WIPO Arbitration and Mediation Center

2. The Domain Name and Registrar

3. Procedural History

5. Parties’ Contentions

5.1 Complainant

5.2 Respondent

6. Discussion and Findings

6.1 Effects of Respondent Default

The specific allegations and contentions of the Complainant against the domain name registration bound the Respondent to respond specifically. According with Rules paragraph 5(b)(i) "(t)he response shall (...) (r)respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name (...)".

In case of a default, under Rules paragraph 14 (a), the Panel "shall proceed to a decision on the complaint", and under paragraph 14(b) the Panel " shall draw such inferences therefrom as it considers appropriate".

Thus, the Respondents default would indicate that the Complainantґs assertions are sufficient ground for the Panel to proceed to a default decision in its favor. However such automatic consequence is qualified under the Policy, because "the complainant must prove that each of these three elements are present". Policy, paragraph 4(a) in fine.

As concluded in Case D2000-0076 the Panel considers that its powers under Paragraph 10(a) of the Rules allow the Panel to independently visit the Internet in order to obtain additional light in this default proceeding.

On April 24, 2000, the Panel visited the www.cortefiel.com web site of the Respondent. The connection resulted in a blank screen.

No other screen was available at the Respondent's web site.

The Panel has considered the allegation by the Complainant as to the identity of the domain name at issue with the Complainantґs trademark CORTEFIEL. These allegations have not been contested by the Respondent because of its default.

The Panel has compared the domain name at issue with the Complainantґs trademarks CORTEFIEL, and finds that that the second level domain name cortefiel is identical letter-by-letter to the Complainant trademarks, and that the addition of ".com" – a generic top level domain intended for commercial organizations - makes it confusingly similar to such trademarks.

The Panel has considered the allegation by the Complainant as to the lack of rights or legitimate interests of the Respondent in respect of the domain name at issue. In particular, the Panel has considered the Complainantґs contention about the lack of any legitimate intellectual property right of the Respondent to the domain name. These allegations have not been contested by the Respondent because of its default.

The fact that CORTEFIEL is a famous or well known mark in Spain is also uncontended. In the present default proceeding there is no contention on record in favor of the Respondent, and particularly that it might have rights to or legitimate interests in the domain name. No circumstance has been evidenced that could reasonably support such an inference pursuant to the Policy, paragraph 4(c).

Additionally the result of the connection independently conducted by the Panel did not show any evidence as to the rights or the legitimacy of the interests of the Respondent in the domain name. See 6.2 above.

Therefore, the Panel finds that the Respondent has no rights to or legitimate interests in the domain name at issue.

The Respondent lives in Spain and is most probably a Spanish citizen. He lives therefore within the geographical area where Cortefiel is a famous mark and Cortefiel products and stores are widely publicized in the media and present in the market, as they are indeed in the Respondent’s province of residence. This was asserted by Complainant and ran undisputed by Respondent. This leads the Panel to conclude that the Respondent must know and most likely knows about the products, services of the Complainant, and its fame on the Spanish market.

The Complainant contends further that the intent of the Respondent in registering the domain name was reselling or perhaps renting it to the Complainant. When the Complainant discovered that the domain name, previously registered by a well-known domain name warehousing company appeared now to be registered at the Respondent's name, a notarized letter was sent informing the Respondent of the legitimate rights of the Complainant to the domain name, and asking him to perform the transfer of such domain. Such notarized letter was never answered in writing. In a telephone conversation with Complainant’s trademark Attorneys (Clarke Modet & Co.) the Respondent informed that he had no intention to sell the domain, but that he was nevertheless "open to discussions". No further negotiation was engaged. The Respondent was clever enough not to send any written statement regarding his position.

Although the fact of default would authorize the Panel to immediate conclude that the purpose of the Respondent's registration was to sell or rent the domain name, the fact that the Complainant does not mention any precise offer by Respondent, and specifically that Complainant does not contend that any precise sum for the transfer of rights in the domain name was asked by Respondent, leads the Panel to conclude that the presence of the circumstance described in the Policy Paragraph 4(b)(i) was not demonstrated by Complainant.

Nevertheless, the Policy Paragraph 4(b)(ii) allows a Panel to determine that bad faith registration is present if such registration was made to prevent the trademark owner to reflect its trademark or service mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct. The Panel considers that the lack of response to the notarized letter sent by Complainant is a "pattern of such conduct", which authorizes the Panel to conclude that the domain name registration was made in bad faith.

