WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sidamsa- Continente Hipermercados, S.A. v. Rose Communications, S.L.
Case No. D2000-1748
1. The Parties
Complainant is Sidamsa- Continente Hipermercados, S.A., a corporation duly organized and
validly existing under the laws of the state of Spain, with its principal place of
business located at Ctra. de Burgos, Km 14,500, E-28108 Alcobendas, Madrid, Spain.
Respondent is Rose Comunications, S.L., a limited liability company duly organized and
validly existing under the laws of the state of Spain, with its principal place of
business located at La Vega, 34, 45223 Seseña (Toledo), Spain, as confirmed by
Respondent.
2. The Domain Name and Registrar
The domain name under dispute is (the "Domain
Name").
The registrar of the domain name under dispute is Network Solutions, Inc. ("NSI"
or the Registrar), with business address in Herndon, Virginia 20170, USA.
3. Procedural History
On December 15, 2000, and December 18, 2000 (original) and January 9, 2001 (the copies of
the complaint), Complainant submitted its Complaint through e-mail and hardcopy,
respectively, with the required filing fee for a three member Panel, to the World
Intellectual Property Organization ("WIPO") Arbitration and Mediation Center
(the "WIPO Center"), in accordance with the Uniform Domain Name Dispute
Resolution Policy (the "Policy") adopted by the Internet Corporation for
Assigned Names and Numbers (ICANN) on October 24, 1999, the Rules for Uniform Domain Name
Dispute Resolution Policy (the " Rules"), and WIPO's Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy ("WIPO's Supplemental Rules).
An Acknowledgement of Receipt of Complaint was sent to Complainant by the WIPO on December
19, 2000.
On December 21, 2000, WIPO sent a "Request for Registrar Verification" via email
to NSI requesting a confirmation that NSI had received a copy of the complaint; that the
domain name under dispute is registered with NSI; that Respondent is the current
registrant of such domain name and full contacts details available under the WHOIS
database. On December 22, 2000, WIPO received via e-mail from NSI the "Network
Solutions' Verification Response" confirming the above as well as that the Domain
Name is currently registered to Respondent and is in "active" status, and that a
certain Network Solutions 5.0 Service Agreement is in effect.
On January 10, 2001, WIPO completed a "Formal Requirements Compliance
Checklist". It is worth mentioning that the undersigned Panel has independently
determined and agrees with WIPO's assessment that the Complaint is in formal compliance
with the requirements of the Uniform Domain Name Dispute Resolution Policy (the "
Policy"), the Rules, and WIPO's Supplemental Rules.
On January 11, 2001, WIPO properly sent via e-mail and hardcopy through express mail to
Respondent and to its administrative, technical and billing contacts, a "Notification
of Complaint and Commencement of Administrative Proceedings" enclosing a copy of
Complainant's complaint and confirming the formal initiation of this proceeding as of such
date, and granting a term for providing a response no latter that January 30, 2001. Such
e-mail and hardcopy were received by Respondent on January 11 and on January 12, 2001,
respectively. Furthermore, hardcopy of such Complaint as confirmed by Complainant was also
previously sent by Complainant to Respondent via courier on December 15, 2000. A copy has
also been communicated to the ICANN and to the Registrar.
This Panel considers that the complaint was properly notified to the registered
domain-name holder, the technical contact, and the administrative contact as provided for
in paragraph 2 (a) of the Rules.
On January 29, 2001 and on January 31, 2001, Respondent submitted its Response to the
Complaint through e-mail and hardcopy, respectively, to the WIPO Center.
An Acknowledgement of Receipt of Respondent's Response was properly sent to Respondent by
the WIPO Center, with copy to the Complainant.
Complainant proposed that the dispute be decided by a Single-member Panel, as may be
evidenced from paragraph 14 of Complainant's complaint. Respondent decided to reject such
proposal and requested that the dispute be decided by a three-member Panel. In
consideration to the above, the WIPO Center appointed an Administrative Panel integrated
by the three undersigned members, in accordance to what is provided for under paragraph
6(c) of the Rules.
During the month of February, 2001, the undersigned Panelists received proper invitations
to participate as Panelists in the referred domain name dispute proceeding. During such
month the undersigned Panelists signed and sent to the WIPO Center, their respective
Statements of Acceptance to participate as Panelists together with their relevant
Declarations of Impartiality and Independence.
On February 23, 2001, WIPO sent to Complainant and Respondent a "Notification of
Appointment of Administrative Panel and Projected Decision Date", appointing the
undersigned as Panellists, in a Three Member Panel, and scheduling March 8, 2001, as the
date for issuance of the Panel's decision, pursuant to paragraphs 6 (f) and 15 (b) of the
Rules. On the same date, WIPO transmitted the case file to the Panelists, with copy being
sent to Complainant and Respondent.
On February 28, 2001, the parties requested the Administrative Panel that supplemental
filings be accepted in clarification to the evidence and argumentation submitted by their
counterparts.
