WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Refinadora de Maнz Venezolana, C.A. ("REMAVENCA") and C.A. Promesa ("PROMESA") v. Jaime Renterнa
Case No. D2000-1814
1. The Parties
The complainants are Refinadora de Maнz Venezolana, C.A. ("REMAVENCA") and C.A. Promesa ("PROMESA"), both companies organized and existing under Venezuelan law, with an address at Centro Empresarial Polar, Direcciуn de Asuntos Legales, Cuarta Transversal de Los Cortijos de Lourdes, piso 4, Caracas, Venezuela (the "Complainants"). Both are represented in this proceeding by Mr. Victorino Mбrquez, 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, 1010, Venezuela (the "Respondent").
2. Domain Names and Registrar
The domain names at issue are <harina-pan.com>, <mazeite.com>, <procria.com>, <arrozprimor.com>, <mazorca.com>, <harinapromasa.com> and <ricarepa.com>, all seven 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. Receipt of the complaint was acknowledged by the Center on December 29, 2000. Following a notification of complaint deficiency by the Center of January 11, 2001, on January 12, 2001 the complaint was amended in electronic form, and on January 16, 2001, in hardcopy.
On January 10, 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 with the Policy, the Rules and WIPO’ Supplemental Rules.
There were no other submissions by 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 Complainants or included in the annexes to the complaint, and undisputed by the defaulting Respondent, are established:
REMAVENCA and PROMESA are part of Empresas Polar, a leading Venezuelan industrial conglomerate engaged in the beverage and food production business for over 70 years.
Both REMAVENCA and PROMESA have been using for several decades the following trademarks, on which the complaint is based, spending substantial sums in advertising the products identified by such marks throughout Venezuela, Central and South America:
P.A.N. Venezuela. Reg. No. 54-084- F. Holder is REMAVENCA. Renewal until March 14, 1998. The same mark, with same holder, has been registered also in Venezuela under Reg. No. I-7391 until May 29, 2004, covering food products. REMAVENCA is the holder of the U.S. registration No. 772,903, renewal for 20 years since July 7, 1984. The same applies to PAN (design) Reg. No. 817,088, for 20 years since October 18, 1986. The mark is held by REMAVENCA also in the Benelux countries, Reg. No. 437,557, valid until June 25, 2007. Renewal of "P.A.N. (and design)" has been applied in Nicaragua on April 30, 1990 under Reg. No. 11,684. Registration date is September 12, 1980. In Puerto Rico the trademark P.A.N. has also been registered on February 12, 1997. The registration of the trademark P.A.N. has also been evidenced for Panama, Portugal, Sweden, Netherlands and Ecuador.
MAZEITE. Held by PROMASA. Reg. No. I-13497/89. Registration date March, 29, 1994. For class 29. MAZEITE. Brazilian Register. Reg. No. 760233675. Renewal date: March 30, 1993. Trademark holder: REMAVENCA. Class: 29.40. MAZEITE. Aruba Trademark registry. Reg. No. 88090767. Valid until September 6, 1998. MAZEITE. Dutch Antilles Registry. Reg. No. 10881. Renewal on January 18, 1989 until January 17, 2009. Certificates of registration are also submitted from the following countries: Peru, Nicaragua, Spain, Panama and Ecuador.
PROCRIA. Venezuela. Reg. No. 57460-F. Holder: PROMASA. Renewal until April 6, 2000. Another certificate, Reg. No. 6821-D, has been renewed until
April 14, 2000.
PRIMOR (and design): Venezuela. Reg. No. 130.562-F. Holder: PROMASA. Reg. Date: September 21, 1987. Valid until September 21, 2002. Another certificate held by PROMASA shows Reg. No. 146.412, valid until April 8, 2007. Trademark certificates of Costa Rica, Trinidad and Tobago, Aruba, Ecuador, France, Puerto Rico, Peru, Portugal, Mexico, all of them with PROMASA as a trademark holder, have also been shown.
MAZORCA. Venezuela. Application No. 01-113417. Date cannot be read. Application beneficiary: REMAVENCA. Other certificates of registration for this mark have been provided: Jamaica, USA, Peru, Guatemala, Aruba, Trinidad and Tobago, all of them in force today and in the name of REMAVENCA.
PROMASA. Venezuela. Reg. No. 131.877-f. Valid until February 2003. Trademark holder: PROMASA. Registration and rights on the mark have been shown in U.K., Dutch Antilles, Benelux, Brazil (renewal expired in 1997), Bahamas, Peru (holder is REMAVENCA), Trinidad and Tobago (holder is PROMASA) USA (holder is ґPROMASA) and Spain (holder is PROMASA).
RICAREPA. Venezuela. Application of July 20, 1993. Holder is RICA AREPA, C.A.. Trademark certificates of registration of this mark in the name of RICA AREPA, C.A. have also been submitted: Dominican Republic, Trinidad and Tobago, Aruba, Dutch Antilles, El Salvador, Haiti and Honduras. These trademarks are in force.
Respondent recognized that Complainants are part of the group of companies known as Empresas Polar (Polar Enterprises) by addressing his June 28, 1999, June 28, 2000 and December 5, 2000 letters to "Empresas Polar", instead of addressing it to Complainants. In his June 28, 1999 letter, Respondent recognized the close relationship between the domain names at issue and Complainantsґ trademarks and trade names by stating that the domain names that Respondent was offering for sale were "originals to your company" (that is to say Complainants).
According with the NSI WHOIS database as seen on the hardcopies annexed to the complaint, Respondent registered the seven domain names at issue on June 17, 1999.
