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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

General Optica, S.A. v. RMC, S.L.

Case No. D2000-0970

 

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 RMC, S.L. incorporated in Zaragoza, Spain, represented by Mr. Alejandro Uriel Chaverri, lawyer from Zaragoza, Spain.

2. The Domain Names and Registrar

The domain names subject-matter of this Complaint are

<generaloptica.net>
<generaloptica.org>

The Registrar of these domain names 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 subsequently received by the WIPO Center.

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 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 28, 2000.

3.4 The Response was filed by the Respondent on September 15, 2000 by e-mail and received on September 19, 2000 in hardcopy.

3.5 The WIPO Center proceeded to acknowledge of receipt the Response on September 17, 2000.

3.6 Subsequent to reception of the Response, and in accordance with the request in the Complaint, the WIPO Center proceeded to appoint the Administrative Panel composed of a single Panelist, inviting Mario A. Sol Muntañola to act as such on October 3, 2000. Therefrom, a decision shall be provided by this Administrative Panel, absent exceptional circumstances, by October 17, 2000.

3.7 The case before this Administrative Panel is being conducted in the English language; thus the language of the decision shall be in English. The Registration Agreement was in English, the Complaint has been filed in English, and the Respondent has also answered in English.

 

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 "generaloptica.net" and "generaloptica.org", registered through Network Solutions on June 5, 2000. The same Respondent owns other domain names like "ambipur.net", "avecrem.net", "consum.org", "gallinablanca.net", "starlux.org", "fontvella.net", "caixamanresa.org", "fotoprix.org", "fotosistema.org", "gestmusic.net", "realzaragoza.net" and "roventa.com".

 

5 Parties’ Contentions

5.1. The Complaint

5.1.1 The Complainant contends to own 27 Spanish trademarks, several trademarks in other countries and a few 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 as to become the most recognized trademark for optical products in Spain.

5.1.4 The Complainant contends that the trademark "General Optica" is a well known and famous one in Spain identifying the company's trade name, goodwill and services, and that the domain names "generaloptica.org" and "generaloptica.net" are identical to the said trademark, all of which leading the Complainant to state it has rights and legitimate interests in the domain names "generaloptica.org" and "generaloptica.net".

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, other than an "under construction" presentation.

5.1.6 The Complainant contends that the Respondent has registered more than 25 domain names that correspond to trademarks, which it has no rights to. Such trademarks are of well-known Spanish companies.

5.1.7 The Complainant contends that the domain names are identical or confusingly similar to the trademark "General Optica" as meeting the required element of interchangeability, which means that if the trademark and domain names are exchanged, no difference can be appreciated.

5.1.8 The Complainant contends the Respondent has no rights or legitimate interests in respect of the domain names "generaloptica.org" and "generaloptica.net" because the different criteria of other decisions can be applicable to the present case.

5.1.9 Thus the purpose of the Respondent registering the domain name was to prevent the use of the disputed domains 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 fair interest, no right to the trademark or name "General Optica", and no legitimacy for using it.

5.1.10 The Complainant contends that the domain names shall be considered as having been registered and used in bad faith because at the time of registering the domain names, the Respondent did it to prevent General Optica, S.A. the use of the disputed domains. There is also bad faith, as well, because the Respondent has registered more than 25 domain names corresponding to other people’s trademarks. And in relation to the bad faith in the use of the domain, the web page offers no content.

5.2. The Response

5.2.1 The Respondent declares that RMC, S.L. business is the acquisition of domain names previously contracted by a third party to them in a bundle with the creation and design of Web Pages. Part of their business is carried in Nicaragua.

5.2.2 The Respondent claims that the registration of the disputed domain name is the result of a commercial transaction with the company Euronica from Nicaragua, which holds a legitimate interest in the name of the disputed domains. According to such business both companies agree that the Respondent would reserve the disputed domains names and transfer them to Euronica once the Web Page was created, by October 15, 2000.

5.2.3 The Respondent contends that Euronica has an interest in the present proceeding and authorizes the Respondent to act on its behalf.

5.2.4 The Respondent contends that the business of Complainant is accredited only in Spain part of Europe and some parts of South America, which is incompatible with the globalization that the Internet implies and which include the whole world. Contends also that the generic top level domains were established for the development of activity, which could be accessed from any part of the world.

