WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CERVECERIA POLAR LOS CORTIJOS, C.A. v. Jaime Renterнa
Case No. D2000-1812
1. The Parties
The complainant is CERVECERIA POLAR LOS CORTIJOS, C.A., a company organized and existing under the laws of the Bolivarian Republic of Venezuela, incorporated and having its principal place of business in Caracas (the "Complainant"). Its address is 2da Ave. de Los Cortijos de Lourdes, Edif. Centro Empresarial Polar, Caracas, Venezuela. It is represented in this proceeding by Mr. Juan Manuel Raffalli, Esq., Mr. Josй Manuel Ortega, Esq. and Mr. Ignacio Hellmund, Esq., of Caracas, Venezuela.
The respondent is Mr. Jaime Renterнa, an individual person who, according with the WHOIS database, has an address at Avenida Urdaneta, Esquina La Pelota, Edificio Plaza, Piso 2, Oficina 2-3, Caracas, DF 1010, Venezuela (the "Respondent").
2. Domain Names and Registrar
The domain names at issue are <empresaspolar.com>, <productospolar.com>, <productos-polar.com>, <cervezapolar.com> and <cerveza-polar.com>, all five registered with Network Solutions, Inc. ("NSI), of 505 Huntmar Park Drive, Herndon, Virginia, USA.
3. Procedural History
On December 26, 2000 a complaint according with the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") and its Rules was submitted to the WIPO Arbitration and Mediation Center (the "Center") in electronic format. On
January 4, 2001 the complaint was received in hard copy. On January 8, 2001 additional documents of annex 7 to the complaint were received. Receipt of the complaint was acknowledged by the Center on December 29, 2000. Following a notification of complaint deficiency by the Center of January 10, 2001, on
January 12, 2001 the complaint was amended in electronic form, and on
January 16, 2001, in hardcopy.
On January 8, 2001, at the Center's request of January 5, 2001, the registrar NSI confirmed that the domain names at issue were registered in the Respondent's name, as well as other record details.
On January 19, 2001 the amended complaint and the commencement of the administrative proceeding were notified by the Center to the Respondent. 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 failed to submit a response, the Center sent to Respondent a Notification of Respondent Default in electronic form on February 9, 2001.
After having received Roberto A. Bianchiґs Statement of Acceptance and Declaration of Impartiality and Independence, on February 19, 2001 the Center appointed him as a sole panelist. The scheduled decision date was
March 4, 2001. Thus, the Administrative Panel finds that it has been properly constituted.
On February 19, 2001 the case file was electronically transmitted to the Panel. The case file in hardcopy arrived at the panelist's office on February 23, 2001.
The Panel independently agrees with the Center's assessment of January 19, 2001 that the amended complaint is in formal compliance of the Policy, the Rules and WIPO’s Supplemental Rules.
There were no other submissions of the Parties. No orders were issued. There were no extensions.
The registration agreements between Respondent and NSI were executed in English. The complaint was submitted in English. The Panel, seeing no special circumstances to determine otherwise, decides that the proceeding shall continue in English (Rules, Paragraph 11).
4. Factual Background
The following facts and circumstances, contended by Complainant or included in the annexes to the complaint, and undisputed by the defaulting Respondent, are established:
Complainant was originally incorporated with the corporate name Cervecerнa Polar, C.A. Such corporate name was changed later into Cervecerнa Polar los Cortijos, C.A.
Complainant is the registered owner of the trademark "POLAR" in class 48 (Venezuelan classification for beer and malt beverages). In addition, Complainant is the registered owner and/or applicant of the trademark "POLAR" in classes 1, 2, 4, 5, 6, 7, 9, 10, 11, 12, 13, 16, 21, 22, 23, 24, 25, 28, 30, 31, 32, 35, 36, 38, 40, 41, 43, 45, 46, 47 and 49 in Venezuela. The POLAR trademark identifies beer and malt beverage products. Complainant is the registered owner of the "POLAR" trademark in many countries, including the United States of America (US class 48, international class 32, for beer and malt beverages), France (class 32, for beer and malt beverages), Spain (class 32, for beer products), Switzerland (class 32, for beer and malt beverages), Mexico (class 32, for beer and malt beverages), Colombia (class 32, for beer and malt beverages), Bolivia (classes 8 National and 32 International, for beer and malt beverages), Aruba (class 32, for malt beverages), Puerto Rico (class 32 , for beer and malt beverages) and Netherland Antilles (to distinguish beer products).