On March 12, 2001, the Administrative Panel issued a Procedural Order Number 1 in order to
allow them to fully present their respective cases and give them opportunities to respond
or comment to any new documentation submitted, under a new round of submissions and
allegations. For such purposes the parties had a seven working day period. It is hereby
noted that Complainant submitted a certain supplemental filing regarding Respondent's
response, and Respondent filed additional evidence and argumentation regarding the above
mentioned Complainant's supplemental filing.
In consideration to the above mentioned requests for additional submissions, and to the
timing required to execute the above mentioned procedural order, the Administrative Panel
decided to re-schedule the date for the final issuance for the Panel's decision to April
10, 2001.
The Panel has thereafter not received further requests from Complainant or Respondent
regarding additional submissions, waivers or extensions of deadlines, and the Panel has
not found it necessary to request any further information, statements or documents from
the parties, nor the need as an exceptional matter, to hold any in-person hearings as
necessary for deciding the complaint, as provided for in paragraphs 12 and 13 of the
Rules. Therefore, the Panel has decided to proceed under the customary expedited nature
contemplated for this type of domain name dispute proceeding.
The language of the proceeding is English, as being the language of the domain
registration and Service Agreement, pursuant to paragraph 11(a) of the Rules, and also in
consideration to the circumstances of this administrative proceedings and to the fact that
there is no express agreement to the contrary by the parties. Furthermore, in order to
procure for the parties a fair and reasonable opportunity to respond, exercise their
rights and to present their respective cases, and that both parties be treated with
equality in these administrative proceedings, the Panel has agreed to receive and consider
all writs, information and documents submitted also in the Spanish language, under the
authority granted in the terms of paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is a company which was owned by French Promodes Group which merged in
September of the year 2000 with and into the Carrefour Group in France whose activity is
mainly related to the food trade through supermarkets and foodstuff superstores.
A Network Solutions' WHOIS database search indicates that Respondent's registration of the
domain name was created on December 6, 1999.
The Complainant indicated that it holds, among others, the following trademarks in Spain,
relevant to this Complaint as supported by copy of the Spanish Official Industrial
Property Gazette:
a) Trademark CONTINENTE, PRODUCTOS DE NUESTRA TIERRA, under registration
Number 2085200 (2) issued on April 9, 1997, on class 35 for advertisement services with
Sidamsa-Continente Hipermercados, S.A., as the sole and exclusive listed owner.
b) Trademark CONTINENTE, NUESTRA TIERRA, under registration Number
2093151 (4) issued on May 20, 1997, on class 35 for advertisement services with
Sidamsa-Continente Hipermercados, S.A., as the sole and exclusive listed owner.
c) Trademark and design DE NUESTRA TIERRA, ALTA SELECCIÓN under
registration Number 2115393 (0) issued on September 24, 1997, on class 29 for meat, fish,
poultry and others, with Sidamsa-Continente Hipermercados, S.A., as the sole and exclusive
listed owner.
d) Trademark and design DE NUESTRA TIERRA, ALTA SELECCIÓN under
registration Number 2115394 (9) issued on September 24, 1997, on class 30 for coffee, tea,
cocoa, sugar and others, with Sidamsa-Continente Hipermercados, S.A., as the sole and
exclusive listed owner.
e) Trademark and design DE NUESTRA TIERRA, ALTA SELECCIÓN under
registration Number 2115395 (7) issued on September 24, 1997, on class 31 for agricultural
products and others, with Sidamsa-Continente Hipermercados, S.A., as the sole and
exclusive listed owner.
f) Trademark and design DE NUESTRA TIERRA, ALTA SELECCIÓN under
registration Number 2115396 (5) issued on September 24, 1997, on class 32 for beer,
mineral water and others, with Sidamsa-Continente Hipermercados, S.A., as the sole and
exclusive listed owner.
g) Trademark and design DE NUESTRA TIERRA, ALTA SELECCIÓN under
registration Number 2115397 (3) issued on September 24, 1997, on class 33 for alcoholic
beverages, with Sidamsa-Continente Hipermercados, S.A., as the sole and exclusive listed
owner.
h) Trademark and design DE NUESTRA TIERRA, ALTA SELECCIÓN under
registration Number 2115398 (1) issued on September 24, 1997, on class 29 for meat, fish,
poultry and others, with Sidamsa-Continente Hipermercados, S.A., as the sole and exclusive
listed owner.
i) Trademark and design DE NUESTRA TIERRA, ALTA SELECCIÓN under
registration Number 2115399 (X) issued on September 24, 1997, on class 30 for coffee, tea,
cocoa, sugar and others, with Sidamsa-Continente Hipermercados, S.A., as the sole and
exclusive listed owner.
j) Trademark and design DE NUESTRA TIERRA, ALTA SELECCIÓN under
registration Number 2115400 (7) issued on September 24, 1997, on class 31 for agricultural
products and others, with Sidamsa-Continente Hipermercados, S.A., as the sole and
exclusive listed owner.
k) Trademark and design DE NUESTRA TIERRA, ALTA SELECCIÓN under
registration Number 2115401 (5) issued on September 24, 1997, on class 32 for beer,
mineral water and others, with Sidamsa-Continente Hipermercados, S.A., as the sole and
exclusive listed owner.
l) Trademark and design DE NUESTRA TIERRA, ALTA SELECCIÓN under
registration Number 2115402 (3) issued on September 24, 1997, on class 33 for alcoholic
beverages, with Sidamsa-Continente Hipermercados, S.A., as the sole and exclusive listed
owner.
