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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Don Algodon H, S.A. v. Miguel Garcнa Quintas
Case No. D2000-1042
1. The Parties
The Complainant is Don Algodon H, S.A., a corporation organized under the laws of Spain with a legal head office at Calle Guadiana No. 27, Madrid 28002, Spain (the "Complainant"). It is represented in this proceeding by Ms. Helena Fernбndez Gonzбlez, of Clarke, Modet & Co., E-28760 Madrid, Spain.
The Respondent is Mr. Miguel Garcia Quintas, with an address at Apartado de correos 5, E-35100 Playa del Ingles, Gran Canaria, Spain (the "Respondent").
2. Domain Name and Registrar
The domain name at issue is <donalgodon.com >, registered with Network Solutions, Inc., of Herndon, Virginia, USA (the "Registrar").
3. Procedural History
On August 14, 2000 the Center received via E-mail a Complaint in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). On August 15, 2000 the Complaint was received in hardcopy.
At the Center’s request for verification, on September 24, 2000 the Registrar confirmed that the domain name at issue is registered with NSI, that the current registrant is Miguel Garcia Quintas, that the administrative contact is Mathew Gasparovich of 3513 Concord Rd., Amarillo, TX 79109, and that the technical, zone and billing contact is Miguel Garcнa Quintas of Aptdo. Correos, 5, San Fernando Maspalomas, Gran Canaria 35100 Spain, that NSIґs 5.0 Service Agreement is in effect and that the domain name is in "active" status.
The Panel sharing the Center’s assessment independently finds that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, and that payment of the fees was properly made.
On October 2, 2000 the Center sent to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding by post/courier with enclosures and by E-mail without enclosures. The deadline for the submission of the response was set to October 21, 2000. Section 6 of this communication stated:
"6. Default. If your Response is not sent by the above date, you will be considered in default. We will still appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so and, as provided for by Rules, Paragraph 14, may draw such inferences from your default as it considers appropriate. There are other consequences of a default, including no obligation on our part to consider any designations you have made concerning the appointment of the Administrative Panel or to observe any guidelines you have provided concerning case-related communications."
Respondent having failed to submit a Response, on October 24, 2000 the Center sent to the Respondent the Notification of Respondent Default by e-mail to Mr. Garcia Quintas and to Mr. Mathew Gasparovich. On the following day the Center received an email by Mr. Gasparovich (see below).
After having received Roberto A. Bianchiґs Statement of Acceptance and Declaration of Impartiality and Independence, on December 13, 2000 the Center appointed him as a Sole Panelist. The decision date was scheduled for December 27, 2000. Thus, the Administrative Panel finds that it has been properly constituted.
On December 20, 2000 the Center forwarded Mr. Gasparovichґs email to the Administrative Panel. On the same day the Panel issued the following order:
"Procedural Order No. 1
WIPO Case D2000-104
The Center having received on October 24, 2000 an email by
Mr. Mathew Gasparovich (Mathew <email@example.com>) in reply to the Center s Notification of Respondent Default, and stating the following:
ґStop sending me notices! I am in no way involved in this case! Some idiot
ґhas used my name and address fraudulently. I have made my position in ґthis matter clear. If I receive any more correspondence regarding this ґmatter I will consider it harassment and take appropriate legal action. ґQuite sincerely. Mathew Gasparovichґ;
The Center having forwarded above communication to the Panel on December 20, 2000;
The Administrative Panel having in mind its powers under Rules, Paragraph 12.
The Panel orders the Respondent within THREE DAYS to submit a statement by email to the Center with CC to the Complainant and the Administrative Panel, with any comments on the email above transcribed.
The Panel further reminds the Parties that failure to comply with a Panel's request may lead to the application of Rules, Paragraph 14.
Signed: Roberto A. Bianchi – Panelist
Dated: December 20, 2000".
On December 27, 2000 the Center confirmed to the Panel that Respondent failed to send any reply or comments to above order.
There were no other submissions of the Parties, nor were extensions granted or other orders issued.
The registration agreement for the domain name at issue has been done and executed in English by Respondent-Registrant and the Registrar. The Complaint has been made in English, except for some annexes made in Spanish. A translation thereof is not necessary because the acting panelist's mother language is Spanish. There being no special circumstances for the Panel to determine otherwise, as provided in Rules, Paragraph 11, the language of this proceeding is English.
