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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LLADRO COMERCIAL, S.A and LLADRO USA, INC. v. YESTERDAYS SOUTH, INC.
Case No. D2000-1358
1. The Parties
The complainants are LLADRO COMERCIAL, S.A., a Spanish corporation with an address at Carretera de Alboraya s/n, Polнgono Lladrу, 46016 Tavernes Blanques, Valencia, Spain, and LLADRO USA, INC., an American corporation with an address at 1 Lladro Drive, Moonachie, New Jersey 07074, United States of America (collectively the "Complainants"). Both are represented in this proceeding by Ms. Beatriz Garcнa Loira, with the same address as LLADRO COMERCIAL, S.A.
The respondent is YESTERDAYS SOUTH, INC., at P.O.BOX 565097, Miami, Florida 33256, United States of America (the "Respondent").
2. Domain Name and Registrar
The domain name at issue is <lladro-retired.com>, registered with NETWORK SOLUTIONS, INC. ("NSI"), of 505 Huntmar Park Drive, Herndon, Virginia, USA.
3. Procedural History
On October 10, 2000 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") was submitted by e-mail to the WIPO Arbitration and Mediation Center (the "Center"). On October 13, 2000 the Complaint was received in hardcopy.
At the Centerґs request for verification of October 13, 2000, on October 16, 2000 NSI informed inter alia that the Respondent is the current registrant of the domain name <lladro-retired.com>, and that the domain name is in "active" status.
On October 18, 2000 the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent Yesterdays South, to the Administrative, Technical and Zone contact (Management account, Computer Center of Davie), and to the Billing contact Ms. Deborah Lambert by courier (with enclosures). Faxes with the notification of complaint and Complaint were transmitted by the Center to the administrative and zone contacts on October 18, 2000. The Centerґs fax machine reported "NG" errors in both cases. On the same day the Center sent emails to the Respondent, to the administrative and billing contacts at email@example.com, host@COMPUTERCENTER.NET and dlambert@COMPUTERCENTER.COM. The Center set November 8, 2000 as deadline for the submission of a Response.
On November 9, 2000 the Center sent a Notification of Respondent Default to the Respondent, the administrative and the billing contact, by post/courier and E-mail.
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."
After having received Roberto A. Bianchiґs Statement of Acceptance and Declaration of Impartiality and Independence, on November 17, 2000 the Center appointed him as a sole panelist. The scheduled decision date was set for November 30, 2000. Thus, the Administrative Panel finds that it has been properly constituted.
The Panel, sharing the assessment of the Center of October 13, 2000, 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 Respondent 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 agreement for the domain name at issue has been done and executed in English by Respondent-Registrant and the Registrar. The Complainant has submitted its Complaint in English. Several annexures are in Spanish, French, German, Italian. The Panel does not require translation thereof. The Respondent has its address in USA. In the absence of any special circumstance 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 annexures, and undisputed by Respondent, are established:
LLADRO USA, INC. is an American company fully owned by Weil Ceramics & Glass, Inc. Weil Ceramics & Glass, Inc. is a company fully owned by the Spanish corporation LLADRO COMERCIAL, S.A. Accordingly LLADRO USA, INC. and LLADRO COMERCIAL, S.A. are related companies.
LLADRO COMERCIAL, S.A. is the owner of the LLADRO trademark in many countries, with the exception of the USA trademark LLADRO, whose owner is LLADRO USA, INC. Thus, both related companies have sufficient common interest in this proceeding to appear jointly as Complainants. The Panel refers to the very long list of countries, registration numbers, classes and registration certificates contained in Annex IV of the Complaint, and accepts the fact of the Complainantsґownership of the LLADRO trademarks.
LLADRO USA, INC. is the owner of the U.S. LLADRO trademark since September 5, 1967 . LLADRO Comercial, S.A. is the owner of LLADRO trademarks in many countries. In some Trademark Certificates the company Desarrollo y Gestiуn de Empresas, S.A. (Deygesa) appears as the owner of the LLADRO trademark. The worth of the company Desarrollo y Gestiуn de Empresas, S.A. (Deygesa) was transferred to LLADRO COMERCIAL, S.A. in the merger of both companies. Accordingly all the LLADRO trademarks of Deygesa were transferred to LLADRO COMERCIAL, S.A. See a Certificate executed by Mr. Antonio Sotio Bisquert, Notary Public of Valencia, Spain, at Annex.V of the Complaint.
The LLADRO trademark is a famous and well-known trademark. It covers mainly products of the 18 (leather products), 21 (porcelain and ceramic vases, statuettes and figurines) and 25 (clothing, footwear and headgear) international classes.