It is hereby noted that Complainant referred in its Complaint that the above mentioned
trademark registrations were granted on different dates as well as some of them including
the word PRODUCTOS, both of which are not referenced in the above- mentioned Industrial
Property Gazette.
Complainant further indicates that all these trademarks include the
name "DE NUESTRA TIERRA", as being the principal element of the marks at issue.
That such mark owned by Complainant symbolizes the quality, goodwill, manufacturing and
commercializing principles developed by it and by Centros Comerciales Carrefour, for the
purpose of being a high-quality trademark to mainly identify especially qualified goods.
That the goods sold under the trademark "De Nuestra Tierra", at some
establishments are purchased under separate and at different stands in order to allow the
public to be conscious of the special qualification of such goods, as well as to meet the
consumer's quality expectations. That the goods purchased under the trademark "De
Nuestra Tierra" have been carefully chosen in accordance to a list of specific
parameters, drawn up by the Carrefour Group, and to be met by each one of the
manufacturers of the goods.
That there is no doubt that most Spaniard consumers would identify the "DE NUESTRA
TIERRA" brand and relate it to the Complainant.
That the distributors identified in the web of the Respondent are all established in
Spain, and are small companies whose main activity is the manufacturing of the same goods
sold by the Complainant under the same name.
That in Spain, where the Respondent and the manufacturers and distributors of the goods
are established, there are 124 supermarkets under the trade name Carrefour and 141
supermarkets under the trade name Supermercados Champion, owned also by Carrefour Group.
That at such establishments the goods identified under the name, trademark and stands
"DE NUESTRA TIERRA" are being exclusively sold.
That there has been a significant investment in advertising campaigns, initiated since
September 1998 to make consumers well acquaintance with this trademark.
That a certain notarized letter was sent on June 6, 2000 informing the Respondent of the
legitimate rights of the Complainant to the mark "De Nuestra Tierra". That since
the receipt of the notarized letter the Respondent has been developing an active
advertising campaign although they are aware of the Complainant's exclusivity rights.
The referenced notarized letter was answered by the Respondent on June 23, 2000. That in
such response the Respondent alleged the generic and non-distinctive character of the
registered trademarks.
That under Respondent´s website identical goods to the ones protected by the
Complainant's registered trademark are being offered through e-commerce. That therefore,
the consumer is led to confusion and association for the acquisition of such goods.
With respect to Respondent, such party indicated that in mid-1999, Respondent proposed to
the Spanish Regional Government of Castilla-La Mancha to develop a project aimed at the
incorporation of Small and Medium Enterprises (SMEs) of this region into the new economy.
The project intended to develop an operational platform which would serve to SMEs to sell
online their goods from their rural premises all over the world. That the project was
developed rapidly thanks to the enthusiasm of Respondent's initiatives and the enormous
potential of Castilla-La Mancha region as a producer of high-quality and well-reputed
goods. That in that zone, the expression "de nuestra tierra" is quite frequently
used. That this wording is also popular all around the world.
That the name selected for the project was DeNuestraTierra.com, identified as a name used
in the Region to commonly refer to goods. The expression "De Nuestra Tierra" was
also regularly used as a slogan in public awards granted, since the early 90's, by the
regional Government.
5. Parties' Contentions
A. Complainant
The Complainant alleged that their trademarks referred to above include the name "DE
NUESTRA TIERRA", as being the principal element of the marks at issue.
That there is no doubt about the legitimate rights of the Complainant regarding a large
trademark portfolio identical to the domain name object of this Complaint That there is no
less doubt about the lack of any legitimate intellectual property rights or any other
whatsoever, of the Defendant to that name, and to the proof of the Defendant's bad faith
in registering and using such domain name.
That the Complainant has exclusive rights, due to the Spanish Trademark Act and the
European Union Treaties (the Rome Treaty) and Statutory Law to the referred name that
identifies the goods sold.
That the Respondent is established in Madrid within the geographical area where the
Complainant owns several supermarkets Carrefour and Champion where the goods identified
under the trademark of the Complainant are purchased under big and wide stands, not
possible to be ignored by anyone.
That the Respondent is selling the same goods (olive oil, vinegar, honey, cheese, garlic,
ham, preserved goods, alcoholic beverages...) under the same name, on the Internet, and
has as intention to obtain a profit with the registration of a trademark as a domain name
for selling the same goods.
That the advertising as well as the official and public trade dress campaign of the mark
"De Nuestra Tierra" made by the Complainant is dated May 1999, this is six
months prior to the registration of the domain name "De Nuestra Tierra" by
Respondent made on December 6, 1999. Moreover, that the beginning of the Complainant's
advertising campaign dates from September, 1998.