5.2.5 The Respondent contends that the Complainant pretends to prevent the commercial prospects of small or new enterprises. Especially in the present case that Euronica, has entered the business of optical products under the same name as the Complainant in the country of Nicaragua.

5.2.6 The Respondent contends that Euronica in a notarized testimonial declares that is undertaking the necessary actions to register the trademark "General Optica".

5.2.7 The Respondent acknowledges the clear coincidence between the trademark of the Complainant and the disputed domain names, even though the Complainant has no interest in Nicaragua.

5.2.8 The Respondent contends that Euronica has a legitimate interest in the domain names and for that reason has initiated the process of reserving the trademark in Nicaragua, and are aware of the fact that "generaloptica.com" was already reserved by a third party.

5.2.9 The Respondent contends that the trademark for Euronica was not requested until the domain names have been reserved, as it is a business start up.

5.2.10 The Respondent retorts that the real interest of the Complainant, and any other company with a certain interest in the domain names being held by the Respondent, is protected by the country code domain name. Therefore having such companies the registered domain name ".es", like "general-optica.es", their activity in Spain can be carried without worries.

5.2.11 The Respondent retorts that several companies have legitimate interest in the disputed domain names, and encloses the names of several companies named "General Optica ". And taking that into account, the principle of "first come first served" should apply. On top of that, the domain name "generaloptica.com" is held by another company and for that reason could not be registered by the Respondent for Euronica's sake.

5.2.12 The Respondent contends to have used, or demonstrated preparations to use, the domain name in connection to a bona fide offering of goods or services for Euronica.

5.2.13 The Respondent analyses the range of activities that are considered bad faith, even acknowledging that the list is not numerus clausus. They contend not to have offered for sale the domain for a price above the cost of registration, not placed on sale on the web, nor prevented the owner of the trademark from reflecting their mark in a corresponding domain name.

5.2.14 The Respondent retorts to be shameful that the Complainant investigates the commercial relations with third parties, which could be part of private arrangements between companies; that this is the first complaint, and if the Complainant were right they would be inundated by complaints.

5.2.15 The Respondent does not consider the Spanish law applicable to the present case because the dispute falls outside the limits of Spanish territory, being a "high level global domain". Nevertheless, in case the panel finds otherwise, they go on quoting as much Spanish law as possible.

5.2.16 The Respondent contends that they have not tried to prevent a competitor's use of Internet. And that Euronica and the Complainant are not direct competitors.

5.2.17 The Respondent contends that the reservation of the domain name and the acts carried out (purchase of material, initiate the legal and administrative requirements to initiate business and register the trademark, and advertising campaign in newspaper) show that Euronica has begun to develop its activities in a form consistent with its assets.

5.2.18 The Respondent contends that until October 2000 RMC has no obligation to deliver the web page to Euronica and for this reason it is still under construction.

5.2.19 The Respondent contends that there has not been any aggressive and violent use of the domain, like "hit" counters, link to pornographic pages or constant change of address.

5.2.20 The Respondent contends that Euronica is offering goods and services, which is known in Nicaragua as "GeneralOptica", and has no intention to give up the trademark in question.

 

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. The Respondent considers that Spanish law is not applicable according to Case D2000-0540, notwithstanding the wide use of Spanish law in the Response by the Respondent. Therefore the panel has to decide whether to apply Spanish law or not. Taking into account that the law that govern primarily this Administrative Panel decision are the Policy and the Rules, and that any other subsidiary norm has to be according to the parties applicable law; due to both parties having siege and 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 Domain name identical or confusingly similar to the trademark

(a) The identity between the trademarks of the Complainant and the disputed domain name is absolute, having a clear risk of confusion. Such question has been accepted by the Respondent.

(b) The trademarks of the Complainant are very well known in the Spanish service sector were it undertakes its activity.

6.2.2 Respondent’s rights or legitimate interests in the Domain Name

(a) The Respondent is RMC, S.L. not Euronica, S.A., as the Respondent tries to confuse in its Response. The holder of the disputed domain name is the one that has to prove any right or legitimate interest in the disputed domain. The Respondent has not proved to have any legitimate right in the disputed domain name. The interest of Respondent according to its declaration is to register and hold the domain names on behalf of someone else which should be the one making use of the controversial denomination.

