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ADMINISTRATIVE PANEL DECISION
Enrique Bernat F., SA v. Marrodan
Case No. D2000-0966
1. The Parties
The Complainant is Enrique Bernat F., SA of Avda.Digonal, 662 5a, 08034 Barcelona, Spain ("Bernat").
The Respondent is Marrodan of PO Box 40547, Sharjah, United Arab Emirates AE-40547, or alternatively, c/o Asturias 26, Oviedo, Asturias E-33004, Spain.
2. The Domain Name and Registrar
The domain name at issue is chupa-chups.com and the registrar is Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.
3. Procedural History
A complaint pursuant to the Rules and Supplemental Rules was lodged by hard copy format with exhibits on August 10, 2000.
All the appropriate procedural requirements were let, and the Respondent was duly notified in accordance with the Rules and the Supplemental Rules. No response has been received, either within the time limit under the Rules, or subsequently. All payments appear to have been duly made by Complainant.
The panelist has submitted a Statement of Acceptance and Declaration of Impartiality and Independence, and the date scheduled for the panel’s decision is October 4, 2000. The language of the proceeding is English.
4. Factual Background
Bernat is the owner of a wide portfolio of international trademarks for the trading name "Chupa Chups" both in that form and in a variety of other forms. A schedule of trademarks and copies of the appropriate certificates were annexed to the complaint document. Bernat has demonstrated that the trademarks in question have been in constant use since at least 1958 in relation to a very popular brand of sweets which have a wide international distribution network. In particular, the products have been widely sold and distributed in Spain itself, but also in the United Arab Emirates.
Further, Bernat has registered a number of gTLD names including chupachups.com and chupachupsmail.com. The former of those domain names is the main international portal of the corporation.
5. Parties’ Contentions
Bernat has contended that the domain name in question is identical or confusingly similar to its trademark, that Marrodan has no right or legitimate interest in respect of the domain name, and that the domain name has been registered and is being used in bad faith.
Bernat points to the long historical use of the Chupa Chups name on the international market. It contends that the hyphenation of the domain name of which complaint is made is irrelevant, and cites various previous cases decided under the UDRP to confirm that this is not a relevant consideration.
Bernat contends that there can be no legitimate intellectual property rights or other rights belonging to Marrodan which are applicable in relation to this domain name. Bernat contends that Marrodan has no intention now or in the future to use the domain name, there being no evidence of any preparations for use, and no actual current use.
Bernat contends that the domain name was registered and had been used in bad faith. It points to a passage of correspondence from Bernat to Marrodan which elicited no response, but subsequently a telephone conversation from which it is alleged by Bernat that the representative of Marrodan offered to sell the domain name to Bernat for a sum the equivalent of US$25,000. Bernat contends that this offer for sale is evidence of use in bad faith pursuant to paragraph 4(b)(i) of the UDRP.
Bernat further contends that the conduct of the person who purported to represent Marrodan in the conversation concerning the possible sale of the domain name withheld information concerning his full name and identity, giving a transparently false name instead.
Bernat further contends that the trademarks are so well known in both Spain and the United Arab Emirates that Marrodan or its representatives must have been aware of them, and consequently that the registration of the domain name which could only have been obtained with the addition of a hyphen, was not and could not have been in good faith.
Bernat further contends that the inaction of Marrodan can constitute bad faith in its own right and refers to other previous decisions of different panels to support that proposition.
As indicated above, to date the panel has received no response from Marrodan. Nothing was filed within the appropriate 20 day time limit, and nothing has subsequently been received accompanied by a request to be heard "out of time".
6. Discussion and Findings
In the absence of any intention to the contrary from the Respondent, the panel has no basis on which to do anything other than to accept the factual contentions made on behalf of Bernat. Accordingly, in each and every respect these are taken as read.
In relation to the assertions regarding the applicability of the UDRP to the circumstances, the panel has given due consideration to the complaint.
First, as regards the identicality of the domain name to the trademark, it is a well established principle in these cases that the mere hyphenation of a name is not sufficient to avoid a confusion of identicality in the absence of any other distinguishing features. Accordingly, the panel is happy to conclude that in this case the domain name in question, for all purposes, is identical to the trademarks owned by Bernat.
In relation to the question of rights and legitimate interests, Bernat has contended that the well-known nature of its trademark, and the absence of any evidence of preparation to use the domain name for any legitimate purpose by Marrodan is sufficient to satisfy this requirement under the UDRP. The panel, having given due consideration to all the contentions and other circumstances, agrees that there is no evidence of any rights or legitimate interests on the part of Marrodan in relation to the domain name of which complaint is made.
Finally, in relation to bad faith, it is important to get one thing quite clear. A number of other panel decisions, some of which have received quite high profile coverage, have given an indication that the burden of proof lies with the Respondent to establish good faith, rather than for the Complainant to establish bad faith. The UDRP guidelines are quite clear on this point. The burden of proof lies with the Complainant in all cases to establish actual bad faith by the Respondent. There is no obligation whatsoever on the Respondent to prove good faith, and in any event it is equally important to note that the absence of good faith does not constitute bad faith. The two concepts are not related in such a direct fashion.
Accordingly, even in the absence of any response from Marrodan, the burden still lies with Bernat to establish that the domain name was registered and is being used in bad faith. Having said that, the question of ongoing "use" is vexed. This panelist has commented in a previous case that, in extreme circumstances, literal interpretation of the wording "is being used" could render the UDRP completely toothless, and that cannot have been the intention when the policy was drawn up. As a result, there have been a number of decisions by panelists indicating quite clearly that inaction can constitute use in bad faith. This panel does not necessarily accept that that is the case, but is prepared to agree that general inaction accompanied, as in this case, by an offer to sell for a value way in excess of the cost involved in obtaining the domain name, is sufficient to constitute use in bad faith.
Further, this panel accepts that the very well known nature of the Bernat trademarks deems that it is inconceivable that this domain name, which could not have been registered without the deliberate addition of the hyphenation, can possibly have been registered other than in bad faith.
In the circumstances the panel finds that all the three required elements under the UDRP have been satisfied and the complaint is therefore upheld.
In the light of the foregoing the panel decides that the domain name registered by Marrodan is identical to the trademarks of Bernat, that Marrodan has no legitimate interest in respect of this domain name, and that the domain name in issue has been registered and used in bad faith.
Accordingly, the panel requires that the registration of the domain name chupa-chups.com be transferred to Complainant.
Gordon D Harris
Date: October 4, 2000