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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GRUPO PICKING PACK, S.A. f/k/a GRUPO HISPANO-SUIZA, S.A. v. Prospero Moran and ASTURNET, S.L.
Case No. D2000-1220
1. The Parties
The complainant is GRUPO PICKING PACK, S.A., a company incorporated under Spanish law and having its principal place of business at C./ Solsonйs s/n, Edificio Muntadas, Parque de Negocios Mas Blau, El Prat de Llobregat, Barcelona, Spain (the "Complainant" or "GPP"). GPP is represented in this proceeding by Mr. Ignacio Lуpez-Balcells, Esq., of BUFETE B. BUIGAS, Barcelona, Spain.
Formally. the respondents are two different persons or entities: Mr. Prospero Moran, an individual person with an address at Fdez. Ladreda, 32, esc. A, 2 B, Oviedo 33011, Spain, and ASTURNET, S.L., Parque Tecnolуgico de Llanera, Asturias 33420, Spain (both collectively the "Respondents"). According with the information provided on October 11, 2000, by the registrar to the WIPO Center, the registrant, administrative contact and billing contact for both challenged domain names is Mr. Prospero Moran with an E-mail address at email@example.com. However the Complainant has also named Asturnet, S.L. as a Respondent. Asturnet, S.L. was the registrant of "pickingpack.com" when the domain name registration record was created (November 4, 1998). Asturnet, S.L. has been notified of the Complaint. See 3 below. The Complaint refers to two respondents who are closely related with each other. For all practical purposes the Panel finds that the Respondents are not but one domain-name holder. There has not been and there is no need for a consolidation request . The Complaint is properly addressed pursuant to Rules, Paragraph (c), which reads:
"The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder".
2. Domain Name and Registrar
The domain names at issue are "pickingpack.com" and "pickingpack.org", both registered with Network Solutions, Inc., of Herndon, Virginia, USA:
3. Procedural History
On September 14, 2000, the Center received by e-mail a Complaint in accordance with the Uniform Policy for Domain Name Dispute Resolution, 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 September 18, 2000, the Complaint was received in hardcopy.
At the Center’s request, on October 11, 2000, the registrar NSI confirmed that the domain names at issue are registered with it, that the registrant, administrative contact and billing contact is Prospero Moran with E-mail address at firstname.lastname@example.org., that the NSI 4.0 Service Agreement is in effect and that the domain names are in "active" status.
On October 11, 2000, the Center sent to the Respondents a Notification of Complaint and Commencement of Administrative Proceeding by post/courier with enclosures and by E-mail without attachments. The deadline for the Respondents to submit a response was set to October 30, 2000. The Notification of Complaint included following paragraph:
"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."
Having the Respondent failed to submit a Response, on November 9, 2000, the Center sent a Notification of Respondent Default to the Respondents, the administrative and the billing contact, by E-mail at p_moran@ASTURNET.ES.
After having received Roberto A. Bianchiґs Statement of Acceptance and Declaration of Impartiality and Independence, on December 8, 2000, the Center appointed him as a sole panelist. The decision date was scheduled for December 22, 2000. Thus, the Administrative Panel finds that it has been properly constituted.
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. The Panel finds that the Center has discharged its responsibilities at reasonably trying to notify the Complaint to the Respondents pursuant to Rules, Paragraph 2(a), and that the Notification of Respondent Default was also properly notified.
There were no other submissions of the Parties, nor were extensions granted or orders issued.
The registration agreements for the domain names at issue have been done and executed in English by Respondent-Registrant and the Registrar. The Complaint is in English, except for some annexes in Spanish. The Panelґs mother language is Spanish. Complainant has requested that the proceedings be in Spanish based on the common nationality of both Parties. No special circumstances are present to support a finding that such a request should be granted. Therefore, as provided in Rules, Paragraph 11, the language of this proceeding is English.
