"). On March 16, 2000 the Complaint was received by the Center in
hard copy.
On March 23, 2000 the Center sent a Notification of Complaint and Commencement
of Administrative Proceeding by post/courier (with enclosures), by facsimile
(Notification and Complaint to the Respondent with attachments) and by
E-mail (Notification and Complaint without attachments). The Center established
April 12, 2000 as a deadline for the submission of a Response.
The Notification of Complaint included following paragraph:
"6. Default. If your Response is not sent by the above date or we have
not received any required payment from you by that date, you will be considered
in default. We will still appoint an Administrative Panel to review the
facts of the dispute and to decide the case. The Administrative Panel will
not be required to consider a late-filed Response, but will have the discretion
to decide whether to do so and, as provided for by Rules, Paragraph 14,
may draw such inferences from your default as it considers appropriate.
There are other consequences of a default, including no obligation on our
part to consider any designations you have made concerning the appointment
of the Administrative Panel or to observe any guidelines you have provided
concerning case-related communications."
On March 23, the technical and zone contact in the domain name registration,
Mr. Oscar Ruiz from Recycle Internet, with E-Mail address oscar@recynet.com,
sent an email in Spanish to Domain.Disputes (the WIPO Center) with E-mail
address domain.disputes@wipo.int.
On March 24, 2000 the Case Manager acknowledged receipt of Mr. Ruiz´
email with following text:
"Thank you for your message, which I reviewed with a colleague (who
speaks Spanish). I understand that you are offering an explanation about
the status of the domain name and how it should be considered. Under the
administrative procedure, a complaint and case have been commenced against
the party who is indicated as the registrant of record for the domain name:
pedrodelhierro.com. That case will proceed, and the deadline for filing
a Response, as indicated in the Notification of Complaint and Commencement
of Administrative Proceeding, is April 12, 2000. I attach an extra copy
of the Notification. After the deadline for the Response passes, whether
or not a Response is filed, the procedures provide that a neutral and independent
panelist will be appointed to decide the matter. Thus, the case will go
forward, and those involved with the registration of the domain name should
file a Response should they wish to have their views considered. In accordance
with the Rules for the procedure, all further communications to the Center
should be copied to the Complainant in this case. (Rule 2(h))."
On March 24, 2000 the Registrar confirmed to the WIPO Center that the
domain name at issue was registered through Network Solutions, Inc., that
The Gallery Group is the current registrant, and that the domain name is
active.
On April 14, 2000 the Center sent a Notification of Respondent Default
to the Parties by e-mail.
After having received Roberto A. Bianchi´s Statement of Acceptance
and Declaration of Impartiality and Independence, the Center appointed
him as a sole panelist. The decision date was scheduled for May 3, 2000.
Thus, the Administrative Panel finds that it has been properly constituted.
The Panel sharing the assessment of the Center, independently finds
that the Complaint was filed in accordance with the requirements of the
Rules and Supplemental Rules, and that payment of the fees was properly
made. The Panel finds that the Center has discharged its responsibilities
at trying to notify the Complaint and, subsequently, the Notification of
Respondent Default to the Respondent pursuant to Rules, paragraph 2(a).
There were no extensions granted nor orders issued.
On April 17, 2000, Mr. Alexander Martin, from Recycle Internet with
E-Mail alex@recynet.com, sent following email to Domain.Disputes:
"I am a colleague of Mr. Oscar Ruiz and will be handling this matter
for him. Mr. Ruiz had sent you an email (on March 23) in which he stated
a submission of The Gallery Groups' Responses, offering an explanation
about the status of the domain name and how it should be considered. Submission
of The Gallery Groups' Response has been made. You answered that Response
on March 24. (please see below) Therefore, we do not understand the attached
document. Please review this matter and get back to me".
