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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Uniуn Elйctrica Fenosa v. Javier Hidalgo Romero
Case No. D2000-0892
1. The Parties
1.1. The Complainant is Uniуn Elйctrica Fenosa incorporated in Madrid, Spain, represented by Mr. Josй Carlos Erdozain, lawyer from Madrid, Spain.
1.2. The Respondent is Mr. Javier Hidalgo Romero, of Madrid, Spain, acting in his own name and representation.
2. The Domain Names and Registrar
2.1. The domain name subject-matter of this Complaint is "unionfenosa.com"
2.2. The Registrar of this domain name is Network Solutions, Inc of Herndon, Virginia, USA ("Registrar").
3. Procedural History
3.1. The Complainant submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") a Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999 ("Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Rules").
3.2. The WIPO Center received the copy of the Complaint submitted by e-mail on July 28, 2000, and the paper copy of the Complaint submitted by courier on July 31, 2000. An Acknowledgment of Receipt dated July 28, 2000, was sent by e-mail by the WIPO Center to the Complainant.
3.3. The WIPO Center dispatched to the Registrar a Request for a Registrar Verification by email on August 1, 2000. The Registrar responded by e-mail to the WIPO Center on August 1, 2000.
3.4. Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by e-mail on August 11, 2000.
3.5. A Response dated on August 30, 2000, was filed by the Respondent, and received by the WIPO Center on September 1, 2000. An Acknowledgment of Receipt was sent to the Respondent on September 1, 2000.
3.6. Subsequent to reception of the Response, and in accordance with the request in the Complaint, the WIPO Center proceeded to appoint an Administrative Panel composed of a single Panelist, inviting Mario A. Sol Muntañola to act as such on September 25, 2000. Therefrom, a decision shall be provided by this Administrative Panel, absent exceptional circumstances, by October 8, 2000.
3.7. The case before this Administrative Panel being conducted in the English language by both parties, the language of the decision shall be in English.
4. Factual Background
4.1. The Complainant is Union Elйctrica Fenosa, S.A., a company incorporated in 1982 by means of a merge between two companies that existed from the beginning of the century (Uniуn Elйctrica Madrileña and Fuentes Elйctricas del Noroeste, S.A.). The Complainant owns 42 Spanish registered trademarks (one for each class there is) corresponding to the denomination "Union Fenosa", and operates mainly in the industrial field of electricity. The Complainant’s goodwill, products, services, trade name and trademark are well known in the Spanish relevant market. The complainant started international expansion outside Spain in 1988, and currently is conducting business in over 25 countries on five continents.
4.2. The Respondent owns the domain name "unionfenosa.com", registered through Network Solutions on October 13, 1998.
5. Parties’ Contentions
5.1. The Complaint
5.1.1. The Complainant contends to own 42 Spanish trademarks for the denomination "Uniуn Fenosa" relevant to this complaint, each of them corresponding to one of the 42 classes for trademarks in the Nice Classification, granted and in force.
5.1.2. The Complainant contends to have been well known in the electricity business in Spain since the beginning of the century, the Mother Company of the Group having been founded on February 10, 1912.
5.1.3. The Complainant contends to have expanded its trade name –identical to its trademark– and business to the rest of the world since 1988. This expansion started from Spain to most Latin American countries, some Eastern European countries, companies in the Asian-Pacific area, in Africa and in Western Europe, also creating local consultancy firms in Latin America, Central and Eastern Europe, South-Eastern Asia and Eastern Africa, thus becoming famous also internationally.
5.1.4. The Complainant contends to have defended its Intellectual Property rights and trademark in all classes vigorously and with complete success, and that no one else, less the Respondent, holds trademark rights on the denomination "Uniуn Fenosa".
5.1.5. The Complainant contends that the trademark "Uniуn Fenosa" is a well-known and famous one in Spain and in the whole world identifying the company’s trade name, goodwill and services. Whereas the domain name "unionfenosa.com" is identical to the said trademark, the Complainant is lead to state it has rights and legitimate interests in the domain name "unionfenosa.com".