4. Factual Background
The following facts, extracted from the Complainantґs submissions are undisputed:
Since July 18, 1996 GRUPO PICKING PACK, S.A is the new name of the GRUPO HISPANO-SUIZA, S.A. corporation. GRUPO PICKING PACK, S.A or GPP is an Spanish leading company in outsourcing services for all kinds of companies and creative professionals. GPP is listed on the Spanish Stock Exchange. It employs more than 2000, professionals all over Europe and the United States. GPP offers services of digital reprography, project management and electronic document management solutions, a wide range of specialized office products, of e-fulfillment and logistics, as well as advanced services and solutions and Internet communications. GPP offers business tools to small and medium-sized companies and professionals. GPP also offers tailor-made solutions to meet reprographic requirements of architects, engineers and graphic designers; as well as to satisfy the needs of large and small offices, providing them with a range of services developed by professionals or through the Internet. GPP has subsidiary companies in Spain and other countries such as Germany, Italy, United Kingdom and the United States, such as (1) PICKING PACK SERVICIOS LOGÍSTICOS, S.A., which offers the EDMS System, which is the worldwide leading system in electronic document management, to the purposes of filing, transmission and demand printing and (2) PICKING PACK SERVICE POINT ESPAÑA, S.A., which supplies all kinds of office material through on-line shops, catalogues, and in more than 350 service points all over the world. GPP provides small and medium-sized companies with telecommunication and e-business services through one of its parent companies, OLA INTERNET, S.A.: Internet Protocol telephony, high-speed access to the Internet, e-mail, hosting, on-line shops, safety on the Internet and a whole wide range of B2B advanced-technology services.
GPP as such or through its predecessor in name GRUPO HISPANO-SUIZA, S.A. owns numerous trademarks, consisting of or containing the words PICKING PACK.
- "Service Picking Pack Point (and design)". This trademark, filed with the Spanish Trademark Register under number 2.030.567/2, (class 7) is established for machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubator for eggs. Registration date: July 7, 1997.
- "Service Picking Pack Point (and design)". This trademark, filed with the Spanish Trademark Register under number 2.030.568/0, (class 9) is established for scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus. Registration date: July 7, 1997.
- "Service Picking Pack Point (and design)". This trademark, filed with the Spanish Trademark Register under 2.030.569/9, (class 16) is established for paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks. Registration date: July 7, 1997.
- "Service Picking Pack Point (and design)". This trademark, filed with the Spanish Trademark Register under number 2.030.570/2, (class 18) is established for Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery. Registration date: July 7, 1997.
- "Service Point (and design)". This trademark, filed with the Spanish Trademark Register under number 2.030.571/0, (class 20) is established for furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics. Registration date: July 7, 1997.
- "Service Picking Pack Point (and design)". This trademark, filed with the Spanish Trademark Register under number 2.030.572/9, (class 35) is established for advertising; business management; business administration; office functions. Registration date: November 26, 1997.
- "Service Picking Pack Point (and design)". This trademark, filed with the Spanish Trademark Register under number 2.030.573/7, (class 38) is established for telecommunications. Registration date: November 26, 1997.
- "Service Picking Pack Point (and design)". This trademark, filed with the Spanish Trademark Register under number 2.030.574/5 , (class 39) is established for transport; packaging and storage of goods; travel arrangement. Registration date: November 26, 1997.
- "Service Picking Pack Point (and design)". This trademark, filed with the Spanish Trademark Register under number 2.030.575/3, (class 42) is established for providing of food and drink; temporary accommodation; medical, hygienic and beauty care; veterinary and agricultural services; legal services; scientific and industrial research; computer programming; services that cannot be classified in other classes. Registration date: November 26, 1997.
- "Service Picking Pack Point". This European trademark, filed with the relevant register under number 683.359, is of class 9, covering the goods and services related in the above defined Spanish trademark number 2.030.568/0 and of class 42, covering the goods and services defined in the Spanish trademark number 2.030.584/2.
- "Picking Pack". This European trademark, filed with the relevant register under number 912303, is of class 7, 9, 16, 18, 20, 35, 38, 39, 42, covering the goods and services related in the above defined marks of the same class.