That the Respndent has been taking unfair advantage of the reputation of the Complainant
and Centros Comerciales Carrefour, S.A. and Supermercados Champion where the food stuff
under the trademark "De Nuestra Tierra" is commercialized under the verbal
authorization for the use of the trademark of the Complainant.
That the goods identified under the trademark "De Nuestra Tierra" began to be
sold at the authorized establishments on September 1998.
That it was long after the commercializing of the Complainant's trademark when the
Respondent decided to register the domain name .
That the Complainant has never authorized the Respondent to use the mark "DE NUESTRA
TIERRA", either by granting a license or franchising or in any other way the mark
"DE NUESTRA TIERRA" to the Respondent.
That the presumed purpose of the Respondent in registering the domain name object of this
Complaint, is to obtain some profit of it through misleading the consumer about the origin
of the goods by association or confusion due to the identity of the marks at issue and the
identity of the offered and commercialized goods.
That the indiscriminate and non authorized use of the registered trademark by third
parties will provoke the dilution of the mark, and therefore the decreasing in the final
value of the mark "De Nuestra Tierra" with the considerable decreasing in the
Complainant's portfolio assets.
That there are some circumstances which increase the risk of confusion, an association,
especially and could be viewed as an evidence of the use in bad faith of the domain name.
That Complainant's stylized trademark is absolutely identical to the mark included in the
website under the domain name owned by the Respondent.
That when the parties have their residence in the same country, they must submit
themselves to the National Law and the principles of their country law, being in this
particular case the Spanish Trademark Act 1988, which in its Section 30 stipulates that
"The registration of a trademark confers upon its owner the exclusive right to use it
for economic purposes". Furthermore, International Treaties such as the Paris Union
Convention (Section 6 Bis 1) and the TRIP'S Agreement (Agreement on Trade Related Aspects
of Intellectual Property), grants a special protection to well-known trademarks.
Furthermore, Complainant notes that under section 6 of the Spanish Unfair Competition Act
1991, "Any act which lends itself to creating confusion concerning the activity,
goods, services, or establishment of another shall be considered unfair..."
That under section 11 of the Spanish Unfair Competition Act 1991, ..."the imitation
of the goods, services and entrepreneurial initiatives of others is unrestricted, unless
they are protected by an exclusive right"... Furthermore, that ..."the imitation
of a third party's products or services shall be considered unfair when it lends itself to
producing mental association in the minds of consumers regarding the goods or services in
question, or when it involves improperly exploiting the reputation or efforts of an
other...". That ..."the improper exploitation, for one's own benefit or that of
another of the advantages resulting from the industrial, commercial or professional
reputation of another party operating in the market shall be considered unfair. In
particular the use of distinguishing marks of others"...
That it is most inconceivable that Rose Communications, S.L. was unaware of the fact that
"DE NUESTRA TIERRA" is a registered trademark which identifies goods that are
widely commercialized at the supermarkets Champion and Centros Comerciales Carrefour, S.A.
That the avoiding of the confusion and association is included in the Trademark Act of
most countries and international treaties administered some of them by the WIPO.
With respect to the supplemental filing made by the Complainant to argue against the
Respondents citations, the Complainant indicated:
- their objection to the use of a domain name absolutely identical to
Complainant's registered and in force trademarks, due to the identity and consequent risk
of confusion and association to be easily incurred by the consumers and induced by the
Respondent.
- that the goods sold by the Respondent on their website
are also identified by the label of the manufacturer. That the
purchasing of such goods is confusing because they are sold under a third party's
registered trademark, by using an identical domain name, as well as including the same
design and drawings registered and used by the Complainant.
- That Respondent's design and color combination used in the
web page are absolutely similar to the design included in the
Complainant's mark.
Lastly, Complainant has requested under paragraph 4 (i) of the Policy, that the
Administrative Panel appointed in this proceeding issue a decision ordering that the
contested domain name be transferred to the Complainant.
B. Respondent
The Respondent manifests that the Complainant has filed this dispute in an evident
exercise of bad faith, with the sole aim to discredit and distort the legitimate business
growth of the Respondent.
The Respondent manifests that the referred to mixed trademarks are not at all publicly
perceived as the Complainant's trademarks, either in the region of Castilla-La Mancha or
in the rest of Spain. That similar terms are used by many different entities, including
the Complainant's fierce competitors as evidenced from the documentation that was
provided. Therefore, the Respondent refutes the arguments expressed by the Complainant
that most Spanish consumers would identify these terms as related to the Complainant.
That the Complainant has failed to prove that it is holder of the trademark DE NUESTRA
TIERRA. That the Complainant is not entitled, nor is it the holder of any rights for
exclusive use of the words DE NUESTRA TIERRA. That its claimed trademarks are of mixed
type and significantly more specific. That the Complainant makes an inaccurate statement
when indicated that its trademark numbers M 2115393, M 2115394, M 2115395 and M 2115396
are for the name DE NUESTRA TIERRA. That the Complainant has intentionally modified its
names in an obvious bad faith manoeuvre. That the words "ALTA SELECCION", as
they appear in the Spanish Trademarks and Patents Office Gazette, are intentionally
omitted in table of the Complaint which describes the trademarks of the Complainant.
