Central Lechera Asturiana, S.A.T. V. Javier López De Juan Abad Mongelos
Case No. D2000-1684
1. The Parties The Complainant is CENTRAL LECHERA ASTURIANA, S.A.T., a company located at Sierra de Granda, Siero s/n, 33199-Asturias, Spain, (hereinafter, the Complainant). The Respondent is Javier López de Juan Abad Mongelos, domiciled in Avda. De Gasteiz, 44, 01008-Vitoria, Spain (hereinafter, the Respondent).
2. Domain Name and Registrar The domain name at issue is .
The Registrar is Network Solutions, Inc. (hereinafter, the Registrar) with domicile in 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America.
3. Procedural History The WIPO Arbitration and Mediation Center (hereinafter, the Center) received the Complaint of the Complainant by e-mail on December 4, 2000 and in hardcopy on December 5, 2000. On December 6, 2000 the Center sent the acknowledgement of Receipt to email@example.com.
On December 11, 2000, the Center sent the request to the Registrar for the verification of the particulars of the challenged domain name, which was answered on December 13, 2000. The Registrar confirmed (i) that the domain name at issue had been registered through the Registrar; (ii) that the current Registrant is the Respondent; (iii) the administrative contact person’s details; (iv) that the domain name registration is in “Active” status, and finally (v) that the Uniform Domain Name Dispute Resolution Policy applies to the domain name.
After verifying that the Complaint meets with the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (hereinafter, the Policy), the Rules and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, “the Rules” and “the Supplemental Rules” respectively), the Center sent the Respondent a notification under Paragraph 2 (a) of the Rules together with copies of the Complaint on December 21, 2000. The same notification was sent to the administrative contact, technical contact, zone contact and billing contact, as required by Paragraph 2(a) of the Rules.
The Respondent did not answer the Complaint. Accordingly the Center sent the parties the Notification of the Respondent’s Default on January 12, 2001.
On February 6, 2001, after receiving his completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed Mr. Jose Carlos Erdozain as the single member of the Administrative Panel (hereinafter, the Panelist) in accordance with Paragraph 6(f) of the Rules. At the same date, the Center notified both the Complainant and the Respondent of the appointment of the Panelist.
The date scheduled for the issuance of the Panel’s decision is February 19, 2001.
The language of the proceeding is English.
4. Factual Background The Complainant is a very well known company in Spain. Its activity is mainly focused on the production and distribution of milk products (e.g. pasteurized milk, milkshakes, yoghourts, cheese). As evidenced in the Complaint, the Complainant is one of the top leaders companies in the sector of the production and distribution of milk products. The Complainant has also expanded its activity by acquiring two companies which belong to the sector of milk production.
The trademark upon which the Complaint is based is CENTRAL LECHERA ASTURIANA. The Complaint is the owner of various trademarks which have been registered. Attaching certificates of the relevant national body in charge of the registration of industrial property rights in Spain (the Spanish Patents and Trademarks Office) prove these trademark registrations.
These certificates are attached as Annex 3.
All of these trademarks have been registered as follows:
- “CENTRAL LECHERA ASTURIANA”, granted on April 3, 1995 (Class 29), with registration number 1.900.531.
- “CENTRAL LECHERA ASTURIANA”, granted on November 6, 1995 (Class 29), with registration number 1.965.532.
- “CENTRAL LECHERA ASTURIANA”, granted on December 22,1997 (Class 29), with registration number 2.099.863.
- “CENTRAL LECHERA ASTURIANA”, granted on December 22,1997 (Class 29), with registration number 2.099.865.
- “CENTRAL LECHERA ASTURIANA”, granted on December 22, 1997 (Class 29), with registration number 2.099.864.
- “CENTRAL LECHERA ASTURIANA”, granted on December 7, 1998 (Class 5), with registration number 2.163.532.
- “CENTRAL LECHERA ASTURIANA”, granted on December 7, 1998 (Class 30), with registration number 2.163.533.
- “CENTRAL LECHERA ASTURIANA”, granted on December 7, 1998 (Class 31), with registration number 2.163.534.
- “CENTRAL LECHERA ASTURIANA”, granted on December 7, 1998 (Class 32), with registration number 2.163.535.
- “CENTRAL LECHERA ASTURIANA”, granted on December 7, 1998 (Class 33), with registration number 2.163.536.
- “CENTRAL LECHERA ASTURIANA”, granted on October 5, 1998 (Class 40), with registration number 2.163.538.