- "Service Picking Pack Point". This European trademark, filed with the WIPO under number 701867, is of class 7, 9, 16, 18, 20, 35, 38, 39, 42, covering the goods and services related in the above defined marks of the same class.
On January 8, 1999, grupo picking pack registered "grupopickingpack.org". On January 9, 1999, grupo picking pack registered "grupopickingpack.com". On January 10, 1999, Complainant registered the domain name "grupopickingpack.net". On February11, 1999, Grupo Picking Pack registered "pickingpackdirect.net". On September 11, 2000, Complainant registered "pickingpack.net" and has an active web site thereunder.
According with the WHOIS database search by this Panel, Respondent ASTURNET registered "pickingpack.com" on November 4, 1998. On the same day Respondent Mr. Moran registered "pickingpack.org".
Since both domain name registrations are in "Active" status, Respondents are bound by the ICANN Policy which is in effect for the registrar and the registrants (now the Respondents in this proceeding). The Policy may therefore be invoked by Complainant as the legal basis for this Panelґs jurisdiction, which has not been contested by Respondents, by their default.
5. Parties’ Contentions
A. The Complainant contends that:
- The domain names at issue are identical and/or confusingly similar to the marks of Grupo Picking Pack, S.A.
- In the summer of 1996, GRUPO PICKING PACK, S.A. requested the registration of the numerous marks including the words Picking Pack
- When GPP was aware of the importance of the Internet, it proceeded to register several Top Level Domain names.
- GPP is doing a commercial use of the web site "www.pickingpack.es".
- Mr. Prуspero Morбn or ASTURNET, S.L. (moreover jointly referred to as THE RESPONDENTS) have no right or legitimate interests with regard the domain names at issue. They recorded the TLD names at issue on Nov 4th, 1998, two and a half years after GRUPO PICKING PACK, S.A. was adopted as the new corporate name of the company and, as previously stated, coinciding with the great commercial development of the company and acting ‘motu propio’, without being instructed by the company.
- A clear proof of THE RESPONDENTS’ bad faith and opportunism results from the fact that GPP registered its TLD "www.pickingpack.net" on 11 September 1998, while THE RESPONDENTS registered the TLD Names subject of the present claim ("www.pickingpack.com" and "www.pickingpack.org" ) on 4 November 1998, that means, less than two months after GPP has started to register the TLD names and with an absolute and certain knowledge that GPP was in the process of registering these TLD names.
- THE RESPONDENTS are not directors, managers or employees of the company. They have no business interests with respect to the TLD names at issue. They are not licensees of GPP, nor is he otherwise authorized to use the marks belonging to the company. Definitively, they have no relationship with the company which may have legitimated him to register the Top Level Domain names at issue.
- THE RESPONDENTS’ legitimate interest with regard to the TLD names object of this dispute started and finished with its surprisingly and unfair registration.
- THE RESPONDENTS were aware of the wide commercial reputation of GPP both in the Spanish and in the European market, as GRUPO PICKING PACK, S.A. has branches in different UE countries. As we have seen, there has been no confusion or misunderstanding in the registration of the domain names at issue, conformed with invented words. THE RESPONDENTS registered the domain names with a perfect knowledge that GPP was in the process of carrying out the registration of both its trademarks and the TLDs, and with a clear and notorious will to create a impression of an association with GRUPO PICKING PACK, S.A. intending to make profit of that.
- Under the previsions of section 2 of the Competition Defense Spanish Act that the registration of a domain name which is identical to a notorious mark must be considered as an unfair competition activity, against the good faith principle applicable to the commercial relationships between parties, which also produces confusion and which constitutes an exploitation of the reputation of the others. This is what has happened in this case, a notorious example of unfair competition.
- The legal representatives of GRUPO PICKING PACK, S.A. contacted Mr. Prуspero Morбn by means of a notification sent to him by the Spanish Public Notary Mr. Javier Garcнa Ruiz, requesting him to stop making use of the top level domain names at issue, as his behavior was attempting against the property and commercial rights of the company. Mr. Prуspero Morбn simply did not answered the company’s request.