That the Complainant submitted an issue of the Spanish Trademarks and Patents Office
Gazette containing the Complainant's applications, which does not show their legal status.
That the Complainant fails in the formal procedure to accredit its titles. That tracking
of current practices followed by the Spanish Trademarks and Patents Office shows that
there are many other holders of trademarks including the words DE NUESTRA TIERRA, even the
Complainant's direct competitors.
That the Complainant has no exclusive rights to use the words DE NUESTRA TIERRA.
That the term DE NUESTRA TIERRA would never be subject to any trademark, as it represents
a combination of generic terms, widely used in Spanish terminology.
That the Complainant's trademarks are sufficiently different than the domain name. That
the Complainant trademarks are distinct just because they incorporate fanciful drawings.
That since the trademarks that the Complainant has selected are so generic, the Respondent
can not be responsible for any potential confusion that may occur.
That Respondent rejects the aim of the Complainant to claim exclusive rights on generic
terms of the Spanish vocabulary.
That none of the products being sold on the Website are
identical to those labelled as the Complainant's claimed trademarks. That the
corresponding trademarks of any goods being offered in DeNuestraTierra.com are properly
labelled with their own trademark. Furthermore, that the Complainant's line of products
under the trademarks claimed, does not include any of the typical Castilla-La Mancha
goods, quite the contrary of the Respondent's bona fide offering, that is specialized in
these products.
That the Respondent has been making its own efforts to promote its Website, as it may be
checked in numerous public press releases, paid adverts, inserts and public appearances in
the Spanish media, Internet, Trade Shows and specialised magazines. That the Respondent
has invested, from the start, in promoting the Website .
That as an evidence of good faith business behavior, the Respondent submitted its business
plan and professional relations with suppliers and customers, as well as a description of
the Respondent's business activities and its Organisation.
That considering that the domain name , which might suit the
Complainant's needs, is still available, either the Complainant has no effective interest
in developing its business on the Internet, or the Complainant does not have any exclusive
title to use the expression "de nuestra tierra", and the Spanish ESNIC will
reject, or has already denied, the Complainant's application.
That the Respondent believes that solid grounds have been shown to reject any and all
arguments as provided by the Complainant, and specifically:
- That the Complainant has failed to demonstrate exclusive rights to the
name "de nuestra tierra".
- That the domain name is NOT identical nor
confusingly similar to any of the Complainant's claimed trademarks;
- That the Respondent has legitimate interests in respect of the domain
name ;
- That the registration of the domain name
was made according to reasonable grounds in a business environment. That the domain name
is being used in a bona fide offering of goods and services;
- That the Respondent has never offered to the Complainant or third
parties any domain name registration;
- That because of obvious differences between the Complainant and the
Respondent, the Respondent's activities do not disrupt the Complainant's businesses;
- That because of lack of public perception of the Complainant's claimed
trademarks, different products offering, etc., no commercial gain can be obtained by the
Respondent as a consequence of using the domain name DeNuestraTierra.com;
- That since day one, the Respondent has been very active using the
domain name ;
- That the Respondent is commonly known by its domain name
;
- That the Respondent is making a legitimate and fair commercial use of
its domain name .
That the Panel must conclude that the Complainant has failed to meet its burden of proof
with respect to the Policy and, consequently, must deny the Complainant's claim.
With respect to the supplemental filing made by the Respondent to argue against the
Complainant's supplemental filing, the Respondent indicated:
- That the Complainant did not challenge the legitimate rights of the
Respondent to use the name "DE NUESTRA TIERRA".
- That the Complainant has no single registered trademark coinciding
with the name "DE NUESTRA TIERRA".
- That the Complainant's claimed trademarks are of a mixed type and
include distinctive signs and specific wording and fanciful drawings.
- That Consumers are impressed with the overall perception of the
trademark. That when examining a trademark the overall structure of the trademark prevails
over any individual component.
- That the Complainant failed to provide evidence of the existence of
its trademark rights as the documentation that was submitted are only records of
consultation to the Spanish Patent and Trademark Office.
Finally, that in consideration of the clear evidence of bad faith in the complaint, the
Panel must make a finding of reverse domain name hijacking.
6. Discussion and Findings
The Panel considers that the Respondent by registering the contested domain name with
Network Solutions, Inc., agreed to be bound by all terms and conditions of Network
Solutions Service Agreement, and any pertinent rule or policy, and particularly agreed to
be bound by the Policy (incorporated and made a part of the Service Agreement by
reference), which policies request that proceedings be conducted according to the Rules
and the selected administrative-dispute-resolution service provider's supplemental rules,
in the present case being the WIPO Supplemental Rules for Uniform Domain Name Dispute
Resolution Policy. Therefore, the dispute subject matter of this proceeding is within the
scope of the above mentioned agreements and Policy, and this Panel has jurisdiction to
decide this dispute.
