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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Cortefiel, S.A. v. Miguel Garcнa Quintas

Case No. D2000-0140

 

1. The Parties

The Complainant is Cortefiel, S.A., a corporation with legal head office in Avenida del Llano Castellano 51, Madrid 28034, Spain (the "Complainant"), represented by Verуnica Palau Hunziker and Amadeu Abril i Abril, on behalf and in the name of Nominalia Internet SL, Barcelona, Spain.

The Respondent is Mr. Miguel Garcнa Quintas, an individual resident in Playa del Inglйs, Gran Canaria, Spain (the "Respondent").

 

2. The Domain Name and Registrar

The domain name at issue is cortefiel.org, registered with register.com, Inc., a corporation with head office at 575 8th Avenue, 11th Floor, New York, NY 10018, United States of America (the "Registrar").

 

3. Procedural History

On March 8, 2000, a Complaint dated March 7, 2000, 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 14, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding in Case No. D2000-0140 to the Respondent. The Center established April 2, 2000, as deadline for the submission of a Response to the WIPO Center and the Complainant.

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 April 3, 2000, the Center sent a Notification of Respondent Default to the Parties by e-mail.

After having received Roberto A. Bianchiґs Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed him as a Sole Panelist. The decision date was scheduled for April 25, 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 to the Respondent pursuant to Rules, paragraph 2(a), and that the Notification of Respondent Default was also properly notified.

There were no extensions granted nor orders issued.

The registration agreement for the domain name at issue has been done and executed in English by Respondent-Registrant Miguel Garcнa Quintas and the Registrar. The Complainant has submitted its Complaint without any observation. The Panel seeing no special circumstances to determine otherwise, as provided in Rule paragraph 11, the language of this proceeding is English.

 

4. Factual Background

After Complainantґs assertions, supported by the documents enclosed as annexures and undisputed by Respondent – because of its default - the Panel finds that the Complainant owns the following trademarks registered in Spain:

Number

Concession date

Name

Class

40135

February 24, 1954

Cortefiel

Registered to sell all kind of clothes, wearing and present articles.

54217

January 29, 1960

Cortefiel

Registered to sell all kind of clothes, wearing and present articles.

57636

May 18, 1961

Cortefiel.

Registered to sell all kind of clothes, wearing and present articles.

657919

July 13,1976

Cortefiel

It consists in the denomination "Cortefiel".

866340

December 12, 1978

Cortefiel

Class 22. Ropes, strings, nets, shops, awnings,sails, sacks. Fillers. Gross textile fibroid materials.

866341

December 12, 1978

Cortefiel

Class 23. Threads and crochet wool

866342

June 5, 1979

Cortefiel

Class 24. Weaves, bedspreads and runners, textile articles.

866343

December 20, 1978

Cortefiel

Class 26. Fine laces and embroidered. Buttons, automatics, clasps, eyelets, pins and needles. Artificial flowers

866344

December 20, 1978

Cortefiel

Class 27. Carpet, plushys, mattings, linoleums, and other products to cover floors; Tapestry making (fabric tapestry not included).

"Cortefiel" is also registered by Complainant as a community trademark since December 16, 1997.

After the Complainantґs assertions – uncontended by Respondent because of its default – and the confirmation sent by the Registrar to the WIPO Center, it has been demonstrated that the domain name at issue cortefiel.org has been registered by the Respondent with register.com, Inc.

 

5. Parties’ Contentions

5.1 Complainant

The Complainant asserts that:

•The domain name at issue is identical to the trademark 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 trade name, matching all the CORTEFIEL trademarks, identifies a famous and/or renowned brand of clothing/fashion shops all over Spain. The Cortefiel name and stores are widely advertised through newspapers, radio stations and TV channels, both locally and nationally. Cortefiel is in fact a very famous trademark in Spain. Most Spaniards would immediately identify the "Cortefiel" brand and relate it to the Complainant. The Complainant has vigorously defended its intellectual property rights in all trademark classes, with complete success. Indeed, there is no other individual or corporation than the complainant holding trademark rights on Cortefiel in Spain, and certainly not the Respondent.

•There is no doubt about the lack of any legitimate intellectual property right of the Defendant to those names, and clear proof of the Defendant’s bad faith in registering and using both domain name (para 3(c) of the Policy).

•The Respondent lives in Spain and is most probably a Spanish citizen. He lives therefore within the geographical area where Cortefiel is a famous mark and Cortefiel products and stores are widely publicized in the media and present in the market, as they are indeed in the Respondent’s province of residence.