Complainant has exported its beer products to the United States of America, Italy and to Caribbean and South American countries.
Complainant has been producing these products since 1941, having obtained wide recognition both in Venezuela and abroad. The POLAR trademarks are currently some of the most settled and well-known trademarks in Venezuela. The Complainant’s beer products accounted for approximately 87% of the consumption of beer in Venezuela, and its malt beverage products account for 60% of the Venezuelan market, as of August 1998.
Complainant and other related companies (more than forty sister companies) constitute a group of companies gathered under a holding company called Empresas Polar, C.A. (which means Polar Enterprises). All the companies that are part of Empresas Polar, including the Complainant, Pepsi-Cola de Venezuela, C.A., formerly called Sociedad Productora de Refrescos y Sabores, C.A. (SOPRESA), and Productos Efe, S.A., share a number of administrative, distribution and marketing costs and expenses. It can be said that Empresas Polar (Polar Enterprises) is one of the largest private business groups in Venezuela.
Complainant is the registered owner of the trade names "EMPRESAS POLAR", "EMPRESAS POLAR DIVISION CERVECERA", "EMPRESAS POLAR DIVISION DE ALIMENTOS", "CONSORCIO POLAR", "GRUPO POLAR" and "ORGANIZACION POLAR" For many years, the EMPRESAS POLAR trade name has been regularly used by the group of companies that includes the Complainant for marketing purposes in Venezuelan television commercials.
Complainant is the registrant and owner of the following domain names: <empresas-polar.com>, <empresas-polar.net>, <empresas-polar.org>, <empresaspolar.net> and <empresaspolar.org>. In addition, Complainant is the registrant and owner of the domain names <cervezapolar.net>, <cerveza-polar.net>, <cervezapolar.org>, <cerveza-polar.org>. <maltin-polar.com>, <maltinpolar.net>, <maltin-polar.net>, <maltinpolar.org> and <maltin-polar.org>, which also include the word "Polar".
Respondent recognized that Complainant is part of the group of companies known as Empresas Polar (Polar Enterprises) (CERVECERIA POLAR LOS CORTIJOS, C.A.is part of a group of companies gathered under a holding company called Empresas Polar, C.A.) by addressing his June 28, 1999, June 28, 2000 and December 5, 2000 letters to "Empresas Polar", instead of addressing it to Cervecerнa Polar Los Cortijos, C.A. In his June 28, 1999 letter, Respondent recognized the close relationship between the domain names at issue and Complainant’s trademarks and trade names by stating to Complainant that the domain names that Respondent was offering for sale were "originals to your company" (that is to say Complainant).
According with the NSI WHOIS database as seen on the hardcopies annexed to the complaint, Respondent registered the <cerveza-polar.com>, <empresaspolar.com> and <cervezapolar.com> domain names on June 17, 1999. He registered <productospolar.com> on June 21, 1999 and <productos-polar.com> on June 28, 1999.
It has been evidenced by Complainant that POLAR trademark applications and registrations in Venezuela and elsewhere pre-date Respondent's domain name registrations.
It has been shown by Complainant and is undisputed that Respondent offered the domain names at issue for sale to Empresas Polar on the following occasions:
- Letter of June 28, 1999. First contact made by the Respondent with EMPRESAS POLAR, enclosing "...a list of the worldwide Internet domain names, original to your company, made available to you by our company". The Panel after reading the letter's original text in Spanish notes that the phrase "originales de su compañнa" has the meaning of "originally belonging to your company" or "originally owned by your company". Mr. Renterнa describes his own intentions towards EMPRESAS POLAR as "transparent". A list with the following 20 domain names is enclosed: <empresaspolar.com>, <productospolar.com>, <productos-polar.com>, <cervezapolar.com>, <cerveza-polar.com>, <saboresgolden.com>, <pomar.com>, <pomarreserva.com>, <pomar-reserva.com>, <bodegaspomar.com>, <bodegas-<pomar.com>, <harina-pan.com>, <harinapromasa.com>, <ricarepa.com>, <mazorca.com>, <heladosefe.com>, <helados-efe.com>, <mazeite.com>, <arrozprimor.com> y <procria.com>.
