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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Nacional de los Ferrocarriles Españoles v. Oscar San Julian Rodriguez
Case No. D2000-0990
1. The Parties
The Complainant is Red Nacional de los Ferrocarriles Españoles, a Spanish Corporate public entity seated in Madrid, represented by Mr. Albert Agustinoy, lawyer from Madrid, Spain.
The Respondent is Mr. Oscar San Juliбn Rodrнguez, of Pamplona, Spain.
2. The Domain Names and Registrar
The domain name subject-matter of this Complaint is <renfe.com>.
The Registrar of this domain name 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").
3.2. The WIPO Center received the copy of the Complaint submitted by e-mail on August 9, 2000, and the hard copy of the Complaint submitted by courier on August 11, 2000. An Acknowledgment of Receipt dated August 15, 2000, was sent by e-mail by the WIPO Center to the Complainant. An amendment to paragraph X of the Complaint was received by fax on August 25, 2000, and a Supplemental Filing from complainant was received by e-mail on September 11 and by paper copy on September 13
3.3. The WIPO Center dispatched to the Registrar a Request for a Registrar Verification by email on August 18, 2000. The Registrar responded by e-mail to the WIPO Center on August 21, 2000.
3.4. 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.
3.5. Not having received a Response, the WIPO Center sent by e-mail to the Respondent a Notification of Respondent Default on September 19, 2000.
3.6. In accordance with the request in the Complaint, the WIPO Center proceeded to appoint an Administrative Panel composed of a single Panelist, inviting Mario A. Sol Muntañola to act as such on October 16, 2000. The decision was due on October 29; however, the Panel applied for an exceptional additional term of three days. Therefrom, a decision shall be provided by this Administrative Panel, absent exceptional circumstances, by November 2, 2000.
3.7. The case before this Administrative Panel being conducted in the English language by the only party appeared before the WIPO Center, the language of the decision shall be in English.
3.8. Exceptional circumstances arose that impaired the Panel from delivering a decision by November 2, 2000. The Complainant sent a supplemental filing to the WIPO Center, enclosing several trademark registrations obtained between 1972 and 1992. Being such registrations of the utmost importance to the present case, the Panel decided to confer a supplemental period of 10 days to the Respondent, to make it possible for him to respond to such new evidence. Since no response was filed by the Respondent, the Panel shall deliver a decision by November, 15th 2000.
4. Factual Background
4.1. The Complainant is a National Corporate Public Entity created on 1941 by the Spanish Railway and Road Transportation Act that has the monopoly for the exploitation of the Spanish railway network, including more than 12300 commercial lines, having transported almost 419 million passengers in 1999 as well as more than 25.300 tons of goods. "RENFE" is the acronym of "Red Nacional de los Ferrocarriles Españoles" ("Spanish National Railway Network") well known by adult Spanish residents. Moreover, the Complainant is the holder of 60 national trademarks in force, one community trademark application before the OHIM, an international trademark application before WIPO, and several domain names under gTLD’s and under the ccTLD ".es".
4.2. The Respondent owns the domain name "renfe.com", registered through Network Solutions on December 2, 1997.
5. Parties’ Contentions
5.1. The Complaint
5.1.1. The Complainant contends that, regarding this complaint, the following are relevant:
Spanish registered trademark "RENFE" in class 42, granted by the Spanish Patent and Trademark office (hereinafter OEPM) on February 5th 1999.
Community trademark application "RENFE" applied for in classes 12, 16 and 39 before the OHIM on May 22, 2000.
International trademark applications "RENFE" applied for in classes 12, 16 and 39 before WIPO on May 19, 2000, with effects in Switzerland, Czech Republic, Hungary, Norway, Poland, Romania, Russian Federation, Slovakia and Yugoslavia.
5.1.2. The Complainant makes a lengthy statement about RENFE’s activity, explaining its competencies and its main lines of action regarding transportation of passengers, transportation of goods, maintenance services of trains and railway lines, as well as explaining the commercial exploitation of on-line shops providing different services relative RENFE’s activity.
5.1.3. The Complainant contends that the Respondent does not have any relationship with the legitimate holder of the mentioned registered trademark and trademark applications. Therefore, according to the Complainant the Respondent’s registration of the domain name "renfe.com" was not due to a legitimate purpose, but with the objective of impeding the use of this domain name by "RENFE".
5.1.4. The Complainant points out that the page to which the domain name "renfe.com" takes does not have any contents. The lack of use of the disputed domain name indicates that the Respondent does not have the intention of using it for any private nor professional activity. On the contrary, the Respondent’s only intention was to impede the registration of this domain name by the legitimate owner of the trademark "RENFE". The Respondent never had any right whatsoever over trademarks relative to the denomination "RENFE".
5.1.5. The registration was done in bad faith, as with it the Registrant was seeking to impede the holder of the corresponding trademark to register the disputed domain name. In this sense, the Complainant is of the opinion that the Respondent’s behavior should be analyzed under the light of article 1282 of the Spanish Civil Code.
5.1.6. It is assured by the Complainant that the name "RENFE" constitutes a well-known trade mark in Spain and it is practically impossible that a miraculous coincidence has taken place in this sense in the present case. The Respondent registered "renfe.com" in clear conscience that he was registering a domain that corresponded to a trademark of a third party.
5.1.7. The Complainant holds that the property on the domain name must be waived in favor of the Complainant.
5.2. The Response
5.2.1. The Respondent has not responded to the complaint.
6. Discussion and Findings
6.1. Applicable rules
According to section 15 a) of the Rules, the Panel will decide taking into account the contentions and documents presented, and according to the Policy and the Rules. Inasmuch as both parties have legal seat and domicile in Spain, the laws and principles of Spanish Law will also be taken into account (cases D2000-0001 Robert Ellenbogen v. Mike Pearson, D2000-0239 J. Garcнa-Carriуn, S.A. v. MЄ Josй Catalбn Frнas, o D2000-0143 Raimat v. Antonio Casals).