Furthermore, the Panel considers that in the same manner by entering into the above
mentioned Service Agreement, the Respondent agreed and warranted that neither the
registration of its domain name nor the manner in which it may intend to use such domain
name will directly or indirectly infringe the legal rights of a third party, and that in
order to resolve a dispute under the Policy, the Respondent's domain name registration
services may be suspended, cancelled or transferred.
The Panel also particularly considers that it is essential to dispute resolution
proceedings that fundamental due process requirements be met.
Such requirements include that the parties and particularly the Respondent in this case be
given adequate notice of proceedings initiated against them; that the parties may have a
fair and reasonable opportunity to respond, exercise their rights and to present their
respective cases; that the composition of this Panel be properly made and the parties be
notified of the appointment of this Panel; and, that both parties be treated with equality
in these administrative proceedings.
In the case subject matter of this proceedings, the Panel is satisfied that these
proceedings have been carried out by complying with such elemental due diligence
requirements, and particularly contemplating the notification of the filing of the
Complaint and the initiation of these proceeding giving the Respondent a right to respond.
That there is sufficient and adequate evidence confirming the above.
This Panel as directed by paragraphs 14 (a) and (b) and 15 (a) of the Rules shall decide
the complaint on the basis of the statements and documents submitted and in accordance
with the Policy, the Rules and any rules and principles of law that it deems applicable,
and may draw such inferences there from as it may consider appropriate.
Paragraph 4 (a) of the Policy directs that the Complainant must prove the presence of each
of the following elements: (i) that the domain name registered by the Respondent is
identical or confusingly similar to a trademark or service mark in which the Complainant
has rights; and, (ii) that the Respondent has no rights or legitimate interests in respect
of the domain name; and, (iii) that the Domain Name has been registered and is being used
in bad faith.
With respect to the first of such elements, this Panel finds that Respondent's Domain Name
is not identical nor confusingly similar to Complainant's "DE NUESTRA TIERRA ALTA
SELECCION" and "PRODUCTOS DE NUESTRA TIERRA ALTA SELECCION" and other
related trademarks. The trademarks "DE NUESTRA TIERRA ALTA SELECCION" and
"PRODUCTOS DE NUESTRA TIERRA ALTA SELECCION" and others related to such
nominations and designs, were registrated as mixed marks, this is, as a combination of
designs and words. The Complainant does not own the trademark "DE NUESTRA
TIERRA" by itself. The marks "DE NUESTRA TIERRA ALTA SELECCION" and
"PRODUCTOS DE NUESTRA TIERRA ALTA SELECCION" are registered with either a design
element or stylised letters. The Complainant apparently does not have a word-only
registration for "DE NUESTRA TIERRA" in Spain. Such phrase is used in a number
of other registered trademarks using a combination of design and words. Furthermore, it
appears that the mark would not have been registered without the unique combination of
words and designs because it would not have been sufficiently distinctive. The words
"de nuestra tierra" should also be considered as a customary phrase in the
Spanish language as used by other parties on the Internet.
Furthermore, this Panel finds that the Respondent has rights or legitimate interests in
respect of the domain name as: (i) it has used or prepared to use the
domain name in connection with bona fide offering of goods or
services as contemplated under Paragraph 4 (c) (i) of the Policy; and, (ii) the Respondent
is commonly known by the domain name as contemplated under Paragraph 4 (c) (ii) of the
Policy.
The Panel also finds that the Respondent has not used the Domain Name in bad faith, in
particular but without limitation, pursuant to Paragraph 4 (b) of the Policy, in view that
the Respondent is not intentionally attempting to attract, for commercial gain, Internet
users to its website or other on-line location, by creating a likelihood of confusion with
Complainant's mark, as to the source, sponsorship, affiliation, or endorsement of the
Respondents' website; nor there are circumstances indicating that the Respondent has
registered or has acquired the domain name primarily for the purpose of selling, renting,
or otherwise transferring the domain name registration to the Complainant for valuable
consideration in excess of its documented out-of-pocket costs directly related to the
domain name; nor has the Respondent registered the domain name in order to prevent the
owner of the trademark or service mark from reflecting the mark in a corresponding domain
name, nor the Respondent has registered the domain name primarily for the purpose of
disrupting the business of the Complainant.
The Panel, finds that the Complaint was not filed as an attempt at Reverse Domain Name
Hijacking as it was not brought in bad faith primarily to deprive a registered domain name
holder of a domain name. This Panel considers that the Complainant did not launch an
unjustifiable Complaint in bad faith and with malice or insupportable evidence and
argumentation as it may be considered as a clear abuse of the administrative proceeding
designed to deprive the Respondent of its domain name. Under these circumstances, the
Panel declares the complaint was not brought in bad faith, nor as an attempt at Reverse
Domain Name Hijacking or in an abuse of this administrative proceeding.
Lastly, it is hereby noted that no settlement has been reached by the Parties and made
known to this Panel prior to the rendering of this Panel's decision, which may eventually
affect or give ground for termination of this administrative proceeding as provided for
under paragraph 17(a) of the Rules, nor is this Panel aware of the existence or initiation
of any other type of legal proceedings before a court of competent jurisdiction for
independent resolution, regarding the domain name dispute as contemplated under paragraph
4 (k) of the Policy.