- Letter of June 28, 2000. A new letter where Respondent presents himself as responsible for a virtual store of Polar products on the Internet, demanding a price for all the domains, including the "virtual store", of US$ 580,000. The following list of domain names was enclosed: <empresaspolar.com>, <productospolar.com>, <cervezapolar.com>, <cerveza-polar.com>, <saboresgolden.com>, <pomarreserva.com>, <bodegaspomar.com>, <harina-pan.com>, <harinapromasa.com>, <ricarepa.com>, <mazorca.com>, <heladosefe.com>, <mazeite.com>, <arrozprimor.com>. According to Mr. Renterнa, these domain names have been re-directed to "virtual store". An e-mail from a Mr. Luis Alvarez E. was included, where an interest in buying rights over mazorca.com is shown.
- Letter of that same date, adding new domains to the offer and stating: "These domains, being of first order, such as the case of <pomar.com> and <procria.com>, are highly sought on the international market, making them commercially and strategically valuable for any company". The domain names are: <pomar.com>, <procria.com>,<productos-polar.com>, <pomar-reserva.com>, <bodegas-pomar.com> and <helados-efe.com>. Respondent concludes by offering a "special price of US$ 80,000" for the six domain names.
- Letter of December 5, 2000, in which a special "40 % - off discount" is now offered for the sale of all 20 domain names at a total amount of US$ 348,000 (US$ 17,400 for each domain name). The full list of the enclosure to the first letter is repeated.
The Panel notes that the amount required by Respondent for the sale of each domain name at issue far exceeds any thinkable out-of-pocket registration costs.
The domain name registration agreements provide by reference that Respondent submits to the ICANN Uniform Domain Name Dispute Resolution Policy (The "Policy"). The defaulting Respondent has not challenged the Panel's jurisdiction.
5. Parties’ Contentions
A) The Complainant
Complainant contends that all the domain names at issue use the word "Polar" and are identical or confusingly similar to Complainants’ trademarks, trade names, and registered domain names. Respondent has no rights or legitimate interests in respect of the domain names at issue. Complainant is the owner of the POLAR trademarks and EMPRESAS POLAR trade names and has given no license to Respondent for the use of any such trademarks or trade names, nor there is any kind of relationship between the Complainant and the Respondent which would give rise to any license, authorization, consent or permission for the Respondent to use the POLAR trademarks or the EMPRESAS POLAR trade names as they are used in the domain names at issue. Complainant did not authorize Respondent to register or apply for registration of such domain names. There is no business or commercial relationship of any nature between Complainant and Respondent. Respondent (whether as an individual, business or other organization) has never been commonly known as Empresas Polar, Productos Polar or Cerveza Polar. Respondent has no business whatsoever in connection to which the word Polar is used, nor does Respondent directly or indirectly manufacture any products identified with the word Polar.
In 1999 Respondent contacted Complainantґs legal counsel by telephone and offered for sale the domain names that he registered a couple of days earlier. Respondent's offer was declined by Complainant. Respondent's offer to sale the domain names was related to 20 domain names corresponding to trademarks owned by Complainant and its affiliate companies.
Respondent has registered many other domain names corresponding to third partiesґ marks such as cruz-roja.com, eteron.com, eteron.net, loteriadeoriente.com, loteriadecaracas.com, loteriadelzulia.com, prolicor.com, pro-licor.com, gacetahipica.com, etc. Respondent is the technical contact in the domain name registrations of tiorico.com (second largest ice cream producer in Venezuela) and meridianotv.com, a Venezuelan sports television network. Respondent registered cantvservicios.com and cantvservicios.net (name of the largest Venezuelan Internet access provider), disneylatina.com and disney-toys.com (names intended to capitalize on the value of Walt Disney’s trademarks). Additionally, Respondent was the respondent in WIPO Case D2000-0050 (related to four domain names).
Other contentions of Complainant are referred to in 4 and 6.
B) The Respondent
Respondent is in default. In case of a default, under Rules, Paragraph 14(a), the panel "shall proceed to a decision on the complaint", and under Paragraph 14(b) the panel "shall draw such inferences therefrom as it considers appropriate". Such provisions would indicate that the Complainantґs assertions are sufficient ground for the Panel to proceed to a default decision in its favor. However the Policy does not allow to extract such an automatic consequence, because "the complainant must prove that each of these three elements are present" (Policy, Paragraph 4(a) in fine).