- THE RESPONDENTS have no right or legitimate interests related to the domain names at issue. In addition, we must remember the purpose of trademarks: the protection of the commercial interest of any company. Trademarks, as well as domain names, are always related to a commercial activity, to the offering of goods and services.
- The domain name "www.pickingpack.org" does not resolve to a web site or other on-line presence. There is no evidence of advertising or promotion on this domain name, so it must be concluded that no use is being made of this TLD. This fact must involve a bad faith registration and use of this domain, one of the requirements to be evidenced according to the paragraph 4(a) of the Policy. Bad faith in the registration of this domain name is evident and related to the fact that it was registered with no intention to make an use of it. Bad faith use of a domain name does not necessarily involve a positive action as long as, under certain circumstances, the omissions and inactions may evidence the said bad faith use. This understanding is supported by Decision issued in Telstra Corporation Ltd. v. Nuclear Marshmallows (Case No. D2000-0003). GPP has a wide business reputation. The good and services covered by the numerous marks owned by the company are widely known, so GPP is the only company or individual with legitimate interests related to this domain name. When THE RESPONDENTS registered this domain name, they intended not to use it, as long as a sufficient period of time has elapsed since the date of registration without having set a web site or similar on-line facility. Therefore, we wonder why they decided to carry out the registration of this TLD name. THE RESPONDENTS have no trade mark or other intellectual property right to this domain name. This domain name is not the legal name of ASTURNET, S.L., the company owned by Mr. Prуspero Morбn. THE RESPONDENTS are not doing business under the domain name "www.pickingpack.org". For all these reasons, THE RESPONDENTS registered the first TLD name at issue and are using it in bad faith. As to "pickingpack.com", THE RESPONDENTS registered this TLD on November 4th, 1998, less than two months after GRUPO PICKING PACK, S.A. had started to register the TLD names containing the words ‘picking pack’. Therefore, they acted with an absolute knowledge that GRUPO PICKING PACK, S.A. was in the process of legitimately registering several TLD names containing the words included in its corporate name and trademarks, and decided to take profit from this situation.
- The representatives of GRUPO PICKING PACK, S.A., once it was evident that "www.pickingpack.com" was not available for the company, tried, in numerous occasions, to contact the registrants of said TLD name in order to get this TLD name transferred to the company. Unfortunately, as we have previously seen, THE RESPONDENTS refused all the chances offered to bring this matter to an amicable solution. Nevertheless, as a consequence of all these contacts, THE RESPONDENTS were aware of the deep interest of the company to recuperate the TLD. The insistence of the company evidenced so. At that moment, they thought they could obtain a huge benefit, and decided to offer "www.pickingpack.com" on sale.
- An e-mail was sent by Mr. Marcos Quera, who works for a specialized company in Internet matters called Abaforum, of Spanish nationality, to Mr. Carlo Umberto Campanini Bonomi, the President of the Board of Directors of GRUPO PICKING PACK, S.A., and explains how Mr. Quera was surprised when, by mistake, he acceded to the web site linked to the TLD name "www.pickingpack.com" on January 21st, 2000 and checked the content of said page.
- Mr. Quera was really amazed with what he found in that site: "www.pickingpack.com" was being offered on sale. Any interested person should present an offer before February 29th, 2000, via e-mail in order to get transferred the domain.
- The above explained fact, concerning the "www.pickingpack.com" being offered on sale is a clear evidence of registration and use in Bad Faith.
- Prior to receive any notice of the dispute and during all the year of 1999 THE RESPONDENTS did not use "www.pickingpack.com" in connection with a bona fide offering of goods or services. THE RESPONDENTS simply linked the domain to a site in which "www.pickingpack.com" was offered on sale (we wonder if this can be accepted as a fair use) as it is evidenced in the attached ANNEX 28.
- THE RESPONDENTS did not link the domain name to any active web-site before receiving notices of the dispute, which indicates that they had no legitimate business interest in the domain name. The e-mail dated January 21, 2000, (attached as ANNEX 28 certifies that the registration of the Domain Name was primarily for the purpose of selling or renting it to the Complainant for a sum exceeding any related out-of-pocket expenses. THE RESPONDENTS’s actions therefore constitute evidence of bad faith as described in paragraph 4(b)(ii) of the Policy.