It has been evidenced that Complainantsґ trademark applications and registrations in Venezuela and elsewhere pre-date Respondent's domain name registrations.
It has been shown by Complainants and is undisputed that Respondent offered the domain names at issue for sale to Empresas Polar on 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> and <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 Complainants contend that:
The domain names <mazeite.com>; <procria.com>; <mazorca.com>; <harina-promasa.com> and <ricarepa.com> are identical to REMAVENCA`S registered trademarks MAZEITE, PROCRIA and PROMASA and to its unregistered trademark MAZORCA. The domain name <ricarepa.com> is identical to PROMESA’s unregistered trademark RICAREPA; <harina-pan.com> and <arrozprimor.com> are virtually identical or confusingly similar to REMAVENCA`S registered trademarks P.A.N. and PRIMOR.
Neither REMAVENCA nor PROMESA have licensed or given to the Respondent any express or implied authorization to use its trademarks. Respondent has not been commonly known by the domain names at issue. Nor there is evidence, before any notice to the Respondent of the dispute, of Respondentґs use of, or demonstrable preparations to use, any of the domain names or a name corresponding to any of the domain names in connection with a bona fide offering of goods and services. Respondent is not making legitimate non-commercial or fair use of the domain names.
The primary purpose of Respondent's domain names registrations in issue was to sell, rent or otherwise transfer them to the Complainant for valuable consideration in excess to the Respondent’s out-of-pocket costs directly related to the domain names. This fact is established by the letters addressed on
June 28, 1999; June 28, 2000 and December 5, 2000. Respondent has a pattern of conduct of registering multiple domain names which are identical or confusingly similar to famous and/or well known marks, as shown in relation to the domain names <bbcdelondres.com>; <bbcenespanol.com>; <bbcenespanol.net>; <bbceenespanol.org> in WIPO Case D2000-0050.
A search conducted under any of the domain names which are the subject of this dispute links the user with a virtual store named "Dominios 2000" which lists the 142 domain names that the Respondent has registered with the purpose of selling them. Most of those domain names are identical or confusingly similar to famous and/or well known marks in Venezuela and throughout the world. (e.g. <yahoo.venezuela.com> ; <cruzroja.com>; <disney-toys.com>; <cantvservicios.com>. Respondent is accumulating, collecting and hoarding numerous domain names of well known marks.
Respondent registered the domain names in dispute long after REMAVENCA`S and PROMESA`s marks had been in use and were incontestable. The significant goodwill and value of the marks owned by REMAVENCA was understood by the Respondent and undoubtedly is what prompted its registration of the identical or confusingly similar domain names. Respondent’s conduct prevents both REMAVENCA and PROMESA from promoting its own products in the WWW and from reflecting its marks in a corresponding domain name.
Other contentions of Complainants 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
The Complainants have satisfactorily proved their rights in the various trademarks in Venezuela and elsewhere, on which the complaint is based, and that the trademarksґ applications, registrations and use pre-date the registration of the domain names at issue. See 4 supra. A comparison between the domain names at issue and the Complainantsґ trademarks results in a finding of confusing similarity, as follows:
- <harina-pan.com> is confusingly similar to the P.A.N. trademark. The addition of the generic term "harina" ("flour" in English) only reinforces the association with the P.A.N. trademark.
- <mazeite.com> is identical to the MAZEITE trademark.
- <procria.com> is identical to the PROCRIA trademark.
- <arrozprimor.com> is confusingly similar to the PRIMOR trademark. The addition of the generic term "arroz" ("rice" in English) only reinforces the association with the PRIMOR trademark.
- <mazorca.com> is identical to the MAZORCA trademark.
- <harinapromasa.com> is confusingly similar to the PROMASA trademark. The addition of the generic term "harina" ("flour" in English) only reinforces the association with the PROMASA trademark.
- <ricarepa.com> is identical to the RICAREPA trademark.
Thus, Complainants have succeeded in showing that the first limb of the Policy is present (Policy, Paragraph 4(a)(i)).
Lack of Rights and Legitimate Interests
Complainants contend that Respondent lacks rights or legitimate interests 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 March 2, 2001 showing that the web sites <www.harina-pan.com>, <www.mazeite.com>, <www.procria.com> and <www.harinapromasa.com> resulted in the message: "You are not authorized to see this page", that is a HTTP 403 error. As to the web sites
<www.arrozprimor.com>, <www.mazorca.com> and <www. ricarepa.com>, the connection delivered the texts "the page cannot be shown" and "the server could not be found", a DNS-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 Complainants are 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 Empresas Polar (the business group controlling the Complainants) 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 Complainantsґ 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 name 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.
The Panel finds that Complainants have 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
Respondent also used the domain names at issue in that Respondent offered them for sale to EMPRESAS POLAR, the holding group, or owning or controlling company of Complainants. This offer for sale is 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.
Complainants have proved the 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 <harina-pan.com>, <mazeite.com>, <procria.com>, <arrozprimor.com>, <mazorca.com>, <harinapromasa.com> and <ricarepa.com> are identical or at least confusingly similar to Complainantsґ trademarks, 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 <harina-pan.com>, <mazeite.com>, <procria.com>, <arrozprimor.com>, <mazorca.com> and <harinapromasa.com> domain names be transferred to the Complainant Refinadora de Maнz Venezolana, C.A. ("REMAVENCA"), and that the registration of the <ricarepa.com> domain name be transferred to the Complainant C.A. Promesa ("PROMESA").
Roberto A. Bianchi