6. Discussion and Findings
Identity or Confusing Similarity
Complainant has satisfactorily proved its rights in the POLAR marks in Venezuela and elsewhere, and that the POLAR trademarks applications and registrations pre-date the registration of the domain names at issue. See 4 supra. A comparison between the domain names at issue and the POLAR trademarks results in a finding of confusing similarity. The addition of the CERVEZA, PRODUCTOS or EMPRESAS terms in the domain names at issue does not significantly distinguish them from the POLAR marks, because "CERVEZA" means "beer", "PRODUCTOS" means "products" and "EMPRESAS" means "companies" or "businesses". Such words are generic of common-use terms that reinforce, by association, the impression of confusion with Complainantґs mark.
Thus, Complainant has succeeded in showing that the first limb of the Policy is present (Policy, Paragraph 4(a)(i)).
Lack of Rights and Legitimate Interests
Complainant contends that Respondent lacks rights or legitimate interest in the domain names. 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), or the consequences that a panel may extract from its default (Policy, Paragraph 14). In particular, Respondent has failed to contend that any of the circumstances described in Policy, Paragraph 4(c) - or any other circumstance - is present in its favor.
An independent connection to the Web by this acting panelist was conducted on February 27, 2001 showing that the web sites www.productos-polar.com, www.cervezapolar.com and www.cerveza-polar.com delivered the texts "the page cannot be shown" and "the server could not be found", a DNS-error; the web sites www.productospolar.com and www.empresaspolar.com resulted in a message: "You are not authorized to see this page", that is a HTTP 403 error.
This means that for all practical purposes the web sites under the domain names at issue are not being used, or that Respondent is not providing access to the corresponding web pages to any Internet user. Whatever the reason, this lack of use does not allow, by Respondent's default, to conclude anything favorable to Respondent, particularly in relation to the Policy, Paragraphs 4(c)(i) or 4(c)(iii). Nor has the defaulting Respondent stated that he is "commonly known" by the domain names (Policy, Paragraph 4(c)(ii)), an allegation that would anyway have been fruitless since there is no connection whatsoever between the domain names and the name of the registrant-Respondent
Mr. Javier Renterнa.
The Panel finds that Complainant is right that Respondent lacks rights or legitimate interests in the domain names (Policy, Paragraph 4(a)(ii)).
Registration in Bad Faith
It has been sufficiently evidenced that Respondent offered the domain names for sale to Complainant and Empresas Polar for an amount by far exceeding out-of-pocket costs connected with the registration of the domain names.
Having in mind that Respondent lacks any rights or legitimate interests in the domain names, this offer is self-explanatory that the primary purpose of Respondent at the time of registration was to obtain an illegitimate, huge profit at Complainantґs cost, which is the circumstance of bad faith registration described in Policy, Paragraph 4(b)(i) stating:
"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".
As pointed out in the complaint, Mr. Renterнa was the respondent in WIPO Case D2000-0050 The British Broadcasting Corporation v. Jaime Renteria, March 23, 2000 (the disputed domain names were <bbcdelondres.com>, <bbcenespanol.com>, <bbcenespanol.net> and<bbcenespanol.org>). In that case the learned panelist found that "bad faith registration and use is established by the fact that the Respondent offered to sell the domain name as part of a package of domain names for US$ 75,000", and a decision of transfer to the complainant was rendered. Respondent's conduct is nearly the same in the present case.
The Panel cannot overlook the fact that Mr. Renterнa is the registrant-respondent in the following WIPO Cases:
- D2000-1808 (<pomar.com>, <bodegaspomar.com>, <bodegas-pomar.com>, <pomarreserva.com> and <pomar-reserva.com>),
- D2000-1810 (<heladosefe.com> and <helados-efe.com>,
- D2000-1811 (<saboresgolden.com>),
- D2000-1812 (<empresaspolar.com>, <productospolar.com>, <productos-polar.com>, <cervezapolar.com> and <cerveza-polar.com>), and
- D2000-1814 (<harina-pan.com>, <mazeite.com>, <procria.com>, <arrozprimor.com>, <mazorca.com>, <harinapromasa.com> and <ricarepa.com>).
