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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL
DECISION
Eroski, S. Coop. v. Getdomains Ishowflat Limited
Case No. D2003-0209
1. The Parties
The Complainant is Eroski,
S. Coop., Vizcaya - Spain (the "Complainant") represented by Mr. Iñaki Bolinaga.
The Respondent is Getdomains
Ishowflat Limited, of Sheung Wan, Taiwan, Province of China (the "Respondent").
2. The Domain Name and
Registrar
The domain name at issue
is <vistobueno.com>, (the "domain name") registered with Tucows
Inc., a corporation with head office at 96 Mowat Avenue, Toronto, Ontario M6K
3M1, Canada (the "Registrar").
3. Procedural History
On March 17, 2003,
a Complaint without indicating a date was submitted by e-mail to the WIPO Arbitration
and Mediation Center (the "Center"). The submission was made 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").
On March 19, 2003, The Center acknowledged receipt of the Complaint,
and issued a notice of allowance to prosecution, provided the satisfaction of
formal requirements contained in the Policy and Rules, and assigned corresponding
case Number: D2003-0209 and Case Manager.
On March 19, 2003,
The Center notified the registrar on record, namebay.com, that the Complaint
was filed by Complainant, against Antonio Acuña, and that it would
concern the domain name. A request was made to namebay.com, in conformance with
the Rules and Policy, to indicate receipt of the Complaint, and to confirm that
Antonio Acuña registered the domain name with namebay.com, among
others. On March 25, 2003, and after three reminders, namebay.com
responded by informing that the domain name registration was transferred to
Tucows (The "Registrar").
On March 25, 2003,
The Center notified to the Registrar about the filing of the Complaint against
Mr. Antonio Acuña, in the same terms as it did to namebay.com.
A request for information was made as well as for the locking up of the domain
name.
On March 25, 2003,
Registrar responded to the Center by confirming, among others, that the domain
name was indeed registered with Registrar and that the current registrant thereof
was Getdomains Ishowflat Limited as a result of a transfer. From the communication
it was obtained that the transfer was made on the same date. The pertinent information
to identify the registrant, now Respondent was submitted and the domain name
was locked as per order of the Center.
On March 26, 2003,
The Center informed Complainant about the current names of the registrant, now
Respondent, and of Registrar. The Center made a Complaint Deficiency Notification
to Complainant, requesting the modification of the Complaint by March 31, 2003.
On March 31, 2003,
Complainant filed the Complaint with the modification that the Center had requested.
On April 26, 2003, the Center sent in Spanish, a Notification of
Complaint and Commencement of Administrative Proceeding, in case No.
D2003-0209, to the Respondent. The Center established May 15 as the deadline
for the submission of response to the WIPO Center and the Complainant.
On May 5, 2003,
Respondent sent an e-mail to the Center asking for a copy of the Complaint in
the English language and on the same date, the Center informed to the Complainant
that, as per request of Respondent, and in accordance with the Policy and Rules,
the Complaint had to be translated from Spanish into English, for submission
on May 23, 2003. Complainant made a timely filing of the translated
Complaint.
On June 11, 2003,
the Center sent a new Notification of Complaint and Commencement of Proceeding
to the Respondent, this time in English. The Center marked July 1, 2003,
as the deadline for the submission of a response to the WIPO Center and the
Complainant.
The Notification of the
Complaint included following paragraph:
"6. Default.
If your Response is not sent by the above date or we have not received any required
payment from you by that 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."
On July 1, 2003,
the Center sent a Notification of Respondent Default to the Parties by e-mail.
After having received Luis C. Schmidt’s
Statement of Acceptance and Declaration of Impartiality and Independence, the
Center appointed him as a Sole Panelist. The decision date was scheduled for
July 28, 2003. Thus, the Administrative Panel finds that it has been
properly constituted.
The Panel sharing the assessment
of the Center 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 duly notified
Complaint to the Respondent, pursuant to Rules, paragraph 2(a), and that
the Notification of Respondent Default was also properly notified.
There were no extensions
granted or orders issued.
The registration agreement
for the domain name at issue has been written and executed in English by Respondent-Registrant
Getdomains Ishowflat Limited and the Registrar. The Complainant has submitted
its Complaint without any observation. By undertaking that there are no special
circumstances to determine otherwise, as provided in Rule paragraph 11,
the language of this proceeding is English.
