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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cimpor-Cimentos de Portugal, SGS, S.A. v. Contemporary Engineering
Case No. D-2000-1281
1. The Parties
The Complainant is Cimpor-Cimentos De Portugal, Sgs. S.A. Corporate Body nє 500722900, Rua Alexandre Herculano, nє 35, Lisbon, Portugal. Represented by João Pereira da Cruz, Rua Vitor Cordon, 14, 1200, Lisbon, Portugal.
The Respondent is Contemporary Engineering, P.O. Box: W-288-108, St. John, Antigua.
2. The Domain Name and Registrar
The domain name at issue in this complaint is <cimpor.com> and the Registrar is Register.com of 575 Eighth Avenue, 11th floor, New York, NY 10018, United States of America.
3. Procedural History
Complaint was received by WIPO by e-mail on September 28, 2000 and on October 4, 2000, in hardcopy.
On October 5, 2000, Register.com has confirmed that <cimpor.com> is registered in the Respondent's name and that it is in "Active" status.
On October 16, 2000, Complainant sent an amendment to the Center. Its hardcopy was received on November 21, 2000.
On November 22, 2000, the Center has verified that the Complaint met the formal requirements and sent the Respondent a notification under Paragraph 2(a) of the Rules together with copies of the Complaint.
On December 11, 2000, a response was received by e-mail from Mr. Tiago Azevedo Fernandes as the technical contact of the Respondent.
A single member Panel ("The Panel") was properly designated to examine and decide the dispute.
On January 19, 2001 the hardcopy of the whole process was received by the Panel.
On January 31, 2001 the decision was sent to the Center by the Panel.
4. Factual Background
Complainant, Cimpor - Cimentos de Portugal, SGPS, S.A., is the largest Portuguese company in the cement field and has business activities in many other countries.
Trademark "CIMPOR" is already registered in the name of Complainant at the Portuguese Patent and Trademark Office, European Community Trademark Office and at World Intellectual Property Organization covering "cements and other material for construction". The first registration was granted on October 28, 1987.
On January 30, 2001 the Panel has ascertained that domains <cimpor.net> and <cimpor.org> are registered in name of ETC, Lda., the technical contact of registration for domain name <cimpor.com>.
Disputed domain name <cimpor.com> was registered in the name of the Respondent on January 13, 2000 with Register.com - Registrar.
Respondent has a web site under construction at www.cimpor.com address.
5. Parties’ Contentions
- Trademarks "CIMPOR" and "CIMPOR and design" are registered in its name in Portugal, in Europe and at WIPO.
- CIMPOR is a well-known company in the Portuguese territory and in other countries.
- The use of domain name <cimpor.com> may cause a likelihood of confusion for the consumer.
- Respondent has no legitimacy to use or register domain name <cimpor.com>.
- From January to May, 2000 domain name <cimpor.com> was linked to Complainant’s official web site located at the address <cimpor.pt>.
- Respondent does not operate any business or offer any service or goods under the mark "CIMPOR".
- Respondent is not using domain name <cimpor.com> for an active web site.
- Respondent does not own any authorization to use trademark "CIMPOR" or to use or register a domain name which incorporates said mark.
- Respondent can not alleged that it is unaware of trademark "CIMPOR’s" existence and has registered domain name <cimpor.com> in bad faith.
- Respondent’s technical contact has contacted Complainant in order to initiate a possible negotiation on the domain name, stating he was acting on behalf of the Respondent.
- The Respondent’s use of domain name <cimpor.com> may cause an irreparable injury or damage to the Complainant's activities.
- Complainant requested Panel to order the assignment of domain name <cimpor.com>.
- Respondent has not attended the complaint notice sent by the Center on November 22, 2000 since the response attached to the files was sent by the technical contact of domain name <cimpor.com>, ETC, Lda. represented by Mr. Tiago Azevedo Fernandes who alleged that he has registered such domain name on behalf of the Respondent.
- Mr. Fernandes also informed that he has never initiated any contact with Complainant and that the contact was made by Mr. João Padinha on behalf of Complainant on February 16, 2000.
- Mr. Fernandes has informed that domain names <cimpor.net> and <cimpor.org> were registered by Complainant’s instructions.
6. Discussion and Findings
In the administrative proceeding each of the following provisions of Paragraph 4a of the Policy must be attended by the Complainant:
"(i) the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and used in bad faith."
Identical or Confusingly Similar Domain Name:
The Domain Name at issue is <cimpor.com>. Complainant is the title holder of the registered trademark "CIMPOR", which is identical with the relevant and disputed part of the Domain Name.
Taking the above into consideration, the requirements of Policy paragraph 4a (i) have been met.
Respondent's Rights or Legitimate Interests in the Domain Name:
Firstly, it is convenient to recall that according to paragraph 4c of the Policy, a Respondent can establish its rights or legitimate interests in the Domain Name if it shows the presence of any of the following circumstances:
"(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
Respondent has not attended the provision of 4c(i) inasmuch as the only evidence of use was during a short period (4 months) connecting the cyber address <cimpor.com> to Complainant’s official web site located at <cimpor.pt>. No other type of use has been proven in the files.
With respect to 4c(ii) there is no evidence in the files that Respondent is well-known by the domain name. There is, in the Panel's opinion, a strong risk that the users of Respondent web site are associating <cimpor.com> to the traditional cement company.
The provision of 4c(iii) is not met by Respondent either, due to the fact that its only use was directing to Complainant’s Internet business. Therefore, it is a strong possibility that Internet users believe said domain name belongs to Complainant instead of Respondent. The fact that Respondent has directed the domain name to the official web site of the trademark owner does not evidence its fair use. On the contrary, such act demonstrates its intention to take future advantages from Complainant’s renown.
In the absence of any other indications as to the legitimate interest of Respondent to use the Domain Name, the Panel finds that Complainant has fulfilled its burden of proof under Article 4a(ii) of the Policy showing that Respondent has no right or legitimate interest in the Domain Name.
Domain Name Registered and Used in Bad Faith:
The requirement of Policy paragraph 4a(iii) is also met by Complainant in the form of item (i) of Paragraph 4b, namely:
(i) 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;
There is a strong presumption in the files that the Respondent has adopted the domain name <cimpor.com> to take advantage of renown acquired by Complainant after having used trademark "CIMPOR" for years. Since Respondent has for many months directed domain name <cimpor.com> to Complainant’s official web site, the Respondent can not allege they have no knowledge on the prior existence and renown of Complainant. Panel is not considering the fact that said domain name was assigned to Respondent on June 12, 2000 to avoid the practice of bad faith since the technical contact and former owner affirmed that he has registered said domain name on behalf of Respondent. According to Mr. Fernandes the assignment was a mere formal aspect as the owner was already the Respondent.
In an overall assessment of the contentions and facts mentioned above, the Panel concludes that the requirement of paragraph 4a(iii) of the Policy is sufficiently achieved by the Complainant, and that the disputed Domain Name has been registered and used in bad faith.
In light of the foregoing, the Panel decides that the domain name registered by Respondent is identical to the trademark of Complainant, that Respondent has no legitimate interests in respect of this domain name, and that the domain name in issue has been registered and is being used in bad faith.
Accordingly, the Panel requires that the registration of the domain name <cimpor.com> be transferred to Complainant.
Peter Dirk Siemsen
Dated: January 31, 2001