The LLADRO trademark has been advertised and promoted all over the world.
The Complainants publish a quarterly magazine which is widely distributed.
In 1953 Messrs. Juan, Josй and Vicente Lladrу founded LLADRO COMERCIAL, S.A. in Valencia, Spain Currently LLADRO COMERCIAL, S.A. employs over 2000 people. The Lladrу Collectorґs Society has 130,000 members worldwide.
On March 22, 1999 the domain name at issue was registered by Respondent with NSI.
5. Parties’ Contentions
A) The Complainant contends:
The term "lladro-retired" is almost identical to the term "lladro". It is the same name but with the addenda of the word "retired". The fact is that those names are confusingly similar, almost identical, is evident. A mere comparison of both terms makes evidence of it.
The Respondent (neither as an individual, nor as a business) has not been commonly known by the domain name.
The domain name "lladro-retired.com" has been registered in bad faith. The "lladro-retired.com" is not the only third party famous trademark registered by the Respondent. The Respondent has also registered the domain name "hummel-retired.com", for instance.
There is no doubt about the fact that the Respondent know the LLADRO trademark. This trademark is famous, has a strong reputation and is widely known as evidenced by the documents attached. The LLADRO trademark was first registered in USA on 1967.
The domain name "lladro-retired.com" is being used in bad faith. In case D2000-0003, the Panel indicated that the third element in paragraph 4(a) of the Uniform Policy "and is being used in bad faith" is not limited to positive action, inaction is within the concept. The passive holding of the domain name by the Respondent can constitute a bad faith use.
The Respondent has not submitted a Response, and is in default. After the notification of Respondent default, Respondent has not made any other submission to the Center or the Panel.
6. Discussion and Findings
Identity of Confusing Similarity
Beyond any doubt Complainants have rights on the LLADRO trademark. See 4 above.
The domain name <lladro-retired> is not identical to the LLADRO trademarks of the Complainants. However the lack of the accent ("LLADRO" instead of "LLADRO"), the addition of the hyphen and the word "retired" are not sufficient to distinguish the domain name from the LLADRO trademarks in which the Complainants have rights. Accents cannot be used in a domain name registration.
"Retired" is a word with a generic or common use meaning. However, in the particular context of porcelain figurines, such as LLADROґs, Hummelґs or Royal Doultonґs figurines, a "retired" figurine means "a figurine that has been permanently removed from production". Eventually, the retired figurineґs molds may be destroyed and the figurine is never produced again (Footnote 1). Retired figurines are sold and bought in a secondary market. Thus "lladro-retired" means "retired items of LLADRO porcelain".
Failing any explanation by Respondent as to its reasons to use the LLADRO mark on its domain name, or any comment on the addition of "retired", the Panel finds that the domain name at issue is confusingly similar to Complainantsґ marks (Policy, Paragraph 4(a)(i)).
Lack of Rights and Legitimate Interests
Complainants have denied that Respondent has any rights or legitimate interests in the domain name. In particular, Complainants have denied that the Respondent is a retailer or an authorized retailer of the LLADRO products, that Respondent is selling either in the web site or in a store any LLADRO product, and that Respondent has a license or permission to use the LLADRO trademark or to apply for any domain name incorporating the trademark. Complainants contend that Respondent is not using the <www.lladro-retired.com> web site since the domain name registration on March 22, 1999.
Respondent, by its default, has chosen not to present the Panel with any allegations or documents in its defense or favor despite its burden under Rules, Paragraph 5(b)(i) and 5(b)(ix).
The Panelґs independent visit to the www.lladro-retired.com web site conducted on November 17, 2000 resulted in a DNS error. The web page could not be reached, which means that the Respondentґs web site is inactive for all practical purposes. In a default proceeding effective use or demonstrable preparations for effective use would be an eloquent means of evidencing rights or legitimate interests in a domain name. Consequently the lack of use prevents the Panel to draw any inference in favor of the Respondent in respect of the domain name. In a default case no bona fide use or any other fair use of the domain name could be imagined when the Respondent does not use the domain name in the corresponding web site. On the other part, the Panelґs independent visit on November 18, 2000 to the web site at http://www.yesterdayssouth.com of the Respondent shows Respondentґs statements that it is actively conducting the business of purchasing and selling LLADRO products as well as porcelain products of other famous manufacturers (M. I. HUMMEL and ROYAL DOULTON). In fact Respondent claims on its www.yesterdayssouth.com web page that it has been conducting this business for the last 18 years. However in order to buy and sell LLADRO products Respondent does not need to use the LLADRO trademark in a domain name. This most likely shows lack of interest in the <lladro-retired.com> domain name.