The Panel further notes the time sequence of the registration of the domain name cortefiel.org by Miguel Garcнa Quintas (January 4, 2000) after the Respondent in the Complaint regarding cortefiel.com received the notarized letter. This was interpreted by this Panelist in WIPO Case No. D2000-0140 as a move to create an obstacle for the Complainant wishing to reflect its marks in a corresponding domain name, and as an additional bad faith element in registration of the cortefiel.org domain name. A similar conclusion follows from the fact that the second registration would have most likely not taken place, had not the Respondent been acting in concert with the second, related registrant.

The fact that the registrants of cortefiel.com and cortefiel.org are seemingly two different persons cannot be an obstacle for piercing the veil of an apparent intent of concerted action among the registrants, to establish the appearance of mutual independence when the scheme to register in bad faith is perceivable. Both family names are identical. The postal address is identical, and the e-mail of Miguel Garcia Quintas in his registration is gjavier@TELELINE.ES. Mr. Javier Garcнa Quintas shares mail, email and phone number with Miguel Garcнa Quintas. All DNS required contact details are identical. The Panel concludes that the Complainant is right when it asserts that there is a single mind and a single intent behind both registrations.

The Complainant asserts that the Respondent performed an additional registration of the Cortefiel name under the ".org" top level domain "using a strawman, or simply a fake". Absent any Respondent's contentions – by its default - as to its rights or legitimate interests in the domain name, the Panel cannot believe in "miraculous coincidences" in respect of Whois identical data and contact details, nor in a lack of concert of very closely time-related domain name registrations (cortefiel.org and cortefiel.com). Therefore the Panel concludes that the Complainantґs assertion that it suffered a well-established pattern of conduct aimed at preventing the legitimate owner of the trademark from reflecting it in a corresponding domain name, is true.

Furthermore, the Complainant contends that the Respondent has apparently registered a number of domain names that are identical to well-known Spanish marks belonging to third parties. The Complainant asserts that the Respondent has acknowledged such registrations in the course of a phone call with the Complainantґs trademark attorney. In absence of any statement by the Respondent – by its default – the Panel considers that the contention of the Complainant has to be accepted by the Panel as true. Accordingly, the Panel considers that the circumstance of having registered other domain names identical to third parties' trademarks or tradenames, without any indication of rights or legitimate interests thereto, is a further showing of bad faith registration.

For the foregoing reasons, the Panel finds that the domain name cortefiel.com has been registered in bad faith by the Respondent.

The Complainant asserts that "in fact, there is no use of the domain names", and that "the only use the Respondent is doing in relation with cortefiel.com is preventing the Complainant from making a legitimate use of it, and trying to force the Complainant into a transfer-for-price negotiation". These assertions very much complicate the issue of establishing bad faith use as a requisite of the Policy, which must be found independently from bad faith registration.

However the Complainant gives an important clue when it contends that the relative issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith, that using in bad faith is not limited to positive action, and that inaction is within the concept.

As seen in the result of the Panel's independent visit to the Respondent's web site, by allowing his page to remain empty after the Complainants communications, the Respondent's is omitting any reference to a bona fide use of the domain name, and is confusing Web surfers or prospective customers of Cortefiel by depriving them of any indication that it has no relationship whatsoever to a Complainantґs site or to Complainantґs marks or activities, being the CORTEFIEL mark famous, renowned or well known in the Spanish market.

Additionally the Panel considers that the fact that the instant case relates to a ".com" domain name contributes to the likelihood of confusion amongst the Web surfers looking for the site of the Complainant, a corporation with commercial purposes. This is a circumstance of bad faith use as described in the Policy, paragraph 4(b), even if such conduct does not exactly fits within the description of Policy Paragraph 4(b)(iv) because of the purpose of "commercial gain" cannot be established from an empty site or page.

For the above reasons, the Panel finds that the domain name at issue has been and is being used in bad faith.

The Panel has found that the domain name cortefiel.com is identical or confusingly similar to the trademarks of the Complainant, and that the Respondent has no rights to or legitimate interests in said domain name. The Panel has further found that the domain name has been registered in bad faith, and that it has been and is being used in bad faith.

Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel decides to request that the domain name cortefiel.com be transferred to the Complainant Cortefiel, S.A.

Roberto A. Bianchi
Sole Panelist

April 24, 2000