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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Puratos S.A. v. Ignacio Dominguez and domainstosell
Case No. D2000-1579
1. The Parties
The Complainant is Puratos S.A. with registered offices at Industrialaan 25, Zone Maalbeek, 1702 Groot-Bijgaarden, Belgium.
The Respondents are domainstosell, j vbn, Le nueve, Reston, NJ 08034, U.S.A., and Mr. Ignacio Dominguez, 852 NW 45 th, St Pompano Beach, FL 33064, U.S.A.
2. The Domain Name and Registrar
The domain name at issue ("the Domain Name") is: <puratos.net>.
The Registrar of the Domain Name is register.com, Domain Registrar, 575 8th Avenue, 11th Floor, New York, NY 10018, U.S.A.
3. Procedural History
On November 16, 2000, the Complainant filed a complaint (hereinafter the "Complaint") with the WIPO Arbitration and Mediation Center (hereinafter the "Center") and on December 5, 2000 an amendment to the Complaint. The Center acknowledged receipt of the Complaint to the Domain Registrar and to the Respondents by e-mail. On November 24, 2000, the Center informed the Registrar, register.com, that a Complaint had been submitted to the Center regarding the Domain Name <puratos.net>. On November 30, 2000, the Registrar confirmed that the Domain Name had been registered via the Registrar's registration services. Whereas the Who is database shows "j vbn" as the holder of the Domain Name, Register.com pointed out that they consider Mr. Ignacio Dominguez as the registrant pursuant to their records. According to the Registrar, discrepancies between the Who is database and their records may be possible, since customers have an online utility that allows them to modify their domain name registration directly. A valid change can, however, only be carried out by filling out the appropriate registrant transfer form, which was not done in the present case.
The Center then proceeded to verify that the Complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the "ICANN Rules") and the World Intellectual Property Organisation Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the "WIPO Rules") including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on December 1, 2000.
The undersigned has reviewed the documentary evidence provided by the Parties and the Center and agrees with the Center's assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
In a letter dated December 11, 2000, the Center informed the Respondents of the commencement of the proceedings as of December 11, 2000 and of sub-section 5 (a) of the ICANN Rules which grants the Respondents 20 days to respond to the Complaint.
In a letter of January 11, 2001, the Center informed the Respondents that they were in default pursuant to the ICANN Rules and the WIPO Rules and that an administrative panel would be appointed based on the number of panelists designated by the Complainant. As the Complainant had designated a single member administrative panel, the Center informed the Respondents that it would appoint the panelist from its published list.
By letter of January 22, 2001, the Center informed the Parties that it had appointed the undersigned as single panelist for the proceedings. The undersigned issued a statement of acceptance and declaration of impartiality and independence.
No further submissions have been received formally by the panel from either Party since its formation. The decision is to be rendered in the English language and the panel is unaware of any other proceedings which may have been undertaken by the Parties or others in the present matter.
4. Factual Background
The Complainant is a producer and supplier of bread, pastry and other food products, as well as substances and ingredients for the manufacturing of bread, pastry and other food products. It has been founded in 1919 in Brussels, Belgium, continuously growing to one of the leading producers in this field. The Complainant indicates that the Puratos Group employs nowadays more than 4200 people in more than 100 companies with 58 factories, being present in more than 100 countries. Complainant submits a list of various Puratos trademark registrations in a large number of countries (Exhibit 6). By way of illustration Complainant submits copies of the following trademark registrations:
- the Benelux trademark registration for the verbal mark Puratos registered under number 010504 for the products of classes 1 and 30 filed on April 7, 1922 and renewed until May 24, 2002 (Exhibit 7);
- the Brazilian trademark registration for the verbal mark Puratos registered under number 007006802 for the products of the classes 32.10 and 32.20 on October 10, 1979 and renewed until October 10, 2009 (Exhibit 8);
- the Danish trademark registration for the verbal mark Puratos registered under number VR1990 07657 for the products of class 1 on November 30, 1990 until November 30, 2010 (Exhibit 9).
Pursuant to Complainant's indication the designation Puratos has been used in the United States since August 19, 1980, when the Puratos Corporation was incorporated. It thereby acquired common law trademark rights on "Puratos" at the latest at this date.
As evidenced by Exhibit 10, Complainant used the disputed Domain Name as well as the domain name <puratos.com> in its advertising campaigns and on its catalogues distributed in the United States.
From an internal e-mail dated May 5, 2000 (Exhibit 11), the panel derives the fact that the registration of the Domain Name <puratos.net> elapsed by one of Complainant's employees' inadvertence before it could be renewed. This omission gave the opportunity to Respondents to register the Domain Name for their purposes.
As pointed out above (3.), the registration shown in the Who is database and the real registrant indicated by the Registrar are different. For the purpose of these proceedings and in view of Complainant's amendment to the Complaint dated December 5, 2000, the panel considers domainstosell as well as Mr. Ignacio Dominguez as the Respondents. In this context, the panel has also taken notice of Complainant's submissions regarding Respondent domainstosell's doubtful identity and non-existent address (Exhibits 14 and 15).
According to the Who is database, the Respondents registered the Domain Name <puratos.net> on February 28, 2000.
When Complainant submitted its Complaint on November 16, 2000, Respondents' homepage linked to the address <puratos.net> displayed a large picture of French baguettes in baskets made of wicker, making therefore allusion to the kind of picture Complainant placed on its own website located at www.puratos.com (Exhibit 12). Respondents' website has meanwhile been changed and displays the sentence "Puratos is derived from purity". The web page further indicates: "This web site will be committed to facilitate information to consumers worldwide and we will work toward offering those consumers public information about the products that have been prohibited on the market because of their lack of purity … Coming soon".