•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 Administrative Panel issue a decision that the contested domain name must 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 in Gran Canaria, Spain.

•The Complainant is filing a separate complaint in relation with the domain name cortefiel.com. The defendant in this other case seems to be a different person, even if he shares both family names with the Defendant in this case. More significantly, all the details in the Whois database are identical for both domain name registrations: address; e-mail; telephone number; contacts; nameservers, etc. While the Complainant is not in a position to tell whether both Defendants, Javier Garcнa Quintas and Miguel Garcнa Quintas, are in fact the same person or brothers, it is perfectly evident that both cases are at very least closely related. The Complainant asks that both cases, if not consolidated into a single one (at least until the identity or not of both registrants could be ascertained) and both Complaints be handled by the same Administrator and the same Panelist.

5.2 Respondent

The Respondent has not submitted a response, is therefore in default and, after the Notification of Respondent Default, has not made any submissions whatsoever.

 

6. Discussion and Findings

6.1 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) "(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 (...)".

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 Respondentґs default would indicate that the Complainantґs assertions are sufficient ground for the Panel to proceed to a default decision in its favor. However such automatic consequence is qualified under the Policy, because "the complainant must prove that each of these three elements are present". Policy, paragraph 4(a) in fine.

6.2 Independent Connection with the Respondentґs Web Site

As concluded in Case D2000-0076 the Panel considers that its powers under Paragraph 10(a) of the Rules allow the Panel to independently visit the Internet in order to obtain additional light in this default proceeding..

On April 24, 2000, the Panel visited the www.cortefiel.org web site of the Respondent. The connection resulted in a screen whose hard copy reads:

"Coming Soon! We recently registered our domain name at ... register.com, the first step on the web. Additional Services: Domain Name Search – URL-Forwarding – Email-Services – Web Hosting – Affiliate Program – Business Resources – FREE Domain Name Monitoring – Sell Domain Name".

No other screen was available at the Respondentґs web site.

6.3 Identity or Confusing Similarity

The Panel has considered the allegation by the Complainant as to the identity of the domain name at issue with the Complainantґs trademark CORTEFIEL. These allegations have not been contested by the Respondent because of its default.

The Panel has compared the domain name at issue with the Complainantґs trademarks CORTEFIEL, and finds that that the second level domain name cortefiel is identical letter-by-letter to the Complainant trademarks, and that the addition of ".org" – a generic top level domain intended for noncommercial organizations - makes it confusingly similar to such trademarks.

6.4 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 Complainantґs 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 default.

The fact that CORTEFIEL is a famous or well known mark in Spain is also uncontended. In the present default proceeding there is no contention on record in favor of the Respondent, and particularly that it 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).

Additionally the result of the connection independently conducted by the Panel did not show any evidence as to the rights or the legitimacy of the interests of the Respondent in the domain name. See 6.2. above.

Therefore, the Panel finds that the Respondent has no rights to or legitimate interests in the domain name at issue.

6.5 Registration in Bad Faith

The Respondent lives in Spain and is most probably a Spanish citizen. He lives therefore within the geographical area where Cortefiel is a famous mark and Cortefiel products and stores are widely publicized in the media and present in the market, as they are indeed in the Respondent’s province of residence. This was asserted by Complainant and ran undisputed by Respondent. This leads the Panel to conclude that the Respondent must know and most likely knows about the products, services of the Complainant, and its fame on the Spanish market.

The Complainant contends further that the intent of the Respondent in registering the domain name was reselling or perhaps renting it to the Complainant. When the Complainant discovered that the domain name cortefiel.com (object of a parallel Complaint) appeared now to be registered at the name of a parallel complaint’s respondent (Javier Garcнa Quintas) a notarized letter was sent informing the registrant of the legitimate rights of the Complainant to the domain name, and asking him to perform the transfer of such domain. Such notarized letter was never answered in writing. In a telephone conversation with Complainant’s trademark Attorneys (Clarke Modet & Co.) Mr. Javier Garcнa Quintas/the Respondent in the parallel Complaint) informed that he had no intention to sell the domain, but that he was nevertheless "open to discussions". No further negotiation was engaged.