- During all the year 1999 and several months of 2000, THE RESPONDENTS used said TLD name in bad faith, as long as they registered it primarily for the purpose of selling or otherwise transferring it to GRUPO PICKING PACK, S.A or even to a competitor. We must remind that during all the year 1999, the content of the web site linked to "www.pickingpack.com" was an offer to sell it.
- GRUPO PICKING PACK, S.A. found it necessary to require a Notary to officially notify him that he was attempting against the commercial interests of the company. At that moment, more than a year and a half after the unfair registration of "www.pickingpack.com" THE RESPONDENTS decided to modify the content of the web page as below described.
- According to the personal information provided by himself, Mr. Prуspero Morбn is said to be a shareholder of GRUPO PICKING PACK, S.A., a company which we shall remember, quotes in the Spanish Stock Market and has a fully subscribed and paid out share capital of Spanish Pesetas 65,504,789,858.- This means that Mr. Prуspero Morбn can sell and purchase shares of GRUPO PICKING PACK, S.A. at any moment, acquiring and loosing his shareholder’s condition according to the stock market rules and tendencies.
- He pretends to appear as using the TLD name "www.pickingpack.com" as a web site to express opinions, make queries and exchange information with other GPP shareholders. In said web site it is stated that all shareholders and investors interested in the firm will have the possibility to send comments and opinions on the situation of the company and its stock exchange price to be published in this forum.
- This web site also reflects that the promoters of this meeting point on Internet are GPP shareholders concerned about the satisfactory development of the company, and who wish through this web site to give the shareholder the opportunity to express ideas and to be informed about any changes in GPP’s value in the stock market. Nevertheless, Mr. Prуspero Morбn is not using this domain name at all. He is only pretending to appear being using the TLD name "www.pickingpack.com" in order to conserve it. He seems to be an Internet expert, with deep knowledge of the ICANN rules, and thought that this apparent use may protect him.
- The contents of this web page are the same since he modified the initial content of the page (in which the TLD name was offered on sale).
- Enclosed documents certify that no use was not being done of this domain name during such period of time, even since before April 2000. The queries and comments of the shareholders of GRUPO PICKING PACK, S.A. were always the same. So, it is clear that THE RESPONDENTS intended to unfairly protect themselves with this non-commercial use of the TLD name "www.pickingpack.com" which, as far as we are concerned, is completely unacceptable.
- Should this meeting point be active and should their promoters contact the Directors of the company, it may be accepted as a non-commercial fair use of the domain name provided that THE RESPONDENTS use a TLD name which identify them as shareholders of the company but, as long as there information published in it is the same since long time ago, GRUPO PICKING PACK, S.A. can not accept at all this use of the TLD name as a non commercial fair use. The company officially notified Mr. Prуspero Morбn with regard to this forum by means of a letter dated June 27th 2000, that we attach to this complaint as ANNEX 32. In said letter, GRUPO PICKING PACK, S.A. informed Mr. Prуspero Morбn that the company did not authorize said forum of shareholders and, at the same time, offered him the possibility to set it up with any other different domain name.
- Maybe, the shareholders of GRUPO PICKING PACK, S.A. are sending their comments and opinions to this meeting point. We do not know, although due to the high number of shareholders of the company, it is likely to be happening on this way. Nevertheless, what is really clear is that the promoters of this forum were not publishing them, as long as the comments, as evidenced above, have been the same for a long time. This is also attempting against the reputation of GRUPO PICKING PACK, S.A. The shareholders of the company identify this web site with the company and its managers and directors. The shareholders of GPP believe that this has been an initiative of the company, so they are confident to have their comments published and even answered. Nevertheless, there is no response or publication. We wonder what they were thinking about this initiative, surely that the managers of GRUPO PICKING PACK, S.A. were not interested in their shareholders. Is this acceptable? We are sure that the answer shall be no. We wonder how the promoters of this site can be concerned about the satisfactory development of the company since they are willingly attempting against its commercial development, causing with their bad faith actuation a notorious prejudice to GRUPO PICKING PACK, S.A.