On April 18, 2000 the Case Manager replied to Mr. Martin's email with
following text:
"Thank you for your communication of April 17. Let me confirm that it
will be forwarded to the panelist appointed to decide this case, along
with all of the prior communications and papers submitted by the parties
in this case, including those to which you have referred (i.e. the e-mail
exchange of March 23 and 24, 2000). As I had indicated in my message of
March 24, 2000, and as was explained in the attached Notification of Complaint
a respondent is entitled to file a Response. Such a Response should be
filed in accordance with the Rules and the Supplemental Rules, which were
explained in the Notification. Following my message of March 24, 2000,
the Center did not receive a Response complying with these rules, nor any
indication that the e-mail of Mr. Ruiz should be considered as a Response.
However, as noted above, Mr. Ruiz´ message, as well as your e-mail
and all other documents for this case, will be forwarded to the panelist
appointed to consider and decide this matter".
The registration agreement for the domain name at issue has been done
and executed in English by Respondent-Registrant The Gallery Group and
the Registrar. The Complainant has submitted its Complaint in English without
any observation. Seeing the Panel no special circumstances to determine
otherwise, as provided in Rules, Paragraph 11, the language of this proceeding
is English.
4. Factual Background
After Complainant's assertions, supported by the documents enclosed
with the Complaint and undisputed by Respondent - because of its default
- the Panel finds that the Complainant owns the following "Pedro del Hierro"
trademarks registrations in Spain, with registration date 11/30/1998:
Numbers 2.199.515/516/517/518/519//520/521 in, respectively, classes
Class 03 (whitening preparations and other washing substances; washing,
polish, degrease and scrape preparations; soaps; perfumes; essential oils;
cosmetics; hair lotions and tooth pastes); Class 9 (Scientific, nautical,
geodesic, electric, photographic, cinematographic, optic, weight, measure
and signing control (inspection) instruments;
help and teach instruments; register, transmission, sound reproduction
or image reproduction instruments; magnetic register supports; acoustic
disks; slot machines; mechanisms for pre-pay instruments; information boxes
and computers; extinguishers; glasses); Class 14 (Precious metals and its
alloys, and this material articles or veneered articles not included in
other classes; jewelry, imitation jewelry, precious stones; watches and
chronometrical instruments); Class 18 (Leather and leather imitations;
this material products not included in other classes; animal skins, trunks
and suitcases; umbrellas, sunshade and sticks; brush woods and harness
shop); Class 25 (Articles of Clothing for women, men and children. Shoes
(not orthopedics) and hatters); Class 35 (Advertising services, commercial
business administration; commercial administration services, office works
services; commercial sales services; organization of commercial or advertising
expositions); Class 42 (Restoration services; temporary host services;
medical care, hygiene and beauty services; veterinary and agriculture services;
juridical services; scientific and industry investigation services; computers
programming services; graphic art designer services; fashion designer services;
fashion information; inside decoration design; industry drawing).
The Complainant has applied on 07/23/999 for registration of the mark
"Pedro del Hierro" (graphic mark) as a Community Mark in classes 3, 9,
14, 18, 25, 35 and 42.
After Complainant's assertions - uncontested by Respondent because of
its default, and not denied in Mr. Ruiz' email - the Panel considers established
that such marks are famous or well-known for clothing and fashion products
and shops in Spain.
For similar reasons and the confirmation sent by the Registrar to the
WIPO Center, it has been demonstrated that the domain name pedrodelhierro.com
has been registered by the Respondent with Network Solutions, Inc.
5. Parties' Contentions
5.1. Complainant
The Complainant asserts that
The domain name at issue is identical to the marks in which the Complainant
has rights; and the Respondent has no rights or legitimate interests in
respect of the domain name; and the domain name was registered and is being
used in bad faith.
The Complainant's marks identify a famous and/or renowned brand of clothing/fashion
products and shops all over Spain.
There is no doubt about the lack of any legitimate intellectual property
right of the Respondent to those names, and clear proof of the Respondent's
bad faith in registering and using the domain name (Para. 3(c) of the Policy).
The domain name was registered in bad faith (these allegations are considered
by the Panel under 6.5. below).
The domain name was and is being used in bad faith (these allegations
are considered by the Panel under 6.6. below).
The Complainant requests the Panel to issue a decision that the contested
domain name be transferred to the Complainant.
