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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

H & R Johnson Tiles Limited v. Cristal Ceramicas S.A.

Case No. D2004-0432

1. The Parties

The Complainant is H & R Johnson Tiles Limited, Tunstall, Stoke-on-Trent, United Kingdom. It is represented in these proceedings by Mr. Josй Maria Mйndez, Baker & McKenzie, Madrid, Spain.

The Respondent is Cristal Ceramicas S.A., Onda, Castellуn, Spain. It is represented in these proceedings by Don Javier Ungrнa Lуpez, Madrid, Spain.

2. The Domain Name and Registrar

The disputed domain name is <cristalceramicas.com>. It is registered with CORE International Council of Registrars (“CORE”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2004. The Center received a hard copy of the Complaint on June 14, 2004.

On June 11, 2004, the Center transmitted by email to CORE a request for registrar verification in connection with the domain name at issue. On June 18, 2004, CORE transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, technical and billing contact. CORE also confirmed that the language of the registration agreement is English. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 21, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2004.

The Respondent filed a response on July 9, 2004.

The Center appointed Fabrizio La Spada as the sole panelist in this matter on July 19, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

By e-mail of July 29, 2004, the Complainant informed the Center that the parties had agreed to suspend the proceedings for a period of two months, pending settlement talks. The Panel issued Procedural Order No. 1 on July 30, 2004, and suspended the proceedings until September 30, 2004. Upon request of the Complainant, the proceedings were further suspended until October 8, 2004, by Procedural Order No. 2, issued on October 4, 2004.

Upon request of the parties, the Panel issued Procedural Order No. 3 on November 8, 2004, extending the suspension until November 24, 2004. The proceedings were resumed on November 24, 2004, and the decision due date was set on December 6, 2004, and subsequently extended until December 21, 2004.

4. Factual Background

The Complainant was established in 1901, and has become the leading manufacturer of tiles in the United Kingdom. The Complainant has affiliate companies in South Africa, Australia, Greece and India.

The Complainant is the owner of several trademarks consisting of or containing the word CRISTAL, registered in the United Kingdom, in Spain and as Community Trademarks. In particular, the Complainant is the owner of the following trademarks:

Figurative trademark CRISTAL, no. 373.899, registered in the United Kingdom (filing date: July 22, 1916; last renewed on July 19, 2000) in international class 19 for “tiles made of earthenware”.

Word trademark CRISTAL, no. 615.520, registered in the United Kingdom (filing date: July 10, 1941; last renewed on May 5, 2003) in international class 19 for “glazed earthenware tiles”.

Word trademark CRISTAL, no. 1.241.989, registered in the United Kingdom (filing date: July 30, 1986; last renewed on June 24, 1992) in international class 19 for “glazed ceramic tiles for floors and for walls”.

Word trademark CRISTAL, no. 1.696.734, registered in Spain (filing date: April 15, 1992; last renewed on February 28, 2002) in international class 19 for “tiles made of earthenware, floor tiles and wall tiles”.

Figurative trademark CRISTAL, no. 814.152, registered as Community Trademark (filing date: April 24, 1998; registration issued on May 29, 2002) in international class 19 (amongst others) for “Ceramic tiles, non-metallic building materials including flooring and wall linings”.

The Respondent is a company which was incorporated in Onda, Spain on September 8, 1987. The purpose of the company, and its activity, consists in manufacturing, exporting, importing, commercializing, buying and selling all types of ceramic products, earthenware articles and tiles for industrial, domestic and decorative use.

The Respondent registered the domain name on March 24, 2000. The domain name is active and resolves to an Internet website on which the Respondent presents its company, its activities and its products. In particular, the Respondent presents its wall tiles and floor tiles.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the domain name is “identical in its substantive part” to its CRISTAL trademarks, registered for tile goods and related products in class 19. It points out that the only difference between its trademarks and the domain name is that the latter includes the term “ceramicas”. However, this word is the Spanish translation of the English word “tiles” and is descriptive of the goods that are advertised through the Respondent’s website. Hence, according to the Complainant, the substantial element of the domain name is identical to the Complainant’s prior trademark rights and is being used in connection with identical goods, thus creating a likelihood of confusion and association for consumers.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name. The Complainant alleges that it started doing business in the tile industry in Spain in 1974. As evidence of this fact, the Claimant produces a letter from a Mr. Josй Ignacio, Basurto S.A., in which Mr. Ignacio states that his company “has been importing H&R Johnson’s products to Spain since 1974, including among these those bearing trade mark CRISTAL”. On this basis, the Complainant contends that, although the Respondent was incorporated in 1987, use of the mark CRISTAL by the Complainant in Spain begun 13 years before this incorporation. The Complainant submits that due to the very specialized nature of the tile business, the Respondent was undoubtedly aware of the CRISTAL trademark when it registered its company name as Cristal Ceramicas S.A..