In an e-mail from Respondents to an employee of Complainant dated July 23, 2000 (Exhibit 13), Respondents are declaring the following: "(…) As we understand you are interested in buying the domain name mentioned and we will be very happy to do business with you in that regard. This domain name has been demanded several times along the past few weeks although its rights have not been transferred yet. At this time there are two other organisations that have contacted us about the possibility of acquiring this domain at the price of USD 5,000. We know how important this name is for your business strategy, therefore, if you think you could match this price please contact us as soon as possible and we will transfer it to you without further dealings. (…)"
5. Parties Contentions
The Complainant alleges that the Domain Name is identical to the Puratos trademark. It points out that Respondents have no rights or legitimate interests in respect of the Domain Name and that Complainant has not licensed or otherwise permitted Respondents to use its trademark. Furthermore, Respondents never made any use of the Domain Name in connection with a bona fide offering of goods or services and have never been commonly known by the Domain Name. According to Complainant, Respondents knowingly chose a name which is identical and limited to the trademark of Complainant, which constitutes an element of bad faith. Complainant further asserts that Respondents used the Domain Name in bad faith refusing to transfer the Domain Name for reasonable out-of-pocket costs, by hindering Complainant to reflect its trademark Puratos in the Domain Name and by hiding its real identity behind a non-existing address.
The Respondents have failed to file a response with the Center.
6. Discussion and Findings
Pursuant to the Uniform Domain Name Dispute Resolution Policy (hereinafter the "ICANN Policy"), the complainant must convince the panel of three elements if it wishes to have the domain name transferred. It is incumbent on the complainant to show:
1. that the domain name is identical or confusingly similar to a trademark in which the complainant holds rights;
2. that the respondent has no legitimate rights or interests in the domain name, and
3. that the domain name was registered and used in bad faith.
6.1 Identical or Confusingly Similar to a Trademark
The Complainant has met the burden of proof as established by paragraph 4 (a) (i) of the ICANN Policy regarding identical or confusingly similar trademarks. Indeed, there is no doubt that the Domain Name is identical to the trademark Puratos registered in various countries.
6.2 No Rights or Interests
Paragraph 4 (a) (ii) of the ICANN Policy refers to the question whether or not the Respondent has any rights or legitimate interests vested in the domain name. Paragraph 4 (c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the domain names in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the domain names; and (iii) legitimate non-commercial or fair use of the domain names.
The panel is of the opinion that the Respondents have failed to establish a legitimate right or interest under paragraph 4 (c) (ii) and (iii). There is no evidence that the Respondents are commonly known by the Domain Name nor is there any evidence that the Respondents make a legitimate non-commercial or fair use of the Domain Name. Additionally, the Respondents are not licensees of Complainant nor have they received any permission or consent to use the mark <puratos.net>. The Complainant has prior rights in that trademark which precede Respondents' registration of the Domain Name. Furthermore, the Respondents are not (either as an individual, business, or other organisation) commonly known by the name Puratos.
In view of the fact that Respondents are offering the Domain Name for sale via their website, they have failed to demonstrate the existence of the use of, or preparation to use, the Domain Name in connection with a bona fide offering of goods or services. The panel hereby adheres to the decision rendered in Libro AG v. N.A. Global Link Limited, Case D2000-0186, where the panel found that the mere speculation in generic domain names without showing any demonstrable evidence of plans for a bona fide use is not sufficient to prove legitimate interest in a domain name. This is even more applicable in the present case, where Respondents did not register a generic term but a particular, well-known trademark as a Domain Name. The fact that Respondents made allusion on their present web page to an offering of services regarding public information about "products prohibited on the market" because of "their lack of purity" is not credible. Indeed, this text has been added after introduction of the present administrative proceedings, showing that Respondents try to give the impression that they intend to use the site for a bona fide offering of services.
6.3 Bad faith
According to paragraph 4 (a) (iii) of the ICANN Policy, it is incumbent on the Complainant to prove that the respondent has registered and is using the domain name in bad faith. The panel is of the opinion that the circumstances indicate clearly that the Respondents registered the Domain Name primarily for the purpose of selling its registration to the Complainant or to a competitor of the Complainant for valuable consideration in excess of out-of-pocket costs directly related to the Domain Name. This is shown by Respondents' e-mail dated July 23, 2000, where they tried to sell the Domain Name at a price of USD 5,000, which is clearly in excess of reasonable out-of-pocket expenses (see, for instance, National Westminster Bank plc v. Purge I.T. and Purge I.T. Ltd, Case D2000-0636, at page 4).
Therefore, the undersigned is of the opinion that there are adequate grounds for a finding that the Respondents registered the Domain Name in bad faith. The undersigned is also of the opinion that the Respondents knew very well the products and services sold by Complainant under its trademark Puratos. The picture on Respondents' first web page displaying French baguettes in a basket is evidence that Respondents were aware of the notoriety of Complainant's mark. The undersigned is of the opinion that this shows some degree of opportunistic bad faith on behalf of the Respondents in both registration and use.
For the foregoing reasons, the panel concludes and decides that
(i) the Domain Name registered by Respondents is identical to the trademark in which the Complainant has rights;
(ii) the Respondents have no rights or legitimate interests in respect of the Domain Name;
(iii) the Domain Name has been registered and is being used by the Respondents in bad faith;
(iv) the Domain Name <puratos.net> shall be transferred to the Complainant.
Dr. Thomas Legler
Dated: February 5, 2001