Although the fact of default would authorize the Panel to immediate conclude that the purpose of the Respondentґs registration was to sell or rent the domain name, the fact that the Complainant does not mention any precise offer by Respondent, and specifically that Complainant does not contend that any precise sum for the transfer of rights in the domain name was asked by Respondent, leads the Panel to conclude that the presence of the circumstance described in the Policy Paragraph 4(b)(i) was not demonstrated by Complainant.

Nevertheless, the Policy Paragraph 4(b)(ii) allows a Panel to determine that 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. The Panel considers that the lack of response to the notarized letter sent by Complainant is a "pattern of such conduct", which authorizes the Panel to conclude that the domain name registration was made in bad faith.

The Panel further notes the time sequence of the registration of the domain name cortefiel.org after the Respondent in the parallel Complaint regarding cortefiel.com received the notarized letter. The registration was performed on January 4, 2000, immediately after the reception of the notarized letter above mentioned. This is interpreted as a move to create an obstacle for the Complainant wishing to reflect its marks in a corresponding domain name, and is an additional bad faith element in registration.

The fact that the registrants of cortefiel.org and cortefiel.com are seemingly two different persons cannot be an obstacle for piercing the veil of an apparent intent of concerted action among the registrants, to establish the appearance of mutual independence when the scheme to registrate in bad faith is perceivable. Both family names are identical. The postal address is identical, as the e-mail (the registrant e-mail of Miguel Garcia Quintas is gjavier@TELELINE.ES. All DNS required contact details and nameservers are identical. The Panel concludes that the Complainant is right when it asserts that there is a single mind and a single intent behind both registrations.

Absent any Respondentґs contentions – by its default - as to its rights or legitimate interests in the domain name, the Panel cannot believe in "miraculous coincidences" in respect of Whois identical data and contact details, nor in a lack of concert of very closely time-related domain name registrations (cortefiel.com and cortefiel.org). Therefore the Panel concludes that the Complainantґs assertion that it suffered a well-established pattern of conduct aimed at preventing the legitimate owner of the trademark from reflecting it in a corresponding domain name, is true.

Furthermore, the Complainant contends that the Respondent has apparently registered a number of domain names that are identical to well-known Spanish trademarks (and city names). The respondent has registered with another registrar, Network Solutions, Inc., at least one other famous Spanish trademark, also in the clothing and fashion field: Don Algodon (donalgodon.com). On April 24, 2000, the Panel has verified this fact by independently connecting with www.donalgodon.com, and found that the site offers no text whatsoever. A search by the Panel conducted on the same day at the NSI Whois database resulted in confirming that Mr. Miguel Garcнa Quintas is the registrant and the technical, Zone and Billing contact for the donalgodon.com domain name. In absence of any statement by the Respondent – by its default – the Panel considers that the contention of the Complainant has to be accepted by the Panel as true. Accordingly, the Panel considers that the circumstance of having registered other domain names identical to third parties trademarks or tradenames, without any indication of rights or legitimate interest thereto, is a further showing of bad faith registration.

For the foregoing reasons, the Panel finds that the domain name cortefiel.org has been registered in bad faith by the Respondent.

6.6 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 with cortefiel.org is preventing the Complainant from making a legitimate use of it, and trying to force the Complainant into a transfer-for-price negotiation". These assertions very much complicate the issue of establishing bad faith use as a requisite of the Policy, which must be found independently from bad faith registration.

However the Complainant gives an important clue when it contends that the relative 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, that using in bad faith is not limited to positive action, and that inaction is within the concept.

As seen in the result of the Panelґs independent visit to the Respondentґs web site, the Respondentґs is omitting any reference to a bona fide use of the domain name, and is confusing Web surfers or prospective customers of Cortefiel when it is promising them to "come soon" while simultaneously not furnishing them with any indication that it has no relationship whatsoever to a Complainantґs site or to Complainantґs marks or activities, being the mark famous in the Spanish market. Additionally the Panel considers that the fact that the instant case relates to a ".org" domain name contributes to the likelihood of confusion amongst the consumers who cannot realize what kind of non-commercial activities are being undertaken or planned by the Complainant. This is a circumstance of bad faith use as described in the Policy, paragraph 4(b), even if such conduct does not exactly fits within the description on Policy Paragraph 4(b)(iv) because of lack of purpose of "commercial gain".

For the above 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 cortefiel.org 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 decides to request that the domain name cortefiel.org be transferred to the Complainant Cortefiel, S.A.

 


 

Roberto A. Bianchi
Sole Panelist

April 24, 2000

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0140.html

 

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