4. Factual Background
After Complainant’s assertions, supported by the documents enclosed as annex,
all of them undisputed by Respondent – as having defaulted to the Complaint
– and after proper verification conducted at the database of the Spanish Trademark
Office by the Panel itself, based on the discretional powers conferred upon
this latter, in accordance with the article 10a) of the Regulation, applicable
to the present matter, supported by precedents such as D2000-0076,
the Panel finds that the Complainant owns the following trademarks registered
in Spain:
Number
|
Date of Grant |
Name
|
Class
|
2.141.971 |
|
VISTO
BUENO |
22. |
2.141.976 |
|
VISTO
BUENO |
23. |
2.141.977 |
|
VISTO
BUENO |
24. |
2.141.978 |
|
VISTO
BUENO |
25. |
2.141.979 |
|
VISTO
BUENO |
26. |
2.141.980 |
|
VISTO
BUENO |
27. |
2.164.895 |
|
VISTO
BUENO (word and device) |
22. |
2.164.896 |
|
VISTO
BUENO (word and device) |
23. |
2.164.897 |
|
VISTO
BUENO (word and device) |
24. |
2.164.898 |
|
VISTO
BUENO (word and device) |
25 |
2.164.899 |
|
VISTO
BUENO (word and device) |
26 |
2.164.900 |
|
VISTO
BUENO (word and device) |
27 |
2.416.465 |
|
VISTO
BUENO (word and device) |
1 |
2.416.466 |
|
VISTO
BUENO (word and device) |
2 |
2.416.467 |
|
VISTO
BUENO (word and device) |
3 |
2.416.468 |
|
VISTO
BUENO (word and device) |
4 |
2.416.469 |
|
VISTO
BUENO (word and device) |
5 |
2.416.470 |
|
VISTO
BUENO (word and device) |
6 |
2.416.471 |
|
VISTO
BUENO (word and device) |
7 |
2.416.472 |
|
VISTO
BUENO (word and device) |
8 |
2.416.473 |
|
VISTO
BUENO (word and device) |
9 |
2.416.474 |
|
VISTO
BUENO (word and device) |
10
|
2.416.475 |
|
VISTO
BUENO (word and device) |
11 |
2.416.476 |
|
VISTO
BUENO (word and device) |
12
|
2.416.477 |
|
VISTO
BUENO (word and device) |
13 |
2.416.478 |
|
VISTO
BUENO (word and device) |
14 |
2.416.479 |
|
VISTO
BUENO (word and device) |
15 |
2.416.480 |
|
VISTO
BUENO (word and device) |
16 |
2.416.481 |
|
VISTO
BUENO (word and device) |
17 |
2.416.482 |
|
VISTO
BUENO (word and device) |
18 |
2.416.483 |
|
VISTO
BUENO (word and device) |
19 |
2.416.484 |
|
VISTO
BUENO (word and device) |
20 |
2.416.485 |
|
VISTO
BUENO (word and device) |
21 |
2.416.486 |
|
VISTO
BUENO (word and device) |
28 |
2.416.487 |
|
VISTO
BUENO (word and device) |
29 |
2.416.488 |
|
VISTO
BUENO (word and device) |
30 |
2.416.489 |
|
VISTO
BUENO (word and device) |
31 |
2.416.490 |
|
VISTO
BUENO (word and device) |
32 |
2.416.491 |
|
VISTO
BUENO (word and device) |
33 |
2.416.492 |
|
VISTO
BUENO (word and device) |
34 |
2.416.493 |
|
VISTO
BUENO (word and device) |
35 |
2.416.494 |
|
VISTO
BUENO (word and device) |
36 |
2.416.495 |
|
VISTO
BUENO (word and device) |
37 |
2.416.496 |
|
VISTO
BUENO (word and device) |
38 |
2.416.497 |
|
VISTO
BUENO (word and device) |
39 |
2.416.498 |
|
VISTO
BUENO (word and device) |
40 |
2.416.499 |
|
VISTO
BUENO (word and device) |
41 |
2.416.500 |
|
VISTO
BUENO (word and device) |
42 |
Complainant, Eroski, S. Coop., is a company doing business
in the field of product distribution and commercialization in Spain, having
hypermarket and super-market facilities all over that country. It was set-up
in the spring of 1969, from the integration of ten corporative entities of Vizcaya
and Guipuzcoa. The Corporation grew and in 1970, the name was changed to
Eroski, S. Coop. as it is presently called.