4. Factual Background
The following facts, extracted from the Complaint and its enclosed documents, and undisputed, are established:
The Complainant is a Spanish corporation owned by its creator Mr. Josй (Pepe) Barroso (50 %) and by the Cortefiel Group (50 %). Complainant holds the following trademarks in Spain, relevant to this Complaint:
These trademarks cover clothing and shoes (class 25), advertising of a clothing business (class 35), cosmetics and perfumes (class 3), leather goods (class 18), painting materials (class 2), medicals (class 10), etc.
The Complainant holds the following trademarks in other countries such as:
The Complainant’s trade name, matching the trademarks listed above, identifies a famous brand of clothing/fashion shops all over Spain. The DON ALGODON name and stores are widely advertised through newspapers, radio stations and TV channels, both locally and nationally. DON ALGODON is a famous or at least a well known trademark in Spain.
Miguel Garcнa Quintas registered the <donalgodon.com> domain name on February 5, 2000 with Network Solutions, Inc.
The ICANN Policy is in effect for the registrar and the registrant-Respondent, and may therefore be invoked by Complainant.
5. Parties’ Contentions
A. The Complainant contends that:
The domain name is identical to the trademark in which the Complainant has rights; and the Respondent has no rights or legitimate interests in respect of the domain name; and the domain name was registered and is being used in bad faith.
There is no doubt about the legitimate rights of the Complainant regarding a large well-known trademark portfolio identical to the domain name object of this Complaint - par 4 (a) of the Policy- there is no less doubt about the lack of any legitimate intellectual property rights or any other whatsoever, of the Respondent to that name, and clear proof of the Respondent’s bad faith in registering and using such domain name (par 3(c) of the Policy).
The Respondent lives in Spain and is most probably a Spanish citizen according to his name and address. He lives within the geographical area where DON ALGODON is a famous mark and DON ALGODON goods and stores are widely promoted in the media and present in the market, as they are also indeed in the Respondent’s province of residence. In the Canary Islands where the defendant seems to have his residence, there are five establishments under the trade name DON ALGODON, shops where the goods identified under the trademark DON ALGODON are exclusively sold. This a new evidence which proves the knowledge of the mark DON ALGODON by the Respondent and his intention to obtain a profit with the registration of a famous trademark as a domain name. The development of the trademark DON ALGODON is clearly indicated, a development mainly based in the franchising system. The granting of its franchised mark and know how by Don Algodon could suffer serious damages because of the holding of the domain name by a person who previously has registered other famous marks trying to obtain some profit of it.
The Complainant has never authorized the Respondent to use the mark DON ALGODON, either by granting a license or franchising the mark DON ALGODON to the Respondent. Therefore the Respondent does not hold any right over the mark DON ALGODON.
The presumed purpose of the Respondent in registering the domain name object of this Complaint is reselling it to the Complainant (or, perhaps, renting it). When the Clomplainant became aware of the <donalgodon.com domain> name, subject of this complaint, a notarized letter was sent on July 18, 2000 informing the registrant of the legitimate rights of the Complainant to the domain name, and requesting him to transfer such domain. Such notarized letter was never answered by writing. The Respondent has registered trademarks which are owned by the Group Cortefiel and associated firms such as Don Algodon H, S.A. This is an important point we shall keep in mind. The titleholder of those marks always is the Cortefiel Group and related firms; marks which certainly contains an intrinsic value due to the well-known character of the marks, and the correlative investment on them. Another evidence of the bad faith and reiterative bad faith of the defendant in the registration and using of the domain name including marks related to Cortefiel Group is the fact that himself was also the defendant in Case D2000-0140 cortefiel.org., being the Complainant Cortefiel, S.A. But not only that, because in Case D2000-141 <cortefiel.com> and Case D2000-0225 <christiandior.net> y <christiandior.com> although the defendant in both cases was Javier Garcнa Quintas, the addresses and e-mail address were the same to the present case and aforementioned Case D2000-0140. As we stated in those previous cases, we don’t know, whether Miguel and Javier are in fact the same person or not. Both surnames are identical. The postal address is identical, as the e-mail (the registrant e-mail of Miguel Garcнa Quintas is ...gJAVIER@teleline.es.) Needless to say, all DNS required technical contact details and name servers are identical. Same or different person, therefore, but it is crystal clear that there is a single mind behind both registrations. All the Whois identical data and contact details cannot be a coincidence. The panelist Mr. Geert Glass in Case D2000-0226 Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net said:
"The WHOIS record for Garcia Quintas shows a list of 15 names that end on Garcia Quintas with different first names but who have all the same telephone number (629184860). A majority of these names have also the same email address (
firstname.lastname@example.org). This clearly shows that Respondents have taken deliberate steps to hide their identity and the domain names registered by them. Additional research by the Panel resulted in a list of more than 100 domain names registered by Garcia Quintas (under different first names, but all with the same address or email address). In view of the above, it is fair to infer that Respondents real business is to acquire domain names and sell them for profit."