5.1.6. The Complainant contends the Respondent has no rights or legitimate interests in respect of the domain name "unionfenosa.com" because he has no relationship with the Complainant nor permission from it for the use of its corporate name and trademark, and the Respondent’s intention is obviously to seek his own financial benefit with the sale of the domain name to the Complainant.
5.1.7. The Complainant also contends that the Respondent did not register or use the domain name for a legitimate interest, but with the intention of attracting, for financial gain, Internet users to the registrant’s web site or on-line location, by creating likelihood of confusion with the complainant’s goodwill as to the source, sponsorship, affiliation, or endorsement of the registrant’s web site or location or of a product or service on the registrant’s web site or location.
5.1.8. The Complainant alleges that the domain name "unionfenosa.com" has been registered and used in bad faith, since the Respondent obviously registered it primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the good will identified by it, the Complainant, for a much larger sum of money than the out-of-pocket costs endured by the Respondent for the registry of the domain name.
5.1.9. The Complainant sustains the existence of bad faith in the Respondent’s behaviour from the fact that, when contacted by the Complainant in respect of the domain name "unionfenosa.com", the Respondent’s answer was an offer to sale the domain name for 4.500.000 Pesetas, and not receiving a satisfactory response from the Complainant, the Respondent threatened the Complainant about using the said domain name with "inappropriate" contents.
5.1.10. Also, the Complainant contends the Respondent refused a reasonable amount of money the Complainant, in an act of bona fide to avoid having to go through a more complicated solution, offered him.
5.1.11. The Complainant sustains that the bad faith of the Respondent derives also from the fact that, the Respondent being of Spanish nationality and living in Spain, he was conscious of damaging rights of a third party without legitimate cause by registering the domain name.
5.2. The Response
5.2.1. The Respondent contends that the trademark of the Complainant is not as well known as the Complainant sustains because it is not registered in the US as a trademark.
5.2.2. The Respondent contends there is bad faith in the Complainant’s conduct because of trying to obtain ownership of the domain name "unionfenosa.com" after someone else has registered it, and that the Complainant had not registered the domain name before in order to save money.
5.2.3. The Respondent contends it was the Complainant who contacted him, the legal owner of the domain name, to buy the said domain name for a ridiculous sum of money.
5.2.4. The Respondent sustains he registered the domain name with the idea of setting up a consulting firm on the Internet, and that since in the contract there is not a limitation on the period of time he can use the domain name, he is currently still working on this set up.
5.2.5. The Respondent contends the application of the UDRP to this case "abusive", according to section 2 d) and f) and section 10.1a) and c) of the Spanish Consumer Law 26/84, because when he registered the domain name there were different rules for solving disputes regarding domain names.
5.2.6. The respondents seems to challenge the UDRP, because WIPO has been created for the protection of multinational companies, and therefore there is "fumus bonis iuris" that the UDRP is not an impartial arbiter.
6. Discussion and Findings
6.1. Applicable rules
According to section 15 a) of the Rules, the Panel will decide taking into account the contentions and documents presented, and according to the Policy and the Rules. And inasmuch as both parties have legal seat and domicile in Spain, the laws and principles of Spanish Law will be taken into account (cases D2000-0001 Robert Ellenbogen v. Mike Pearson, D2000-0239 J. Garcнa-Carriуn, S.A. v. MЄ Josй Catalбn Frнas, o D2000-0143 Raimat v. Antonio Casals).
6.2. Applicability of the Administrative Process and WIPO’s Competence
6.2.1. The Respondent has not proved to have ever manifested himself contrary to the clauses in his contract with Network Solutions, as of today. Moreover, he did not cancel his registry of "unionfenosa.com" during the 30 days period Network Solutions –as a service provider for domain names authorised by ICANN– granted all its registrants previously to the coming into force of the Policy in relation to them, nor did the Respondent make then any statement whatsoever. Therefore, the Respondent has put himself under the obligation to submit to the UDRP. In any case, the process in which the UDRP consists does not discuss rights, and the Respondent has always the possibility of starting an action in the competent forum and according to the applicable law (as is stated in clause 24 of the Service Agreement the Respondent signed).