- When they were sure that the company would not accept any sort of blackmail, THE RESPONDENTS decided to modify the content of the web site (they knew that this fact represented a clear evidence of their bad faith) including a shareholders’ forum. This can not be accepted as a fair use, even as a use. We wonder why THE RESPONDENTS waited for more than a year and a half to set up this forum if it was their initial intention when registering the TLD name "www.pickingpack.com." And we also wonder why the modifications of the content of the web site coincided with the official notifications sent by the company, which revealed the clear intention of GRUPO PICKING PACK, S.A. to do everything possible in order to recuperate the domain name. THE RESPONDENTS, mainly Mr. Prуspero Morбn, appear to be Internet experts, with deep knowledge of the ICANN rules and the WIPO decisions.
- Mr. Prуspero Morбn has confirmed us in numerous occasions, verbally, that he is sure that GRUPO PICKING PACK, S.A. will never recuperate the domain "www.pickingpack.com". He pretends to prevent GRUPO PICKING PACK, S.A. from requesting the WIPO protection, as he supposes that the non-commercial use of the forum of shareholders is protecting him. We do not agree at all, as his bad faith has been evidenced in numerous occasions, and this forum is just an appearance of fair use which was set up when he was sure GRUPO PICKING PACK, S.A. was not going his blackmail.
B. Respondents have not submitted a Response, are in default and after the notification of their default have not made any submissions whatsoever.
6. Discussion and Findings
Identity and Confusing Similarity
Complainant has rights on numerous trademarks which consists of or contain the words PICKING PACK.
A simple comparison of the domain names at issue and the "PICKING PACK" marks of the Complainant leads the Panel to find that the domain names "pickingpack.com" and "pickingpack.org" are, having in mind the inclusion of the ".com" and "org" gTLDs in the domain name registrations, at least confusingly similar to the "PICKING PACK" marks of the Complainant.
The Complainant has met its burden under Policy, Paragraph 4(a)(i).
Lack of Rights and Legitimate Interests
The Complainant has specifically denied that the Respondents have any right or legitimate interest in the domain names. According to Rules, Paragraph 5(b)(i) and 5(b)(ix) Respondent generally bears 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). In principle Respondentsґ default does not favor them. However Complainant must still prove all requirements of Policy, Paragraph 4(a).The Panel will now analyze the situation in respect of the two challenged domain name registrations:
On December 10, 2000, the Panel has independently visited the "www.pickingpack.com" web site of the Respondent, which shows a text (in Spanish) stating 1:
"Picking pack Group - Shareholdersґ Forum
The Picking Pack shareholder has now its place on the Net to express its views, to ask for advice and to share information with other Picking Pack Groupґs shareholders. Any shareholder or investor interested in the Picking Pack company can to send its comments and views about the company and its performance in the stock market for publication on this forum.
The creators of this meeting point on the Internet are GPP shareholders worried about the good performance of the company, and who through this space on the Net would like shareholders to express their views and to know what is going on with the GPP stock".
There is another text inviting GPP shareholders to send their messages about the company.
To express any opinion including harsh criticism on the Internet no matter the subject is undoubtedly a legitimate exercise of the freedom of speech, as protected under the Spanish Constitution (Article 20) and the Universal Declaration of Human Rights. Quite another thing is using a third party's trademark as a domain name under which a web site for the posting of criticism or opinion is operated.
Several decisions have stressed the independence of the legitimacy of criticism together with the illegitimacy of choosing a third partyґs mark as a domain name for the web site under on which such criticism is posted.