The Complainant agrees to submit, only with respect to any challenge
that may be made by Respondent to a decision by the Administrative Panel
to transfer or cancel the domain name that is the subject of this Complaint,
to the jurisdiction of the courts of Madrid, Spain.
5.2. Respondent
The Panel, sharing the assessment of the Center, finds that the Respondent
has not submitted a Response, and is therefore formally in default pursuant
to Rules, Paragraph 14(a). However two emails were sent in the name of
the Respondent to the WIPO Center. The first one on April 23, 2000, and
the second one, on April, 17, 2000. Both were answered by the Center's
Case Manager Mr. Christopher Gibson. Their texts can be read at 3 above.
6. Discussion and Findings
6.1 Email submissions
Before addressing the merits, the Panel has to decide whether to consider
Mr. Martin's email of April 17, 2000 a Respondent's submission, and what
weight to accord it. Under the Rules, Paragraph (a)(d), this determination
is solely within the discretion of the Panel. See also WIPO Notification
of Complaint and Commencement of Administrative Proceeding, Paragraph 6,
3 above. WIPO Case D2000-0009 Talk City, Inc. v. Michael Robertson, 5 (a).
Because of its late submission and content, Mr. Martin´s email
will not be considered. The email was sent on April 17, 2000, that is five
days after the deadline established for submission of a Response. Particularly
the statement that Mr. Martin or Mr. Ruiz "do not understand the attached
document", referring to the Center´s communication, cannot be afforded
any weight.
As to the email of March 23, 2000 by Mr. Ruiz, which was received by
the Center before the deadline for submitting a Response, the Panel considers
that it lacks the minimum formal elements to be considered as a formal
Response pursuant to Rules, Paragraph 5(b)(i) that states:
"(t)he response shall (...) (r)espond specifically
to the statements and allegations contained in the complaint and include
any and all bases for the Respondent (domain-name holder) to retain registration
and use of the disputed domain name (...)".
Nevertheless Mr. Ruiz email does contain some statements and assertions
that, while not allowing the Panel to consider it a formal Response, certainly
merit attention "in fairness and to avoid any prejudice". See Talk City,
5(a)(i).
Mr. Ruiz on behalf of the Respondent stated that
The domain name at issue has been registered by his company following
instructions from his client Mr. Pedro Hierro as reflected in the company's
invoice issued on the day of the application.
The company has tried to change the domain name holder's name in several
occasions so that the domain definitely be in the name of the client but
Network Solutions has not effected the requested changes. That was communicated
when requested by email.
The name of the company's client is Pedro Hierro and the domain name
is pedrodelhierro.com. Therefore there can be no question of bad faith.
The company client's profession is related to aviation activities, which
has nothing to do with the fields where the mark is registered.
The company understands that Complainant wishes to use its marks as
a domain name, but the company's client has registered it in good faith,
and without any intent to harm anybody, and believes that he has a right
to use the domain name.
6.2. Effects of Respondent Default
The specific allegations and contentions of the Complainant against
the domain name registration bound the Respondent to respond specifically
according with Rules, Paragraph 5(b)(i).
In case of a default, under Rules, Paragraph 14(a), the Panel
"shall proceed to a decision on the complaint", and under paragraph 14(b)
the Panel " shall draw such inferences therefrom as it considers appropriate".
Thus, the Respondent's default would indicate that the Complainant's
assertions are sufficient ground for the Panel to proceed to a default
decision in its favor. However such consequence is not automatic under
the Policy, because "the complainant must prove that each of these three
elements are present". Policy, Paragraph 4(a) in fine. Furthermore, as
seen in 6.1 above, the Panel has decided to consider the statements contained
in Mr. Ruiz' email.
6.3. Independent Connection with the Respondent's Web Site
Under Rules, Paragraph 10(a) the Panel has powers to independently visit
the Internet in order to obtain additional light in this default proceeding.
On April 30, 2000 the Panel visited the www.pedrodelhierro.com web site
of the Respondent using two different browsers. No servers could be reached.