It is clear that the Domain Names can only refer to the Complainant. Moreover the Domain Names are so obviously connected with such a well-known name and products that its very use by someone with no connection with the products suggests opportunistic bad faith (Veuve Cliquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co.,Case No. D2000-0163).
This constitutes indeed indirect proof of his strategy to force Don Algodon H S.A., and indirectly Cortefiel Group into price negotiations. And it is in itself a direct proof of a well-established pattern of conduct aimed at preventing the legitimate owner of the trademark from reflecting it in a corresponding domain name (para 4(b)(ii) of the Policy).
B. Respondent is in default as to its burden to submit a Response.
Respondent, after the Notification of its default, has not made any submissions whatsoever. Particularly., Respondent has failed to reply to Procedural Order No.1.
6. Discussion and Findings
Identity of Confusing Similarity
The Panel finds that the domain name <donalgodon.com> is practically identical or, having in mind the suppression of the space between "don" and" algodon" and the inclusion of the gTLD ".com" in the domain name, at least confusingly similar to Complainant's marks DON ALGODON.
The Complainant has met its burden under Policy, Paragraph 4(a)(i).
Lack of Rights and Legitimate Interests
Complainant has denied that Respondent has rights or legitimate interests in the domain name. Under Rules, Paragraph 5(b)(i) and 5(b)(ix) Respondent generally carries the burden to specifically respond to the Complaint, and to present any documents in its favor. In order to prove rights and legitimate interests in the domain name Respondent may, for instance, refer to Policy, Paragraph 4(c). Respondent is in default.
In the present default proceeding the Panel may look whether and in which manner Respondent is using the web site corresponding to the domain name. On December 22, 2000 the Panel independently visited the www.donalgodon.com web site and found that general and statistical information about the cotton plant and cotton production in Spain is therein abundantly provided.
The Panel considers that such information may be useful for Internet surfers looking for data on the production of Spanish cotton. However the Panel cannot but wonder why has Respondent slavishly copied the trademark of the Complainant - of all cotton-related words - for its domain name. Respondent is not authorized by Complainant to use in any manner such trademark, which the Panel accepts to be famous, or at least well known in Spain. The only reasonable explanation is that Respondent is trying to falsely create an impression of fair or non commercial use. However this could have been legally acceptable only if Respondent had chosen any other "cotton-related" domain name or any other domain name excepting Complainantґs trademarks DON ALGODON, which are distinctive of Complainantґs quality goods and services.
The lack of any response to Complainantґs cease-and-desist notarized letter strongly suggests lack of rights and legitimate interests in the domain name.
In this default proceeding and convinced by most allegations by Complainant, the Panel finds that Complainant has met its burden under Policy, Paragraph 4(a)(ii), in that Respondent lacks rights or legitmate interests in the domain name.
Bad Faith Registration
NSIґs Service Agreement version 5.0 is the legal basis between the Registrar and the Respondent Mr. Garcia Quintas. Under such agreement the Respondent was bound to provide to the Registrar "accurate information", including accurate information in respect of the administrative contact:
" 5. ACCURATE INFORMATION. As further consideration for the Network Solutions service(s), you agree to: (1) provide certain current, complete and accurate information about you as required by the application process; and (2) maintain and update this information as needed to keep it current, complete and accurate. We rely on this information to send you important information and notices regarding your account and our services."
Failure to provide accurate information concerning contact details is a material breach of the contract:
"15. BREACH. You agree that your failure to abide by any provision of this Agreement, any Network Solutions operating rule or policy, the dispute policy, or your willful provision of inaccurate or unreliable information as part of the application process, or your failure to update your information to keep it current, complete or accurate, or your failure to respond for over fifteen (15) calendar days to inquiries from us concerning the accuracy of the contact details associated with your domain name registration may be considered by us to be a material breach and that we may provide a written notice, describing the breach, to you."
According with the NSI's glossary at http://www.networksolutions.com/help/inst-newreg.html:, the Administrative Contact/Agent
"is the person or organization authorized by the domain name registrant to act on behalf of the legal entity listed in Item 3a. The Administrative Contact/Agent should be able to answer non-technical questions about the legal entity's plans for using the domain name and the procedures for establishing sub-domains".