6.2. Admission of the Supplemental Filing
Besides a striking lack of precision regarding certain aspects (see page 18 of the Complaint), the Complainant omitted to express the existence of trademarks registered by "RENFE" before 1999 (page 9 and 10 of the Complaint). Moreover, the Complainant profusely explains about the importance and notoriety of RENFE, but does not provide any proof to support this.
Thus, the conflict resulted to be brought up between a prior gTLD, registered on December 2nd 1997, and one only subsequent Spanish trademark, registered on February 23rd 1998. In Spain, the right over a trademark is acquired only after its duly fulfilled registration (despite the judicial action that the law grants to holders of notorious unregistered trademarks). In consequence, the Panel considers that for the UDRP to be applicable, there must be a conflict between a prior trademark and a subsequent domain name (Paragraph 4 a (i) of the Policy). The Panel considers that, in given cases, a conflict between a subsequent trademark and a previous domain name could eventually be relevant to the UDRP, but only as long as the notoriety and priority of use of the denomination protected by a subsequent trademark was proved. This way, if the domain name is prior, the conflict is one between a domain name and a denomination not registered as a trademark (the possible notoriety of which has not been proven by the Complainant), which would render the UDRP inapplicable, without prejudice of the better right that such unregistered denomination may give over the domain name and of the judicial or arbitrage actions there could still be.
Two days before the date fixed for the rendering of the decision, a supplementary filing was sent by the Complainant, submitting a list of 18 trademarks owned by "RENFE", registered since 1972, among which one is lapsed, no longer in force, number M0671895.
The Panel has decided to continue the proceedings and accept the supplemental filing sent by the Complainant on October 30, for the following reasons:
a) The UDRP is governed by material criteria and is an essentially non-formal procedure.
b) In this process the Panel is of Spanish nationality, and is familiar with the notoriety, importance and public and monopolistic character of "RENFE". For these reasons it was hard for the Panel to believe that there were not any registered trademarks before 1998.
c) Such situation compelled the Panel to carry out an investigation at the OEPM, from which it resulted that "RENFE" has 67 registered Spanish trademarks since the year 1972, of which 7 have lapsed, no longer in force, 22 have been renewed and are in force, and the rest have been granted and are in force.
d) In consequence, the deficiencies the supplemental filing aims to save, would have been considered in any case by the Panel.
e) However, the Panel considered that, under the light of the initial deficiencies in the Complaint, the Respondent could have decided not to respond. Therefore, the Panel, considering the information provided by the Complainant, considered it necessary to allow a period of 10 days for the Respondent, who once again in this occasion has not responded to the claims of the Complainant.
6.3. Analysis of the elements established in section 4 a) of the Policy
6.3.1. Identity or confusing similarity to a trademark.
a) It is obvious that the confronted denominations are identical, therefore a risk of confusion exists.
b) The Panel considers that the denomination "RENFE" constitutes a well-known one in Spain and that surely any Spanish citizen of age knows the denomination of the public railway company. Consequently, it is more than probable that the Respondent, a Spanish citizen who has his residence in a city where there is a "RENFE" railway station, knew this trademark.
c) The denomination "RENFE" does not mean anything by itself. Therefore, it is unthinkable that the use of this acronym by the Respondent is due to coincidence. Even if it was so, the Respondent would have to justify with precision the reason of his interest and his right over such denomination.
6.3.2. The Respondent’s rights or legitimate interests in the Domain Name
a) The web site does not exist, nor is it under construction, nor is there evidence that the Respondent has made serious preparations in such sense, all of which taking into account that the domain name has been registered now for nearly three years. The Respondent has not used in any way the domain name. Therefore, the Respondent has not proved to have any legitimate interest in the domain name.
b) The lack of response by the Respondent also shows an evident lack of interest over the denomination, as well as it is an obstacle to proving the Respondent has any rights over such denomination.
c) The Respondent has not proved to be previously known by this name, nor has submitted any trademark or third party authorization or license proving the existence of a legitimate right.
d) As has been previously said, identity exists, but there is little probability that the identity between both denominations be a coincidence, most of all due to the fact that the denomination is a well-known one. The Respondent has not claimed anything that may lead to think that such coincidence has taken place.
6.3.3. Domain Name registered and being used in bad faith
a) Article 1282 of the Spanish Civil Code may not be brought forward, because this provision is intended to be applicable in cases of interpretation of contracts according to the expressive conduct of the parties, but in no case can it be used to judge the mere conduct of a person. In any case, resorting to the said Article is unnecessary, given that the Panel considers "RENFE" is a denomination broadly known in Spain. Therefore its registration as a domain name by the Respondent must be deemed to have been done in bad faith if a full justification is not given by the Respondent, which has not happened in the present proceedings.
b) Access to the gTLD ".com" of the denomination cannot be blocked, without giving any reason, to whom claims and proves to have rights over it. The heavily well-known character of the denomination "RENFE" together with the lack of use of the domain name by the Respondent since it was registered inevitably lead to consider that it was registered in bad faith. (Case D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows).
c) In this case it is clear that the Respondent registered the domain name in bad faith and therefore is making use of the domain name in bad faith. (Case D2000-0239 J. Garcнa Carriуn, S.A. v. MЄ Josй Catalбn Frнas).
7.1. In view of the above circumstances and facts, the Panel decides that the domain name registered by Respondent is identical to the trademark over which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent’s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel requires that the registration of the domain name "renfe.com" be transferred to the Complainant.
Mario A. Sol Muntañola
Dated: November 15, 2000