6.4. Identity or Confusing Similarity
The Panel has considered the allegations by the Complainant as to the
identity of the domain name at issue to the Complainant's trademark PEDRO
DEL HIERRO. These allegations have not been contested by the Respondent
because of its default.
The Panel has compared the domain name at issue with the Complainant´s
trademarks
PEDRO DEL HIERRO, and finds that the second level domain name pedrodelhierro
is identical to the Complainant marks. The missing spaces between "pedro"
and "del", and "del" and "hierro" are not a material difference, as spaces
technically cannot be reflected in a domain name registration. The addition
of ".com" - a generic top level domain intended for commercial organizations
- makes the domain name confusingly similar to such trademarks.
The Panel's finding is further supported by Mr. Ruiz' email, that states
that its company understands that Complainant wishes to use its marks as
a domain name. Such understanding would not have been expressed, had the
domain name at issue not been identical or confusingly similar to the marks
of the Complainant.
6.5. Rights and Legitimate Interests in the Domain Name
The Panel has considered the allegation by the Complainant as to the
lack of rights or legitimate interests of the Respondent in respect of
the domain name at issue. In particular, the Panel has considered the Complainant's
contention about the lack of any legitimate intellectual property right
of the Respondent to the domain name. These allegations have not been contested
by the Respondent because of its formal default.
Nevertheless, Mr. Ruiz' email states that the Respondent's registration
was made "following instructions from his client Mr. Pedro Hierro as reflected
in the company's invoice issued on the day of the application". The Respondent
neither has supported this assertion with evidence of any instruction by
said "Mr. Hierro", nor has submitted any proof of Mr. Hierro's existence,
nor has presented any such invoice or document whatsoever in support of
its contentions. Nor has Respondent presented the Panel with any evidence
of "Mr. Pedro Hierro's" alleged aviation activities.
Mr. Ruiz also states that "the name of the company's client is Pedro
Hierro and the domain name is pedrodelhierro.com."
The Panel notes that, while "Pedro Hierro" can certainly be a common
Spanish person name, and Spanish male persons with such name most likely
do exist, the Panel cannot overlook the fact that the domain name at issue
is "pedrodelhierro.com", and not "pedrohierro.com" (that is, without the
Spanish word "del"). Had such "Mr. Pedro Hierro" really wished to reflect
his own individual name in a domain name, he should have done it without
any artificial addition. Instead, the addition of the word "del" in the
domain name registration suggests slavishly copying to reflect - without
any right thereto - the famed or well-known Complainant's marks in a corresponding
domain name.
The Panel notes further that the Respondent in this proceeding is The
Gallery Group, and not "Mr. Pedro Hierro ". Pursuant to Rules, Paragraph
1 ("Definitions") "(p)arty means a Complainant or a Respondent". The Panel's
decision can only affect Parties. It is the Respondent who has registered
the domain name and no other entity or person, and it is Mr. Ruiz on behalf
of the Respondent who has submitted the email of March 23, 2000. See WIPO
Case D2000-0025 Société Générale de Surveillance
S.A. v. Inspectorate, 6.3.1.
In absence of any evidence that such "Mr. Pedro Hierro" really exists,
and that he is the real owner of the domain name, the Panel considers that
the Respondent The Gallery Group is who has to prove its own rights or
legitimate interests in the domain name at issue. It fails to do so.
The fact that PEDRO DEL HIERRO is a famous or well-known mark in Spain
is also uncontested. In fact, Mr. Ruiz in his email even recognizes that
the wish of the Complainant to use such marks as a domain name is "understandable".
There is no contention in the record in favor of the Respondent, and
particularly that The Gallery Group might have rights to or legitimate
interests in the domain name. No circumstance has been evidenced that could
reasonably support such an inference pursuant to the Policy, paragraph
4(c). To the contrary, the Panel notes that on January 19, 2000 Ms. Susana
Madruga of Recycle Internet on behalf of the
Respondent in an email to the Complainant's trademark attorney stated
that Recycle Internet "is offering different services on the Internet,
and among them, the registration of domain names on behalf of third parties".
