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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
General Optica, S.A. v. Alfredo Labadia Pardo
Case No. D2000-0969
1. The Parties
The Complainant is General Optica, S.A. incorporated in Barcelona, Spain, represented by Mr. Albert Agustinoy Guilayn, lawyer from Madrid, Spain.
The Respondent is Mr. Alfredo Labadia Pardo, of Huesca, Spain, acting in his own name and representation.
2. The Domain Names and Registrar
The domain name subject-matter of this Complaint is <general-optica.com>.
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"). The copy of the Complaint submitted by e-mail was received by the WIPO Center on August 7, 2000, and the paper copy of the Complaint submitted by courier was received by the WIPO Center on August 8, 2000. An Acknowledgment of Receipt dated August 11, 2000 was sent by e-mail by the WIPO Center to the Complainant. A complaint Deficiency Notification was sent on August 14, 2000 to the Complainant, and the proper Amendment to the Complaint was received by the Center on August 16, 2000 by e-mail and August 17, 2000 in hardcopy.
3.2 A Request for Registrar Verification was dispatched by the WIPO Center to the Registrar by e-mail on August 14, 2000. The Registrar responded by e-mail to the WIPO Center on August 17, 2000.
3.3 Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the WIPO Center sent a Notification of Complaint and notified the Respondent of the Complaint and Commencement of Administrative Proceeding on August 28, 2000.
3.4 No Response was filed by the Respondent, only an e-mail in the Spanish language dated September 14, 2000 in which Mr. Alfredo Labadia Pardo acknowledges receipt of the Complaint and retorted that he did not understand fully the English language, and therefore proposes to continue the procedure in Spanish language. Such e-mail was replied by the Complainant representative on September 15, 2000, arguing that the procedure should continue in the English language as the respondent had not stated his objections at the moment he was notified of the Complaint.
3.5 The WIPO Center proceeded to notify the respondent default on September 19, 2000 to the parties and in accordance to the Rules to continue the procedure.
3.6 Subsequent to notification of respondent default, 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 October 3rd 2000. Therefrom, a decision shall be provided by this Administrative Panel, absent exceptional circumstances, by October 16, 2000.
3.7 The case before this Administrative Panel is being conducted in the English language, therefore the language of the decision shall be in English. The Registration Agreement was in English, the Complaint has also been filed in English. The Respondent did not fully agree with the language of the procedure and he posed certain undefined objections. Nevertheless, according to Rule 11 a), it should be decided in favour of continuing in the starting language, English. The main reason for this decision is that the language registration agreement between NSI and the domain holder was in English. Therefore, the Panel decides to render its decision in the English language.
4. Factual Background
4.1 The Complainant is General Optica, S.A., a company incorporated in 1979 by means of a merge between several companies, that owns 26 Spanish registered trademarks, as well as 2 European Community Trademarks, 3 International trademarks and has applied for trademark protection in Chile, Argentina and Andorra. Such trademarks contain the denomination "General Optica". The first trademark is being held since 1970. The Complainant holds the domain name "general-optica.es" since June 20, 1997. General Optica, S.A. operates in the commercial field of lenses and frames for lenses. The Complainant's goodwill, products, services, trade name and trademarks are well known in Spain, having started international expansion outside Spain in 1998, and currently conducting business in several countries.
4.2 The Respondent owns the domain name "general-optica.com", registered through Network Solutions on January 10, 2000.
5. Parties’ Contentions
5.1 The Complaint
5.1.1 The Complainant contends to own several Spanish and international trademarks for the denomination "General Optica" relevant to this complaint.
5.1.2 The Complainant contends to have been well known in the retailer trade of optical products in Spain for almost twenty years. The mother company of the Group, General Optica Catalana, S.L. was founded in 1958.
5.1.3 The Complainant contends to have expanded its name –identical to its trademark– and business to the rest of Spain in 1978 and to other countries of the world since 1998. And in the last years has increased their advertising campaign to become the most recognised trademark for optical products in Spain.
5.1.4 The Complainant contends that the trademark "General Optica" is a well known and famous trademark in Spain identifying the company's trade name, goodwill and services, and that the domain name "general-optica.com" is identical to the said trademark, and that it has rights and legitimate interests in the domain name "general-optica.com".
5.1.5 The Complainant contends that the Respondent does not have any known professional activity, since the web page corresponding to the disputed domain name does not include any content.