The Complainant also points out that the Respondent filed several trademarks containing the word “CRISTAL”, against which the Complainant filed opposition proceedings. Certain of these trademarks have been denied registration, others have been registered, and the proceedings are pending for others. Still according to the Complainant, the Respondent is using the mark CRISTAL without authorization on its goods, packaging, labels, wrappers, business papers, and website in a predominant way.

The Complainant thus submits that the Respondent’s sole interest in respect of the domain name is to disrupt the business of the Complainant by using a domain name that is confusingly similar to a reputed trademark in the sector, with the purpose of misleadingly divert consumers.

The Complainant finally contends that the domain name was registered and is being used in bad faith. According to the Complainant, the domain name infringes the prior trademark rights of the Complainant and the Respondent is holding the domain name for the purpose of unfair competition against the Complainant. The Complainant submits that the Respondent is using the trademark CRISTAL as a domain name, as well as on its goods, packaging and advertising with the purpose of disrupting the business if the Complainant. This use infringes the Complainant’s trademarks, which implies that the Respondent has registered and is using the domain name in bad faith.

The Complainant seeks the transfer of the domain name.

B. Respondent

The Respondent submits that the Complaint must be dismissed, because the Complainant has not proved that the Respondent has no legitimate interest in the registration of the domain name.

The Respondent points out that it has been present in the tiles market under its corporate name since 1987, i.e., long before it registered the domain name. According to the Respondent, the domain name is identical to its corporate name. Thus, it has legitimate interests in the use and registration of the domain name.

The Respondent further stresses that the date of its incorporation is “much prior” to the registration in Spain of the Complainant’s CRISTAL trademarks (Spanish trademark, filed on April 15, 1992, and Community Trademark, filed on April 24, 1998). According to the Respondent, the other trademarks invoked by the Complainant have no effects in Spain and are not sufficiently well-known to have effects beyond the territory in which they are registered. The Respondent also disputes the validity as evidence of the letter from Mr. Josй Ignacio produced by the Complainant and suggests that the Complainant should have produced documentation evidencing the business transactions referred to in such letter, such as invoices and delivery notes referring to CRISTAL products.

The Respondent further submits that the term CRISTAL is not a fanciful word or the fruit of human creativity or imagination; it is a common word which has meaning. Thus, the Complainant cannot have monopoly rights over this word. According to the Respondent, this is evidenced by the fact that there exist several Spanish trademarks in class 19 which contain the word “CRISTAL”.

Concerning the opposition proceedings filed by the Claimant and the decisions issued in relation thereto, the Respondent contends that they only show that the Respondent has been denied the right to register the trademark CRISTAL CERAMICAS in class 19. However, they are no evidence that the Respondent cannot use its own corporate name in its business relations and as its domain name.

Finally, the Respondent contends that the domain name has not been registered and is not being used in bad faith, since the elements of bad faith set out in the Policy are inexistent.

The Respondent requests that the Complaint be dismissed.

6. Discussion and Findings

In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A); and

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section B); and

3. The domain name has been registered and is being used in bad faith (see below, section C).

Paragraph 4(a) in fine of the Policy states that the burden of proving that all these elements are present lies with the Complainant.

A. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As regards the first question, the Complainant has provided satisfactory evidence, in the form of electronic excerpts of trademark registrars issued by the United Kingdom Patent Office, the Spanish Oficina Espaсola de Patentes y Marcas and the Office of the European Union Trade Marks and Designs, that it is the owner of several trademarks, registered in the United Kingdom, in Spain and as Community Trademark, consisting of or containing the word CRISTAL.