6.2.2. In accordance to the above, the Spanish Law for the Defence of Consumers and Users is not applicable to a contract entered into with a North-American entity, and with an express choice of forum in favour of that of the State of Virginia, U.S.A.
6.2.3. Furthermore, contrary to what the Respondent seems to indicate, the UDRP is not an arbitration, but an administrative process for the resolution of conflicts between domain names and trademarks, limited to situations of abusive registry. The binding force of the UDRP in the present case comes from the contractual relationship between Network Solutions and the Respondent (Case D2000-0691 Seur España, S.A. v. Antonio Llanos Alonso)
6.2.4. As a matter of fact, WIPO is only providing with the service of dispute resolution. The one to render a decision on the matter presented is the Panel appointed to this effect, independent from WIPO, and compelled to carry out his task with impartiality. In any case, the Respondent has always open the jurisdictional way against the decision rendered by the Panel.
6.3. Analysis of the elements established in section 4 a) of the Policy
6.3.1. Identity or confusing similarity to a trademark.
a) It is obvious that the confronted denominations are identical, therefore a risk of confusion exists.
b) The Panel considers that the denomination "Uniуn Fenosa" constitutes a well-known trademark in the Spanish market and business sector in which the Complainant acts, and that it is more than probable that the Respondent knew this trademark.
c) The Respondent’s observation that the trademark "Uniуn Fenosa" is not registered in the U.S.A. cannot be taken into consideration by the Panel. The decision must be directed to determine wether there has been an abusive registry, regardless of the territorial scope of the protection obtained by the Complainant for a denomination to which the domain name is identical.
6.3.2. The Respondent’s rights or legitimate interests in the Domain Name
a) The Respondent declares he had the intention to create a consulting firm under the domain name "unionfenosa.com". However, the web site does not exist, nor is it under construction, nor is there evidence that the Respondent has made serious preparations in such sense, all of which taking into account that the domain name has been registered now for nearly two years. Therefore, the Respondent has not proved to have any right nor legitimate interest in the domain name.
b) Moreover, the alleged intention of creating a consulting firm on the Internet, does not correspond to the interest the Respondent has proved in selling the domain name.
c) In any case, the Respondent, having seen that his choice of denomination for his own business raises controversy, should have justified with precision the reason why he decided to adopt the denomination "unionfenosa.com". This is a denomination the roots and origins of which the Complainant has explained very well, whereas the Respondent has not justified his choice for the same denomination at any moment.
d) Furthermore, the Respondent does not clearly contend he did not know the previous existence of such denomination, and there is little probability that the identity between both denomination be a coincidence, most of all due to the actual personality and complexity of the denomination "Union Fenosa".
6.3.3. Domain Name registered and used in bad faith
a) The Panel considers proved that the Respondent made a first offer of sale for 4’5 million pesetas, an amount much superior to that spent for the registry of the domain name by the Respondent.
b) Page 4 of Exhibit 5, does not leave any doubt about the Respondent’s bad faith. Given the negative reaction of the Complainant to pay the sum required, and in view of the counteroffer made, the Respondent openly threatens the Complainant with making an "indiscrete" use of the domain name in relation to the Complainant’s corporate image.
c) In view of the circumstances of the case, the lack of effective use of the domain name by the Respondent must be considered as a use in bad faith (Case D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows). In any case, who registers in bad faith is making a use of the domain name in bad faith. (Case D2000-0239 J. Garcнa Carriуn, S.A. v. MЄ Josй Catalбn Frнas).
7.1. In view of the above circumstances and facts the Panel decides, that the domain name registered by Respondent is identical to the trademark in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent’s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name "unionfenosa.com" be transferred to the Complainant.
Mario A. Sol Muntañola
Dated: October 9, 2000