(b) If the company which the Respondent declares to hold the domain name on behalf of has some right or legitimate interest, any transfer of the disputed domain names already applied for before the commencement of this procedure would entitle this panel to consider such interest or right. As the actual registration stands, the only party to be taken into account is the Respondent, RMC, S.L. Moreover, if RMC’s customary business consisted in reserving domain names on behalf of third parties, it should have proved that; otherwise it is very difficult to understand its registration of well-known trademarks.

(c) Notwithstanding the foregoing, this panel can clearly appreciate from the documents enclosed with the Response, that Euronica, S.A. has no right or legitimate interest in the disputed domain names. That is to say, there is no trademark, not even proof of application for such protection, from Euronica (all Trademark Offices issue application documents which have not been enclosed). And Euronica has no legitimate interest in the disputed domain names "generaloptica.org" and "generaloptica.net" as the company does not respond to such denomination and has not initiated any non-fictitious trade with such name. The documents enclosed are several and can not be taken seriously, as there is no real link between the denomination "General Optica" and Euronica. Those documents are: strange press advertisements (published after the Complaint has been lodged and with no contact address or telephone); notarized declarations (which are mere declarations of intentions by someone before a Notary, and not followed by any other act that can proof any interest in the name); and, purchase of materials with no mention of the denomination, and which would be legal to manufacture them in Spain (supposed place of the purchase of material) only with the authorization of the trademark owner, the Complainant.

(d) The Respondent has not justified undertaking any serious preparatory acts for a legitimate or fair use or the disputed domain. The domain names take to an "under construction site", even on October 17, 2000, a date that according to the enclosed contract by Respondent, the Web Page should be operational on behalf of Euronica.

(e) The Respondent has not been known before for the use of such name, has not authorization or license from the legitimate rights holder of such denomination.

6.2.3 Domain Name registered and being used in bad faith

(a) Respondent has declared that before acquiring any right or legitimate interest in the denomination "General Optica" (non-fictitious trade with such denomination or applying for the trademark in Nicaragua), the disputed domain names were reserved. It even contends intending also to reserve the domain name "generaloptica.com", but found to be already taken. In such a case, any serious start up, and with concern for the law, would have chosen any other denomination that would be non-contentious. Therefore, by the own fact of continuing in registering and holding the two domain names disputed, it is proving bad faith in the registration.

(b) Respondent declares that the Complainant has no right in the disputed domain names because it does not operate worldwide, but only in parts of Europe and South America, insisting that the Complainant only has right in the corresponding country code Top Level Domains (ccTLD). Notwithstanding the former, it goes on pretending that its client will only operate in Nicaragua, but instead of reserving the domain name under the ccTLD of Nicaragua, registered two gTLD. Such lack of consistency reveals that the supposed proofs of legitimate interest are mere excuses to hold on to the disputed domain names, trying to prevent the application of the Policy and Rules with such excuses. Such conduct reveals that the domain names registered are being used in bad faith, otherwise there would have been actual proof of legitimate interest or right. If a trademark with the denomination had already been obtained in Nicaragua, before the commencement of this procedure, the case could fall outside the Policy and Rules.

(c) Respondent has not associated the domain name with real on-line commercial or non-commercial presence. The domain name resolved to an under construction site, and still does nowadays.

(d) The WHOIS for RMC, S.L. shows a list of more than 20 domain names with no apparent relation to the Respondent. It must be noted that such names are well known trademarks in Spain, and some are competitors among them. Therefore it can not be conceived that such fierce competitors agree that the Respondent should register their trademarks as domain names. The Respondent could have proved any agreement with the owners of such trademarks and has chosen not to. 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.

(e) To any person residing in Spain, like the Respondent, or undertaking any business there, it is clear that the disputed domain names can only refer to the Complainant. The very use by someone with no connection with the products of the Complainant, suggest opportunistic bad faith (Case D2000-0163, Veuve Cliquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co.).

(f) Respondent by registering the disputed domain names prevents the Complainant from reflecting its trademark in the corresponding top level generic domain names.

 

7. Decision

In view of the above circumstances and facts the Panel decides, that the domain names "generaloptica.org" and "generaloptica.net" registered by the Respondent are identical to Complainant's trademarks, that the Respondent has no right or legitimate interest in respect of the domain names, and that the Respondent's domain names have been registered and are being used in bad faith.

Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel requires that the registration of the domain names "generaloptica.org" and "generaloptica.net " be transferred to Complainant.

 


 

Mario A. Sol Muntañola
Sole Panelist

October 18, 2000

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2000/d2000-0970.html

 

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