(Emphasis added). This fact suggests that Recycle Internet-The Gallery
Group is registering domain names in its own name presumably without any
rights or interests in such domains.
The Policy, Paragraphs 4(a)(ii) and 4(c) is crystal clear in this respect.
The rights and legitimate interests in the domain name must be the Respondent's
rights and interests, and not any other person's whatsoever.
Additionally the result of the connection independently conducted by
the Panel did not show any evidence as to the rights or legitimate interests
of the Respondent in the domain name. See 6.3. above.
Therefore, the Panel finds that the Respondent has no rights to or legitimate
interests in the domain name at issue.
6.6. Registration in Bad Faith
The Complainant contends that the Respondent has registered the domain
in bad faith, by taking deliberate steps to ensure that its true identity
cannot be determined. The Panel finds that such assertion is true. The
Respondent has attempted to hide behind the alleged and not proven existence
of a "Pedro Hierro", while simultaneously not evidencing any Respondent's
rights or interests. See 6.5. above.
Further, the Panel notes that the Respondent is doing business in Madrid,
Spain, the geographical area where PEDRO DEL HIERRO is a famous or well-known
mark and products and services covered under such marks are sold and provided.
This was asserted by Complainant and is undisputed by Respondent. This
leads the Panel to conclude that the Respondent must know and most likely
knew at the time of registration about the products and services of the
Complainant, and about their fame on the Spanish market.
Under the Policy, Paragraph 4(b)(ii) bad faith registration is present
if such registration was made to prevent the trademark owner to reflect
its trademark or service mark in a corresponding domain name, provided
that the registrant has engaged in a pattern of such conduct.
On December 10, 1999 the Complainant sent a notarized letter informing
the Respondent of the legitimate rights of the Complainant to the domain
name, and asking the Respondent to perform the transfer of such domain.
Complaint, Annex 4. On January 19, 2000 Ms. Susana Madruga of Recycle Internet
on behalf of the Respondent sent an email in Spanish to Ms. Dolores Carmona
of Clarke, Modet & Co., the Complainant's trademark attorney, to inform
about the situation of the pedrodelhierro.com domain name. It was stated
that Recycle Internet is offering different services on the Internet, and
among them, the registration of domain names on behalf of third parties.
As Network Solutions was too slow at registering the domain names, the
company registered the domains in its own name, and after that it applied
to Network Solutions for Change of the Name of the holder. In this case
the company applied for change of the name of the holder in September,
1999. Ms. Madruga added that her company cannot deny the relationship with
its client and offered to contact him and to communicate him the Complainant's
request for transfer of the domain name.
The Respondent has not responded specifically to the notarized letter,
in particular to its allegations about the Respondent's lack of rights
to the domain name. Instead it tried to appear as being innocent of a bad
faith domain name registration, by hiding behind a person - its alleged
client - whose real existence has been neither evidenced nor proven. The
Respondent presumably knew of the famed marks of the Complainant at the
moment of registration. The explanation given about the fact that the registration
remained unchanged because of the registrar's inactivity, months after
having applied for change of the name of the domain name holder, sounds
less than credible. No documents have been presented about the lack of
response by Network Solutions, or about the diligence of the Respondent
in effectively trying to obtain the name change.
The Panel considers that all such facts are a "pattern of such conduct",
which authorizes the Panel to conclude, and to find under the Policy, Paragraph
4(b)(ii) that the domain name registration was made in bad faith.
6.7. Use in Bad Faith
The Complainant asserts that "in fact, there is no use of the domain
names", and that "the only use the Respondent is doing in relation to pedrodelhierro.com
is preventing the Complainant from making a legitimate use of it, and trying
to force the Complainant into a transfer-for-price negotiation".
There is no evidence in the record that the purpose of the registration
or the use of the domain name - if any - has been to lead the Complainant
to such negotiations, and the Complainant fails to proof such an assertion.