7. Decision
Therefore, and in consideration to the Complaint's compliance with the formal requirements
for this domain dispute proceeding, to the factual evidence and legal contentions that
were submitted, to the non conclusive confirmation of the presence of each of the elements
contemplated in Paragraph 4 (a) (i), (ii), and (iii) of the Policy, and on the basis of
the statements and documents submitted and in accordance with the Policy, the Rules and
other applicable rules and principles of law, as directed by paragraphs 14 (a) and (b) and
15 (a) of the Rules, this Panel by majority decides:
(1) that the Domain Name registered by Respondent is not identical nor
confusingly similar to Complainant's DE NUESTRA TIERRA ALTA SELECCION" and
"PRODUCTOS DE NUESTRA TIERRA ALTA SELECCION" and other related trademarks;
(2) that Respondent evidenced rights or legitimate interests in respect
of the Domain Name ; and
(3) that the Domain Name was not registered
nor was being used in bad faith by the Respondent.
Therefore, the Panel decides in favour of the Respondent and further requires that the
Complaint be dismissed.
______________________
Pedro W. Buchanan
Presiding Panelist
_____________________ _____________________
Frederick M. Abbott
Marino
Porzio
Panelist Panelist
Dated: April 26, 2001.
Dissenting Opinion by Panelist Marino Porzio.
Panelist Marino Porzio, Esq. was not able to concur with the opinion of the Panel Majority
as reflected in this Decision. The full text of his dissenting opinion, as written by
Panelist Marino Porzio, Esq., is as follows:
"My disagreement with the Panel majority results from the main conclusion of the
Decision which finds that the Domain Name at issue is "not identical nor confusingly
similar" to the Complainant's trademarks. As a consequence of this main discrepancy,
I am not in a position either to concur to the second and third consequential decisions of
the Panel majority.
While I have to agree that the Respondent's Domain Name is not "identical" to
the Complainant's trademarks, this Domain Name in my view is definitely "confusingly
similar" to the several trademarks cited by Complainant, particularly the trademark
"DE NUESTRA TIERRA ALTA SELECCIÓN".
Before analyzing this similarity, I have perhaps to state that when comparing a Domain
Name with a Trademark, I believe it is not the Panel's task to enter into the merits of
the trademark registration itself. The Panel is not to determine whether a given trademark
can be or could have been the subject of registration according to the law of any country.
The fact that the trademark cited in a given case is validly registered in the country of
the party citing such trademark, should be considered sufficient by the Panel for all
purposes.
In this particular case, the Complainant's trademarks are all legally registered in Spain,
irrespective of the problems they may have encountered at the time of their application.
Therefore, the Panel's task should be to compare these trademarks, as registered, to the
Domain Name subject to the dispute in order to determine their possible similarity and the
degree of the same.
In this respect, in the first place the Panel should examine the registered trademarks to
determine their real structure and the manner they are being used and this should be done
according to the normal and practically universal criteria of Trademark law and practice.
In the case of trademarks "DE NUESTRA TIERRA ALTA SELECCION", it is certainly
true that these trademarks were registered as "mixed" marks, this is, as a
combination of words and figurative elements. Whether this was done because otherwise it
would have not been possible to register the mark is completely irrelevant. The fact is
that trademarks "DE NUESTRA TIERRA ALTA SELECCIÓN" were actually accepted to
registration by the Spanish competent authorities and we can thus assume they complied
with all legal, administrative and policy requirements of the Spanish Trademark Authority.
Moreover, it seems necessary to point out that at the time of their application, the
Complainant inserted a disclaimer in the sense that no protection was requested for the
generic words "ALTA SELECCIÓN". This clearly results from the abundant evidence
filed by both parties, in particular the Respondent who went as far as filing copies of
the Complainant's application proceedings in connection with these trademarks.
When examining this trademark it can be noticed that it consists of a number of elements:
The words "DE NUESTRA TIERRA" depicted in a prominent manner, over a sort of
landscape in brown and yellow. Visually, the main distinctive element is doubtless
constituted by the words "DE NUESTRA TIERRA" which are included very prominently
in a particular and peculiar typography. This typography is important because it
constitutes one of the very distinctive aspects of this trademark and it has thus been
consistently used in all promotion and publicity campaigns of the Complainant according to
the several documents filed in the proceeding.
From the analysis of the trademark it is also evident that generic words "ALTA
SELECCIÓN" are not intended to be more than descriptive or indicative words of the
quality of the products, such as similar wording contained in a number of trademarks like
"first quality", "premium", "first selection", "old
vintage", etc. In addition, this fact is confirmed by documents filed in the
proceedings, where it appears that they were the object of a disclaimer by the
Complainant, at the time of the application.
Hence, the intended main element and distinctive character in all the Complainant's
trademarks is given by the expression "DE NUESTRA TIERRA". Although this is a
"mixed" trademark, the only manner to refer to or to mention the trademark is by
using its word elements and this is true for all mixed marks. Naturally, when the
trademark is used in practice, it will be shown in its entirety with the addition of the
figurative elements it consists of.