The Complainant is also owner of other trademarks, which include the words “CENTRAL LECHERA ASTURIANA”. These trademarks are as follows:
- “CENTRAL LECHERA ASTURIANA – CLAS”, granted on
November 5, 1993, (Class 29), with registration number 1.743.570.
- “BIO CENTRAL LECHERA ASTURIANA”, applied for on
January 16, 1998 (Class 29), with registration number 2.136.883. The validity of the registration of this trademark is however sub iudice.
- “CENTRAL LECHERA ASTURIANA CALCIO”, granted on September 16, 1999 (Class 29), with registration number 2.220.817.
- “CENTRAL LECHERA ASTURIANA BIOFIBRA”, applied for
March 16, 1999 (Class 29), with registration number 2.220.813. The validity of the registration of this trademark is however sub iudice.
- “VIDA SANA CENTRAL LECHERA ASTURIANA”, applied for on January 30, 1996 (Class 29), with registration number 2.009.432. The validity of the registration of this trademark is however sub iudice.
- “CENTRAL LECHERA ASTURIANA S.A.T. 471 LTDA.”, granted on December 22, 1997 (Class 29), with registration number 2.099.865.
The above constitutes evidence that the Complainant’s trademark is a national well-known trademark associated with specific milk products.
Likewise, the Complainant is registrant of the domain name , as it is proved in Annex 3 of the Complaint. This domain name was registered on December 22, 1997 before the ES-NIC, which is the Spanish Entity in charge of assigning .es domain names.
5. Parties’ Contentions 5.1 Complainant contends that: a) The domain name is identical and therefore confusingly similar to the various trademark registrations that are registered in favor of the Complainant as previously stated.
b) The Respondent does not have any right or legitimate interest in the domain name at issue due to the following:
i) The Respondent has no relationship with the Complainant.
ii) The Respondent has not been known under the domain name, or under any other related name to such a domain name.
iii) The Respondent does not own any right to the trademark .
c) The domain name has been registered and is being used in bad faith, due to:
i) The Respondent has posted the domain name at issue for sale in web page focused on the rent or sale of domain names. Consequently, the Respondent is trying to sale it.
ii) The lack of any content within the Web Site corresponding to the domain name at issue, which prevents the Claimant from making legitimate use of such a domain name.
5.2. Respondent did not answer to the Complaint Duly notified of the Complaint, the Respondent did not answer it.
6. Discussion and Findings The Policy sets forth in Paragraph 4 (a) the cumulative elements that the Complainant must prove in order to succeed in an administrative proceeding for abusive domain name registration and use. I shall examine each one of these elements in the following items:
“4.a. (i) Identity or Confusing Similarity”
The generic TLD “.com” cannot be taken into consideration as part of the comparison. As it has been clearly stated in The Forward Association, Inc., v. Enterprises Unlimited (NAF case FA0008000095491, October 3, 2000):
“It should be noted that when a trademark is composed in whole or in part of a domain name, neither the beginning of the URL, nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”.
In other words, the particles used for the TLDs are of no significance with respect to the question of the identity or confusing similarity. On the contrary, the point is to check whether there is a substantial identity between the words of the Complainant’s trademarks and the Respondent’s domain name(s) at issue. This substantiality can be deduced from different criteria, which, by the way, are not really new. The case law on trademarks can be helpful in this respect. From an objective point of view the comparison must take into account the phonetic and graphical analysis, as well as the number of coincidences in the words to be compared. From a subjective point of view, the Panelist must focus the analysis in the part of the words to be compared, which is rather confusing by having used the same relevant distinctive sign.
Likewise, it can be considered as a notorious fact that there is a significant coincidence between the domain name at issue and the words that the Complainant used to form the trademarks, which are one of the legal bases of the actual proceeding.
Obviously, the results of the analysis do not have to pay any consideration to the specific domain names assigning rules. Under these rules no domain name can be assigned if the domain name to be registered includes accents, the letter “ñ” or spaces between the words. These are legal prohibitions for any domain name in the present legal status.
On the grounds of the above-mentioned premises, it is beyond question that the trademark duly registered by the Complainant, is identical to the domain name .
In conclusion, the requirement of Paragraph 4.a.(i) is met.
“4.a.(ii) Absence of Respondent Rights or Legitimate Interest in the Domain Name >
The domain name at issue does not coincide with the whole or either part of the Respondent’s name, trademark or trade name.