In WIPO Case D2000-0020 Compagnie de Saint Gobain v. Com-Union Corp it was said:
"When registering the Domain Name (as well as "airliquide.net" and air-france.net), Respondent clearly intended to us[e] it to voice opinions, concerns and criticism with regard to the management and activities of Complainant and affiliated companies within the Saint-Gobain group(...)". "It goes without saying that shareholders or other interested parties have the right to voice opinions, concerns and criticism with respect to a listed company and that the Internet constitutes an ideal vehicle for such activities. The issue at hand is however not as Respondent seems to contend, the freedom of speech and expression but the mere choice of the domain name used to exercise this inalienable freedom of speech and expression. Respondent could have chosen a domain name adequately reflecting both the object and independent nature of its site, as evidenced today in thousands of domain names."
In WIPO Case D2000-0071 SA International a.k.a. Canadian Standards Association v. John O. Shannon and Care Tech Industries, Inc. the panelist said:
"Respondents claim to rights and legitimate interests is essentially based on a claim to freedom of speech and, expression of opinion, but that right does not require the use of Complainant's trade marks in the domain names for that purpose."
In WIPO Case D2000-0266 Geniebooks.com Corporation v. William E. Merritt the Panel said:
"To allow a dissident shareholder or purported shareholder to appropriate a domain name of an existing corporation is not such a [bona fide] use and certainly is not a noncommercial or fair use without intent for commercial gain." In WIPO Case D2000-0299 Monty and Pat Roberts, Inc. v. Bill Keith it was said: "However, the right to express one’s views is not the same as the right to use another’s name to identify one’s self as the source of those views. One may be perfectly free to express his or her views about the quality or characteristics of the reporting of the New York Times or Time Magazine. That does not, however, translate into a right to identify one’s self as the New York Times or Time Magazine." "In the instant case, Respondent is using as its identifier the domain name "montyroberts.net". When an Internet user searches for Complainant’s mark, it will find Respondent’s website address. There is nothing in the domain name to indicate that the site is devoted to criticism of Complainant, even though this criticism is apparent upon visiting Respondent’s site. By using Complainant’s mark, Respondent diverts Internet traffic to its own site, thereby potentially depriving Complainant of visits by Internet users."
Similar views were expressed by the Panels in WIPO Cases D2000-0431 Bandon Dunes L.P. v. DefaultData.com, D2000-0669 Sears, Roebuck and Co. v. Hanna Law Office and D2000-0856 New York-Presbyterian Hospital v. Tim Harris.
The Panel also notes that Respondents have not included any statement on their web site that it is not the official web site of the GPP company. Nor have Respondents included any link to such official GPP web sites ("www.pickingpack.net" and "www.pickingpack.es"). Such omissions further contribute to the actual confusion of Internet surfers who happen to get connected to the Respondentsґweb site while looking for the web site of the Complainant. Further, the web site of the Respondents even includes a statement that those responsible for the web site are in a good position to reach the management of GPP. This statement is most likely leading Internet surfers to believe that the web site creators are affiliated with, authorized by or somehow related to GPP management or the GPP company itself. All this cannot reveal any right or legitimate interest in the domain name.
On December 10, 2000, the Panel also visited independently the "www.pickingpack.org" web site, which resulted in an automatic re-direction to a web page with a text stating: "Coming Soon! We recently registered our domain name at... register.com", located at "http://futuresite.register.com/futuresite.shtml". This means that the web site "www.pickingpack.org", for all practical purposes, is not being actively used, which prevents the Panel to find that Respondent in default has rights or legitimate interest in the domain name.
Furthermore none of the Respondents replied to the notarized cease-and-desist letter that the Complainant sent them on May 28, 1999. No statement of Respondentsґ rights on the domain names could thus be obtained.
For all the reasons above the Panel finds that the Complainant has met its burden under Policy, Paragraph 4(a)(ii), in that the Respondents lack rights or legitimate interest in the domain names at issue.
Bad Faith Registration
Complainant has made compelling assertions and convincingly evidenced in its Complaint (un-contested by Respondents) that the primary purpose of Respondents at the time of the domain name registrations was selling the domain names registrations to the Complainant for profit, which is a circumstance of bad faith registration. Policy, Paragraph 4(b)(i) states:
"circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name".
All the evidence submitted by Complainant and the default of the Respondents lead the Panel to conclude that Complainantґs assertions are right in this respect. Rules, Paragraph 14 states:
"(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint".