5.1.6 The Complainant contends that the Respondent has registered more than 40 domain names that correspond to trademarks to which it has no rights to. Such trademarks are of well known Spanish companies and some are internationally famous trademarks like "Warner-Emi" or "Totalfina".
5.1.7 The Complainant contends that the domain name is identical or confusingly similar to the trademark "General Optica" as meeting the required element of interchangeability.
5.1.8 The Complainant contends the Respondent has no rights or legitimate interests in respect of the domain name "general-optica.com".
5.1.9 Thus the purpose of the Respondent registering the domain name was to prevent the use of the disputed domain by the Complainant. No development of any commercial activity connected to the name "General Optica" was made by the Respondent as there is a lack of use of the disputed domain as well as the rest of the domains names held by the Respondent. And the Respondent has no right to the trademark or name "General Optica ", no legitimacy for using it.
5.1.10 The Complainant contends that the domain name shall be considered as having been registered and used in bad faith because at the time of registering the domain name, the Respondent did it to prevent General Optica, S.A. from using the disputed domain, as well as registering more than 40 domain names corresponding to other people’s trademarks.
5.2. The Response
The Respondent did not answer the Complaint within the deadline or afterwards.
6 Discussion and Findings
6.1 Applicable rules
According to Rule 15 a), the Panel shall decide taking into account the claims and documents presented. And due to both parties having an address in Spain, the principles and laws of the Spanish State shall be taken into account (Case D2000-0001 Robert Ellenbogen v. Mike Pearson, D2000-0239 J. Garcнa Carriуn, S.A. v. Maria Josй Catalбn Frias or D2000-0691 Seur, S.A. v. Antonio Llanos).
6.2 Fulfilling of the requirement according to the Policy, Paragraph 4 a)
6.2.1 Respondent’s Domain name is identical or confusingly similar to the trademark
(a) The similarity between the trademarks of the Complainant and the disputed domain name is absolute, having a clear risk of confusion.
(b) The trademarks of the Complainant are very well known in the Spanish service sector where it undertakes its activity.
6.2.2 Respondent’s rights or legitimate interests in the Domain Name
(a) The Respondent has not proved to have any interest or legitimate right in the disputed domain name.
(b) The Respondent has not justified undertaking any serious preparatory acts for a normal, legitimate or fair use on the disputed domain. The URL does not correspond to any web page actually, and before had a blank page with no contents other than a domain name parking system.
(c) The Respondent has not been known before for the use of such name, has no authorisation or license from the legitimate rights holder of such denomination.
6.2.3 Domain Name registered and used in bad faith
(a) Respondent has not associated the domain name with real on-line commercial or non-commercial presence. The domain name resolved to a domain name parking site, and nowadays it leads nowhere.
(b) The WHOIS for Alfredo Labadia Pardo shows a list of more than 40 domain names with no apparent relation to him. In view of the above, as stated in Case (D2000-0226, Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net) it would be fair to infer clearly bad faith in such conduct; "it is fair to infer that Respondent’s real business is to acquire domain names and sell them for profit."
(c) To any person residing in Spain or undertaking any business there, it is clear that the disputed domain name can only refer to the Complainant. The very use by someone with no connection with the products of the Complainant suggests opportunistic bad faith (Case D2000-0163, Veuve Cliquot Ponsardin, Maison Fondйe en 1772 v.The Polygenix Group Co.)
(d) Even though the Respondent by registering the disputed domain name prevents the Complainant from reflecting its trademark in the corresponding top level generic domain, it is also true that each company decides the risk it is prepared to take in its identifying trade signs. The Complainant can register its trademarks in whichever territories thinks fit, leaving the territories unregistered to whomever wants to register the same trademark for legitimate purposes. In the same way, the Complainant can register the domain names under the different top level domains, generic or country code, depending on its business. Therefore, someone with a legitimate interest in registering such domain name, could occupy such space that has not been claimed by the Claimant. Nevertheless, registering domain names to take advantage of such situation in bad faith will never be accepted as a legal or legitimate action.
In view of the above circumstances and facts the Panel decides, that the domain name "general-optica.com" registered by the Respondent is identical to Complainant's trademarks, that the Respondent has no right or legitimate interest in respect of the domain name, and 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 "general-optica.com" be transferred to the Complainant.
Mario A. Sol Muntañola
Dated: October 15, 2000