This is particularly true for the ten of the Complainant's registered trademarks "DE
NUESTRA TIERRA ALTA SELECCIÓN" which appear listed in the "Factual
Backround" section of the Decision, in letters c) to l), and covering different kind
of foodstuff.
The above conclusion is evident when analyzing the several promotions and advertising
campaigns carried out by the Complainants since they started using and promoting these
trademarks throughout Spain, in connection with certain products related to foodstuff.
All pictures and advertising material used in these campaigns, according to the evidence
submitted in the proceeding, depict the words "DE NUESTRA TIERRA", always
written with the same distinctive typography.
A few months after the Complainant started the promotion campaigns, the Respondent
obtained registration of the Domain Name , allegedly to be used
in connection with certain goods of the Spanish Region of Castilla La Mancha. To be noted
that the goods for a great part are exactly the same or at least in the same food sector
that those distinguished by the Complainant's trademarks. Also to be noted that despite
the Respondent's allegations that the intended use of the Domain Name is the promotion of
goods from the region of Castilla La Mancha only, the Complainant's promotion of similar
goods have covered the whole of Spain, including naturally the Region of Castilla La
Mancha.
However, the most interesting fact is that the Respondent, when materially using the
registered Domain Name, has choosen to do it with an appearance which is practically
identical to the typography of Complainants registered trademarks "DE NUESTRA
TIERRA".
In fact, when opening the Respondent's web site the first
thing appearing is the phrase "De Nuestra Tierra" written with an almost
identical typography than the one used in Complainant's registered trademarks "DE
NUESTRA TIERRA". Anybody familiar with trademark "DE NUESTRA TIERRA" when
watching the material appearance of the Domain Name on the screen, can only get the
impression that it is the same campaign already seen in advertising material and in the
several shops of the Complainant.
In fact, the Respondent seems to have decided to use the registered Domain Name not only
as an Internet address but, in addition, as a trademark for the products he intends to
commercialize and this is very evident to whoever examines the pictures included the the
material filed in the proceedings. The Respondent's statements that each advertised
product does have its own trademark is true. However, it is also true that when an
advertisement appears depicting "Miel [honey] DE NUESTRA TIERRA"; "Aceite
de Oliva [Olive Oil] DE NUESTRA TIERRA", etc. and the expression DE NUESTRA TIERRA
appears in a prominent manner and in a stylized typography, this expression is clearly
being used as a "trademark", irrespective of any other trademarks that such
advertisement may also contain.
Moreover, all advertisements appearing in the Respondent's web site are designed in the
same manner and this can only leave in the public the clear impression that the goods
marketed through the site are all distinguished by the same trademark "DE NUESTRA
TIERRA".
The trademark character of these expressions is not diminished by the addition in very
small characters of "w.w.w." at the beginning and ".com" at the end.
In this connection, it is to be recalled again that the Respondent is not only using
exactly the same expression as the main word elements of the Complainant's trademarks
"DE NUESTRA TIERRA", but he is also using those expressions in the same stylized
typography that will certainly lead the public to think that the products object of
advertising are the same products distinguished by the Complainant with their several
registered trademarks "DE NUESTRA TIERRA".
In conclusion, for this Dissenting Panelist, the registered Domain Name is not only
clearly "confusingly similar" to the Complainant's registered trademarks but the
Respondent is also clearly imitating the material appearance of the Complainant's
trademarks when materially reproducing the Domain Name. The obvious result of this
imitation is the confusion it will certainly cause in the public for the benefit of the
Respondent.
In addition, it is the opinion of the Dissenting Panelist that the Respondent has no right
nor legitimate interest in respect of the Domain Name, which is clearly confusingly
similar to trademarks registered earlier, that clearly belong to the Complainant and that
are profusively and publicly used by the Complainant throughout Spain.
Moreover, it is the opinion of the Dissenting Panelist that in view of all above
considerations, the Respondent's bad faith should be assumed when he registered and is
actually using the Domain Name at issue. In fact, the Respondent seems to have very
cleverly found the manner to use a well-known trademark for its own benefit through the
channel of a Domain Name. This bad faith results from the documentary evidence in the
proceeding and, in particular, by the Respondent's strenuous efforts to disqualify the
legality and validity of the Complainant's registered trademarks.
In relation to the existence of bad faith, this Panelist believes that circumstances
provided for in Paragraph 4, b), ii) and iv) are present in this case. In fact, by
registering the Domain Name the Respondent made sure the
impossibility for the Complainant to register their Trademark as a Domain Name (Para. 4,b)
ii). In addition, the fact that the registered Domain Name is confusingly similar to
several registered trademarks which are being actively used in commerce, for the same kind
trade sector, provokes the natural attraction of Internet users in the belief that they
are dealing with a trademark already known to them. In this manner, the Respondent is
obtaining commercial gain from this confusion (Para. 4, b) iv)).
The Dissenting Panelist would rule that the Complainant has met its burden and that the
imputed Domain Name should be transferred.
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