The Respondentґs default leads the Panel to accept Complainantґs contentions as true, and to conclude that Respondent lacks rights or legitimate interests in the <lladro-retired.com> domain name (Policy, Paragraph 4(a)(ii) and Rules, Paragraph 14). This finding should not be construed as a finding that the Respondentґs business under its own www.yesterdayssouth.com web site be illegitimate.
Registration in Bad Faith
A permanent inactivity of the web site corresponding to the domain name twenty months after registration, together with Respondentґs default may suggest that the registration of a domain name which is confusingly similar to Complainantsґ marks has been made in bad faith. Complainants have not contended that Respondent is a competitor, and there is no evidence on the record that Respondent is a competitor of the Complainants, which prevents a finding of bad faith based on Policy, Paragraph 4(b)(iii). However, the commercial activity of the Respondent conducted under its own www.yesterdayssouth.com web site and the "LLADRO" main element in the domain name at issue suggest that Respondent actually knows the existence of the famed porcelain trademark of the Complainants, and that it might commercially use the domain name at issue without any right or legitimate interest. This is in itself a circumstance of bad faith registration under the general terms of Policy, Paragraph 4(a)(iii).
A search independently conducted by the Panel on November 18, 2000 in the WHOIS database of Network Solutions, Inc. showed that the Respondent has registered at least two other domain names (<hummel-retired.com> registered by Respondent on March 22, 1999 and <doulton-retired> registered by Respondent on May 20, 1999). Both domain names prominently include the famous trademarks of porcelain products: M.I. Hummel of Goebel Porzellanfabrik in Germany and Royal Doulton in England (Footnote 2). The www.hummel-retired.com and www.doulton-retired.com web sites of the Respondent were also found to be inactive. Independent visits of the Panel conducted on November 18, 2000 resulted in a DNS error (the web pages could not be reached). The independent visit on the same day by the Panel to the official web site of Royal Doulton at http://www.royal-doulton.com/rcd/st_usa.html#florida showed that the Respondent Yesterdays South is not included on the official list of Royal Doultonґs distributors and authorized dealers for Miami, Florida, USA.
As Respondent is not preventing the trademark owners to reflect their mark in a corresponding domain name, the registration of two other domain names that are similar to corresponding famous porcelain marks is not "a pattern of such conduct" within the meaning of Policy, Paragraph 4(b)(ii). However the "...-retired" registrations suggest that at the time of registration Respondent was most likely aiming at diverting Internet users from their intended destination while they are looking for web sites that belong to the legitimate holders of the trademarks concerned (Hummel, Royal Doulton and LLADRO). The Panel finds that this is a circumstance of bad faith registration under the general terms of Policy, Paragraph 4(a)(iii).
Use in Bad Faith
The inactivity of a web site does not prevent a panel to find that there is bad faith use of the domain name. The Panel accepts as appropriate the Complainantsґ citation to WIPO Case D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows. In that case the learned panelist considered that inactivity of the web site where relevant circumstances are present may lead a Panel to find that there is bad faith use of the domain name.
In the present case:
a) The LLADRO trademark of the Complainants is famous, has a strong reputation and is widely known.
b) The Respondent is identified in the Whois database with a P.O.Box.
c) The Respondent is in default and has not presented the Panel with any submission in its favor.
d) Internet users looking for the famous mark LLADRO by means of a search engine could be led into confusion. From the fact that the www.lladro-retired.com web site is inactive Internet surfers might even conclude that Complainants do not have a web site, or are unable to have an active one.
The Panel finds that the passive holding of the domain name <lladro-retired.com> under such circumstances -jointly considered- satisfies the requirement that the domain name is being used in bad faith (Policy, Paragraph 4(a)(iii)).
The Panel has found that the domain name <lladro-retired.com> is confusingly similar to the LLADRO trademarks of the Complainants, 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 and 15, the Administrative Panel grants the remedy of cancellation requested by Complainants and requires that the registration of the domain name <lladro-retired.com> be CANCELLED.
Roberto A. Bianchi
Dated: November 28, 2000
1. See http://www.mihummel.com/index_reference.html
2. According with Royal Doultonґs official web page, "Royal Doulton is one of the world's leading manufacturers and distributors in the premium ceramic tabletop and collectables market. Its brands include Minton, Royal Albert, Caithness Glass, Holland Studio Craft and Royal Doulton itself. Annual sales are around Ј190m, of which over half are overseas in over 80 countries. Today, Royal Doulton employs around 6,000 people worldwide". See http://www.royal-doulton.com/company.html