As to the second question, the Panel finds that the domain name is confusingly similar to the Complainant’s CRISTAL trademarks under the Policy. As numerous prior panels have held, when a domain name wholly incorporates a complainant’s registered mark, that may be sufficient to establish confusing similarity for purposes of the Policy (see, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (November 6, 2001); Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (January 29, 2001); Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (March 24, 2000)). That is especially the case where the word that is added to the Complainant’s trademark is not distinctive, as is the case in the present matter (addition of “ceramicas”, which means “tiles” in Spanish and is thus descriptive of the goods in relation to which the Complainant’s trademarks are registered and the domain name is used) (see Reliant Energy, Inc. v. Brent Graeter, WIPO Case No. D2001-0246 (April 30, 2001); Freni Brembo S.p.A. v. Webs We Weave, WIPO Case No. D2000-1717 (March 19, 2001)). Moreover, the Panel finds that the addition of the word “ceramicas”, which refers to a main product of the Complainant, increases the likelihood of confusion between the domain name and the Complainant’s CRISTAL trademarks (see Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615 (August 27, 2002; Volvo Trademark Holding AB v. e-motordealer Ltd., WIPO Case No. D2002-0036 (March 22, 2002); Nintendo of America, Inc. v. Tyasho Industries and Thomas G. Watson, WIPO Case No. D2001-0976 (September 24, 2001)).

The Respondent’s argument that the term CRISTAL “only is a common word, having a concrete semantic content” and that, as a consequence, the Complainant cannot have monopoly rights over this term, must be dismissed. It is not for the Panel, in UDRP proceedings, to decide whether the Complainant’s trademarks may be invalid because of their alleged generic character. However, the Panel considers that the mere fact that the term CRISTAL has a meaning in English and/or in Spanish does not prevent it as such from being registered as a trademark.

The Panel therefore finds that the domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in the domain name.

It is notoriously difficult for a complainant to prove such a negative fact. Consequently, Panels have required complainants to establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the respondent to rebut the presumption of absence of rights or legitimate interests (see, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070).

In the present case, it is not necessary to examine whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the domain name. Indeed, the Panel finds that the Respondent has established that it does have such rights or legitimate interests.

According to Paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

On the basis of the statements and documents submitted, the Panel is satisfied that the Respondent has rights and legitimate interests in respect of the domain name, for the following reasons.

The Respondent was registered as a company in Onda, Spain, in 1987, under the name Cristal Ceramicas S.A. The social purpose and the activity of the Respondent consists in manufacturing, exporting, importing, commercializing, buying and selling all types of ceramic products, earthenware articles and tiles for industrial, domestic and decorative use. The domain name is identical to the Respondent’s corporate name and the Respondent’s website is used by the Respondent in furtherance of its business.

The panel thus finds that the Respondent has been commonly known by the name “Cristal Ceramicas”, i.e., by the domain name, before any notice of the present dispute.

As other panels have pointed out, it is possible for a deceptive registrant to concoct a phony business name under which to register a domain name with the intent to deceive a trademark holder or the general public as to the legitimacy of the registrant’s claim to the domain name (see Windsor Fashions, Inc. v. Windsor Software Corporation, WIPO Case No. D2002-0839 (November 14, 2002)). This is not so in the present case. Indeed, the respondent registered its corporate name in 1987, more than 15 years before notice of the present dispute (and well before the creation of the world wide web and the opening of domain name registration). Moreover, it registered its corporate name and began doing business in Spain under the same approximately 5 years before the Complainant acquired trademark rights on the term “CRISTAL” in that country. The record clearly establishes that the Respondent is what it claims, a business operating under and commonly known by the name “Cristal Ceramicas”.

The Complainant submitted that even though it had not acquired trademark rights in Spain yet, it began doing business in the tile industry in Spain in 1974 (and worldwide since 1901). As evidence of its activity in Spain, it produced a letter from a Mr. Josй Ignacio, in which Mr. Ignacio states that his company “has been importing H&R Johnson’s products to Spain since 1974, including among these those bearing trade mark CRISTAL”. Thus, the Complainant contends that prior to registering the company name Cristal Ceramicas S.A. in 1987, the owner of the Respondent undoubtedly knew of the existence of the Complainant. The Panel considers that the evidence submitted does not prove that the Respondent knew of the existence of the Complainant in 1987. In any event, the question arises whether this argument would be relevant or not in the context of the present dispute and whether it could be entertained by the Panel in view of the limited scope of UDRP proceedings. Given the limitations of the current procedure under the Policy, it is not for the Panel to say whether the Complainant’s claim would be successful in a Court of law. This is a case where the Panel considers that the respective rights of the parties are better dealt with in a Court than through the procedures under the Policy.

In accordance with the elements set out above, the Panel finds that the Complainant has failed to show that the Respondent has no rights nor legitimate interests in respect of the domain name.

C. Registered and Used in Bad Faith

Since the Policy requires the Complainant to prevail under each section of sections 4(a)(i), (ii) and (iii), the Panel does not need to consider section 4(a)(iii), i.e., whether the Respondent registered and is using the disputed domain name in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Fabrizio La Spada
Sole Panelist

Dated: December 21, 2004