In addition, although the Respondent did have the chance to, the Respondent has not answered the Complaint. Accordingly, the Respondent did miss the opportunity to submit any evidence of legitimate interest or right in the domain name , if there were any.
Therefore, if having any legitimate interest or right in the words forming the domain name , the Respondent should have had an active disposition in order to defend such interest or right. Since this is not the case and the Complainant has proved more than sufficiently that it has registered the trademark in the geographical area where the Respondent lives in, the Panelist must conclude that the Respondent has not any legitimate interest in the domain name .
Likewise, it should be stressed that the Complainant clearly states that the Respondent is not duly authorized, on the grounds of a license agreement or any other sort of right or entitlement, to fairly use the name .
Therefore, the requirement of Paragraph 4.a.(ii) is met.
“4.a.(iii) Respondent’s Registration and Use of the Domain Name in Bad Faith”
As to the bad faith requirement, it should be stressed that the Complainant is trademark holder of several trademark rights as it has been proved in Annex 3 of the Complaint.
In my opinion, the bad faith concept has to be focused not only from a subjective, but also from an objective approach. It is not only the knowledge of the Respondent in purchasing a domain name which is similar to a notorious trademark that counts, but also the mere fact of the continuous use of such a domain name under conditions revealing that the Respondent’s activity, both registration and actual use, cannot be allowed without at the same time causing a damage to a legitimate interest or to a potiur ius of a third party.
Due to the fact of the above-mentioned trademark registrations, the notorious and well-known name of the Complainant’s trademarks, mainly along the Spanish market and also since the Respondent is Spaniard, it is inconceivable that the Respondent did not know the name or trademarks , either in the moment of purchasing the domain name at issue, or afterwards when using it. There must be a iuris tantum presumption that the Respondent is using in bad faith the domain name if the foregoing conditions inter alia are met, since otherwise it would be very difficult for the Complainant to demonstrate that an illegal activity has taken place. Consequently, the burden of the prove must be for the Respondent who must prove that he/she has acquired or is using in good faith the disputed domain name.
As a result, the Panelist must come to the logical conclusion that the Respondent was completely aware that the registration of the domain name , on which the Respondent has not proved to have any right or interest, was something deliberate that caused a damage to and collides with the rights and legitimate interests of the Complainant.
In addition, the domain name at issue has been offered in one Web Site, which is specialized in this kind of transactions. This has been proved in Annexes 4 and 6 of the Complaint. This circumstance is one of the basic ones to consider that the domain name has been registered and/or used in bad faith (Paragraphs 4 (b)(i) of the Policy and 3 (ix) of the Rules). The concept of good faith cannot include economic offers concerning the use of domain names if additionally these domain names are similar or confusing similar to trademarks or any other legitimate right of the Complainant. If, on the grounds of legal proceeding, the Respondent finally loses the right of use on the domain name, then he/she will have to claim against the former owner. But this is something irrelevant for the fair right of the Complainant in cases where he/she has one.
In the Complainant’s opinion, the lack of use by the Respondent of the disputed domain name is an evidence of his bad faith. Annex 5 of the Complaint clearly shows that the Respondent does not use the Web Site of the domain name but for offering the service of registering domain names. This kind of offer is something usual in the conflicts between domain names and trademarks.
According to previous decisions of the Center, which are quoted in the Complaint (see Decisions D2000-0018 Banco Español de Crédito, S.A. v. Miguel Duarte Perry Vidal Taveira,D2000-0020 Compagnie de Saint Gobain v. Com-Union Corp , D2000-0239 J. García Carrión, S.A. v. Mª José Catalán Frías and D2000-0277 Deutsche Bank AG v. Diego-Arturo Bruckner, inter alia), the use in bad faith of the Domain Name may be declared even if it has not been used at all, nor there are serious purposes thereto.
Accordingly, the Panelist does agree with the argument that the Registrant is also using the domain name in bad faith by just using it in a passive way, that is, by not including any contents whatsoever within the Web Site corresponding to the domain name at issue, since this sort of use eventually prevents the Complainant from making a legitimate use of it.
Therefore, the domain name was registered and is being used in bad faith.
7. Decision The Complainant has proved that the domain name is identical to its trademark, that the Respondent has no rights or legitimate interest in the domain name at issue, and that the Respondent did register and use the domain name in bad faith. Therefore, according to Paragraphs 4 (i) of the Policy and 15 of the Rules, the Panel requires the registration of the domain name to be transferred to the Complainant.