The Panel thus finds that the Complainant has met its burden under Policy, Paragraph 4(a)(iii), in that the domain names were registered in bad faith.
Use in Bad Faith
The Panelґs independent visit to the "www.pickingpack.com" web site showed that there are many views expressed in the forum whose authors seem to believe that they have contacted the official web site of the GPP company: Carlos Martinsґ message from Portugal asking for information about how to get a franchise from GPP; Davidґs message about how to get a price list; Lorenzo Gonzбlez Guillйnґs offer to present its catalog on management software; nacheteґs message asking about the franchises granted by GPP; Eduardo Lopez -Bravo Arnaizґs looking for a commercial contact with GPP; Sonia Pulgarinґs message asking about the GPPґs field of business, address and telephone number; Rafael Crespo asking GPP to send him a shareholderґs card; Josй Kluis Freire asking GPP for a brochure; javierґs message who lives in Gijуn asking about the nearest GPP center; dreinaґs asking for GPP office hours; Josй Vicente Alfonso Aguadoґs message asking GPP about its address to send a resumй; Rafael Fernandezґs message from Cardiff asking for the address of GPP to send a resumй; Fracesc Romero I Segarraґs asking for a list of GPP agencies in Esplugues de Llobregat or St. Just Desvers; Albert Canalsґmessage complaining to GPP about computers; Mariano-Perez Cruzadoґs message proposing integrated logistics to GPP; jcirґs message requesting GPP a promised gift: Freshmarґs message asking GPP for information about its products: A. Sanchezґs message asking for the companyґs address and services; Sendjerryґs message asking about GPP high speed Internet services, etc.
All these messages together show that confusion caused by the web site with the Complainantґs company name and trademarks is not merely a possibility, but a real fact. Respondent is looking for commercial gain at selling the domain name to the Complainant, thus incurring in the bad faith use circumstance of Policy, Paragraph 4(b)(iv) which reads:
"(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." Panelґs emphasis.
For all practical purposes, the web site corresponding to the domain name is inactive, as shown in the independent visit by the Panel, and which has not been contested by Respondent. This does not mean that there is no use of the domain name. Many decisions in WIPO cases have addressed this very issue. In particular Case D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows established a sound criterion where inactivity and relevant circumstances, if present, allow a finding of bad faith use. In the instant case the Panel considers the following relevant circumstances:
a) The permanence of the present domain name registration, together with the registration by related Respondent ASTURNET of the "pickingpack.com" domain name equals to prevent the Complainant from reflecting its well known PICKING PACK trademarks in the corresponding domain names and to conduct business on the Internet thereunder.
b) The present inactivity of the web site under the domain name at issue leads to possible confusion among Internet users - including present or eventual customers of the Complainant - who may be looking for the web site of the Complainant by using any current browser. The inactivity of the web site may lead Net surfers to believe that the Complainant does not own a web site, or that it is unable to have one.
c) All parties are resident in Spain. It is generally accepted by WIPO Panels - and this acting panelist - that when the Parties are residents of the same country panels may look to the law of such country, as deemed applicable by the panel, and to judicial decisions thereunder. See WIPO Case D99-0001 World Wrestling Federation and many others accepting its reasoning. 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 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 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. v. www.portaldedominios.com.
These circumstances together lead the Panel to conclude that the Complainant has met its burden under Policy, Paragraph 4(a)(iii), in that the domain name "pickingpack.org" is also being used in bad faith.
The Panel has found that the domain names "pickingpack.com" and "pickingpack.org" are confusingly similar to the marks of the Complainant consisting of or containing the distinctive words "PICKING PACK". Further, Respondents have no rights to or legitimate interests in said domain names. The Panel has further found that the domain names have been registered in bad faith, and that they are 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 names "pickingpack.com" and "pickingpack.org" be transferred to the Complainant GRUPO PICKING PACK, S.A.
Roberto A. Bianchi
Dated: December 18, 2000
1. Unofficial translation from the Spanish original by this panelist.