However the Complainant has quite appropriately cited the Panel to WIPO
Case D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows. The
Panelist in that case, Mr. Andrew F. Christie, has given an important criterion
for a Panel to establish bad faith use in case of inaction:
"(T)he relevant issue is not whether the Respondent is undertaking a
positive action in bad faith in relation to the domain name, but instead
whether, in all the circumstances of the case, it can be said that the
Respondent is acting in bad faith. The distinction between undertaking
a positive action in bad faith and acting in bad faith may seem a rather
fine distinction, but it is an important one. The significance of the distinction
is that the concept of a domain name ‘being used in bad faith' is not limited
to positive action; inaction is within the concept. That is to say, it
is possible, in certain circumstances, for inactivity by the Respondent
to amount to the domain name being used in bad faith".
Telstra, 7.9.
Following its domain name registration the Respondent's conduct was
very far from any use in good faith. It tried to hide behind a most likely
non-existing person such as a "Mr. Pedro Hierro", it failed to develop
a web site that could refer to any kind of legitimate activity, and it
omitted any other fair use of the domain name.
As seen in the Panel's independent visit to the Respondent's web site,
by its inaction and by not allowing a connection to any site or page, the
Respondent failed to provide any reference to a bona fide use of the domain
name. This inaction is confusing Web surfers or prospective customers of
the owner of the marks, looking in the Web for the renowned mark PEDRO
DEL HIERRO. It deprives them of any indication that www.pedrodelhierro.com
has no relationship whatsoever to a Complainant's site or to Complainant's
marks or activities, being the PEDRO DEL HIERRO mark famous or well known
in the Spanish market.
Additionally the Panel considers that the instant case relates to a
".com" domain name. That fact contributes to the likelihood of confusion
amongst the Web surfers looking for the site reflecting the PEDRO DEL HIERRO
trademark of the Complainant, a "Sociedad Anónima", a corporation
with commercial purpose. This is a circumstance of bad faith use as described
in the Policy, paragraph 4(b), even if such conduct does not exactly fit
within the description of Policy, Paragraph 4(b)(iv) because the purpose
of "commercial gain" cannot be established from an empty site or page,
nor from an impossible connection to servers.
Finally, it has been said in many WIPO cases that when the parties have
residence in the same country, the applicable principles of law include
those of the country of residence, and that the Panel may look to rulings
of courts in that country. In particular, it has been said that "having
in mind the common residence in Spain of both Complainant and Respondent,
the laws and principles of the national Spanish law are specially applicable,
together with the rules of the Uniform Policy". See WIPO Case No. D2000-0018
Banco Español de Crédito, S.A. v. Miguel Duarte Perry Vidal
Taveira.
In its notarized letter the Complainant's trademark attorney invoked
the Complainant's rights against the Respondent under the Spanish Unfair
Competition Law, Articles 6, 11 and 12, and the Spanish Trademark Law,
Articles 30 and 31. Such provisions were the legal grounds for the Court
No. 5 of Oviedo, Spain, to issue an injunction on June 2, 1999 in the case
of nocilla.com. The Court ordered the domain name registrant of nocilla.com,
inter alia, to immediately cease in any kind of use of the trademark NOCILLA.
It further prohibited, and ordered the registrant to immediately cease
in, the use of the domain name.
In the Nocilla case the Spanish Court considered that the fact that
the site was "under construction" was no obstacle for issuing the injunction.
The defendant knew the plaintiff's products and its trademark registrations,
while keeping its web page. That was sufficient basis for the issuance
of the injunction. The Panel considers that similar elements are present
in the instant case.
For the foregoing reasons, the Panel finds that the domain name at issue
has been and is being used in bad faith.
7. Decision
The Panel has found that the domain name pedrodelhierro.com is identical
or confusingly similar to the trademarks of the Complainant, and that the
Respondent has no rights to or legitimate interests in said domain name.
The Panel has further found that the domain name has been registered in
bad faith, and that it has been and is being used in bad faith.
Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules,
the Administrative Panel requires that the domain name pedrodelhierro.com
be transferred to the Complainant Cortefiel, S.A.
Roberto A. Bianchi
Sole Panelist
May 2, 2000
Domain Name Transferred.