The five cases are presently under examination by this acting panelist. Although the cases are independent, in each one of them a finding of identity/confusing similarity, lack of Respondent's rights or legitimate interests in the domain names, bad faith registration and bad faith use has been made by the Panel. In all these cases the Panel honors the complaints by granting the remedy of transfer of the domain names registrations to the complainant. The aggregate number of domain names disputed in the five cases, registered by Mr. Renterнa and reflecting marks owned by third parties belonging to or controlled by EMPRESAS POLAR amounts to twenty.
All this shows that Mr. Renterнa has specially aimed at the EMPRESAS POLAR group in attempting to illegitimately extract a huge profit at selling the domain names. Together with the domain names challenged in the BBC case, Mr. Renterнasґs registrations of third partiesґ trademarks as domain names amount at least to twenty-four. Although Mr. Renterнa may have engaged in a "pattern of such conduct" in relation to other domain names and marks, in the present case he has apparently not incurred in the circumstance of bad faith registration described in Policy, Paragraph 4(b)(ii) (i.e. he has not prevented Complainant to reflect "the mark in a corresponding domain name"). The mark on which the complaint is based is POLAR, and not some other mark that exactly corresponds to any of the domain names at issue.
In any case the Panel finds that Complainant has succeeded in proving that Respondent registered the domain names in bad faith (Policy, Paragraphs 4(b)(i) and 4(a)(iii)).
Use in Bad Faith
It is uncontested that Respondent activated one or more web sites at the URL "http:\\www.empresaspolar.com", "http:\\www.productospolar.com", "http:\\www.productos-polar.com", "http:\\www.cervezapolar.com" and/or "http:\\www.cerveza-polar.com" from which it offered for sale Complainant’s products. In his letter of June 28, 2000 Respondent recognized the activation of those web sites without Complainant’s consent.
At so doing, Respondent used the domain names at issue to attempt to attract internet users to its web site for commercial gain, by creating a likelihood of confusion with Complainant’s POLAR trademark, EMPRESAS POLAR trade name, and with the empresas-polar.com, empresas-polar.net, empresas-polar.org, empresaspolar.net, empresaspolar.org, cervezapolar.net, cerveza-polar.net, cervezapolar.org, cerveza-polar.org domain names and http:\\www.empresas-polar.com web site, as to the source, sponsorship, affiliation and/or endorsement of Respondent’s web site. Respondent’s web site misled and induced Internet users into thinking that his web site was administered, promoted, sponsored or endorsed by Complainant. In the web site referred to above Respondent used the registered trade symbols and logos of Complainant and other companies that are part of Empresas Polar (Polar Enterprises).
This publication has apparently ceased at present but Respondent's conduct is sufficient to establish that Respondent incurred in the circumstance of bad faith use as described in Policy, Paragraph 4(b)(iv), stating:
"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."
In addition, Respondent also used the domain names at issue in that Respondent offered them for sale to Complainant and to its owning or controlling company, EMPRESAS POLAR. The Panel is satisfied by Complainantґs allegation, uncontested by Respondent, that the offer for sale is also an use in bad faith of the domain names by Respondent. See WIPO Cases D99-0001 World Wrestling Federation v. Michael Bosman, January 14, 2000, and D00-0001 Robert Ellenbogen v. Mike Pearson, February 2000, D2000-0050 (where Mr. Renterнa is the respondent) and many other WIPO decisions where an offer for sale was found to be a bad faith use of the domain name.
Complainant has succeeded in proving bad faith use of the domain names at issue (Policy, Paragraph 4(a)(iii)).
Mr. Renterнaґs domain name registrations and offer for sale is typical cybersquatting and abuse of the sort disallowed by the Policy.
The Panel has found that the domain names at issue are confusingly similar to Complainantґs trademark, that Respondent lacks rights or legitimate interests in said domain names, and that the domain names were registered and are being used in bad faith.
Therefore, pursuant to Policy, Paragraph 4(i) and Rules, Paragraphs 14 and 15, the Panel requires that the registrations of the <empresaspolar.com>, <productospolar.com>, <productos-polar.com>, <cervezapolar.com> and <cerveza-polar.com> domain names be transferred to the Complainant CERVECERIA POLAR LOS CORTIJOS, C.A..
Roberto A. Bianchi