As seen at Section 3 above, the Respondent failed to comply with a Panel's procedural order that requested him to submit any comments about Mr. Mathew Gasparovichґs statement that he has nothing to do with the domain name registration and that his name and address had fraudulently been provided by "some idiot". Failing any submission by Respondent, the Panel is forced to extract the conclusion and to find that Respondent - certainly without any authorization and most likely with a fraudulent purpose - used Mr. Gasparovichґs name and address to provide NSI with false contact data at the moment of the domain name registration.
By so doing Mr. Garcia Quintas is not only in breach of the service agreement with NSI, but he has also incurred in a circumstance of bad faith registration within the ample terms of Policy, Paragraph 4(b), and by application of Rules, Paragraph 14(b).
Here the Panel considers that a reference to Case D2000-0140 Cortefiel, S.A. v. Miguel Garcнa Quintas is appropriate. In that case the Respondent was the same person appearing as Respondent in the present case and the challenged domain name was <cortefiel.org>. This panelist said on that occasion:
"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 <cortefiel.com> (object of a parallel Complaint) appeared now to be registered at the name of a parallel complaint’s respondent (Javier Garcнa Quintas) a notarized letter was sent informing the registrant 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."
"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."
Such findings, being the substance of the present case totally similar to the <cortefiel.org> case, are also applicable in the present case.
By its registration of the domain name at issue, Respondent is effectively preventing the Complainant from reflecting its trademark DON ALGODON in the corresponding domain name under the ".com" gTLD. Respondent has engaged in a "pattern of such conduct" because he also was the registrant of <cortefiel.org> and most likely also - acting in concert with Javier Garcia Quintas-Respondent in case D2000-0141 - of <cortefiel.com>. In both cases the transfer of the domain names registrations was required by the acting panelist.
As the Cortefiel Group is the owner of 50 % of the share in the Don Algodon H, S.A. company this Panel cannot but conclude that Mr. Garcia Quintas seems to have particularly aimed at the Cortefiel Group as a victim of his bad faith domain name registrations.
Further, the "Garcнa Quintas" group of persons, acting in concert and including the Respondent in the present case, illegally registered <christiandior.net> and <christiandior.com>. See WIPO Case D2000-0225.
The Panel accepts the Complainant's allegation and evidence that Mr. Garcia Quintas has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name (Policy, Paragraph 4(b)(ii)).
The Panel thus finds that the Complainant has met its burden under Policy, Paragraph 4(a)(iii), in that the domain name was registered in bad faith.
Use in Bad Faith
Respondent's web site shows that Respondent's conduct meets the description of bad faith use of Policy, Paragraph 4(b)(iv) ("by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location"). Any Web surfer looking for the DON ALGODON tradename or marks on the Web is likely to be confused through Respondent's use of the www.donalgodon.com web site, and may reasonably imagine that Complainant is endorsing Respondent's web site, or that Complainant does not have a web site, or that it is unable to have one.
The purpose of "commercial gain" is present since Respondent's web site under the domain name includes a section called in Spanish "SU PUBLICIDAD AQUI" ("YOUR ADVERTISEMENT HERE" - panelist's translation- ) which allows to order the posting of advertisements on the web site. The offer of advertising is a commercial activity aimed at commercial gain. In Policy terms there is no need that such gain be actual or of any particular amount. Further, the domain name is registered under the ".com" gTLD which is for commercial entities. See rfc 1591.
Additionally both parties are resident in Spain. Under similar circumstances Spanish Courts have granted preliminary injunctions against the domain name holders of <nocilla.com> and <metacampus.net> based on the Spanish Trademark Act of 1988 and the Spanish Unfair Competition Act of 1991 in cases where the plaintiffs were the owners of trademarks to which the challenged domain name registrations were identical or confusingly similar. See - among others - WIPO Cases D2000-0163 Raimat, S.A., D2000-0219 Uralita, S.A., D2000-0467 METRO BILBAO, S.A., D2000-0592 Canonais, S.A., D2000-0883 Antena 3 de Televisiуn, S.A. and D2000-1026 BODEGAS VEGA SICILIA, S.A. decided by this acting panelist.
The Panel finds that the Complainant has met its burden under Policy, Paragraph 4(a)(iii), in that the domain name was registered and is being used in bad faith.
The Panel has found that the domain name <donalgodon.com> is practically identical or at least confusingly similar to the DON ALGODON marks 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 is being used in bad faith.
Therefore, pursuant to Policy, Paragraph 4(i), and Rules, Paragraphs 14(a) and 15, the Administrative Panel requires that the registration of the domain name <donalgodon.com> be transferred to the Complainant Don Algodon H, S.A.
Roberto A. Bianchi
Dated: December 27, 2000