From consulting websites, as it would be "fundaciongrupoeroski.es"
and "eroski.es," Grupo Eroski (Eroski Group) can be perceived,
as an entity controlling a number of businesses and trademarks. Vistobueno is
among the listed trademarks, as applied in connection with textile and clothing
products that are sold throughout the chain of stores that the company owns.
Mr. Antonio Acuña, registered the domain name
presumably on December 2, 2001, in conformance with the documentation
submitted by the Complainant and searches conducted by the Panel at its discretion,
at the WHOIS database of Network Solutions, Inc.
On November 2002, before the Complaint was filed, someone
anonymous contacted the Complainant seeking the negotiation of the domain name.
No particular amount of money was requested. However, the domain name was offered
to Complainant at a "very competitive price." On a later communication,
Mr. Antonio Acuña asked Complainant to transfer the four domains
that it possessed for vistobueno or the purchase of <vistobueno.com>.
The reason given was that in the view of Mr. Acuña, it was better
of that the five domains be in the name of one single party. Complainant did
not follow any dialog or exchange of correspondence, whether by mail or other
wise.
In accordance with the documentation filed by the Complainant,
which Respondent did not contend as having defaulted, as well as the search
that the Center made, it was found that the domain name was transmitted to the
Respondent at the address given above. The date of transfer appears to be March 25, 2003.
That can be obtained from information that the Registrar sent to the Center,
via mail, on that same date. Previous to that, on March 19, 2003,
the Center had notified the Complaint to the former Registrar, namebay.com who
despite of three reminders, did not respond until March 25, 2003,
informing that the domain name had been transferred to another Registrar and
that it was no longer responsible for its care. Namebay.com did not explain
to the Center the reason why it acknowledged receipt on the date of the transfer,
when the notice from the Center was received before that.
On March 18, 2003, that is, one day after the Complaint
was filed, Mr. Acuña sent a new notice to Complainant suggesting
a deal.
From the information obtained by consulting records and from
further searches, it could be perceived that the original owner of the domain
name has been involved in at least one other UDRP proceeding, having lost <cajamediterraneo.com>
and <cajamediterrano.net> to Caja de Ahorros del Mediterraneo, a Spanish
financial corporation.
Moreover, from inquiries made by using searching tools such
as Yahoo.com, it could be obtained that Getdomains is not listed as a company
in Taiwan, and that the address and telephone numbers that were provided to
Registrar are wrong. In particular, it appears to be no address listed as Shun
Tak Centre in Taiwan, as it rather takes the searcher to Hong Kong. From the
foregoing it can be presumed that Respondent does not exist, and the original
holder of the domain name, Mr. Antonio Acuña, to hide and thus
avoid being sued, very well could have employed it.
There is actually no site that can be accessed under domain
name <vistobueno.com> or there is no indication that it could have been
routed.
After the Complainant’s assertions – not disputed by Respondent
because of the default – and the confirmation sent by the Registrar to the WIPO
Center, it has been demonstrated that the Respondent has registered the domain
name with Tucows, Inc.
5. Parties’ Contentions
5.1 Complainant
The Complainant asserts
that:
• The domain name at issue
is identical to the trademark on which the Complainant has rights; and the Respondent
has no rights or legitimate interests in respect of the domain name; and that
it was registered and is being used in bad faith.
• The Complainant’s trademark
VISTOBUENO, identifies a famous and/or renowned brand of clothing/fashion all
over Spain. In accordance with the statements of Complainant, VISTOBUENO products
are widely advertised nationally. VISTOBUENO is apparently a very famous trademark
in Spain, although Complainant and did not provide persuasive evidence on this
regard. The Complainant has vigorously registered its intellectual property
rights in all trademark classes, with complete success. Indeed, there is no
other individual or corporation than the Complainant holding trademark rights
on VISTOBUENO in Spain, at least in connection with textile products, and certainly
the Respondent holds no rights whatsoever on the mark.
• There is no doubt about
the lack of any legitimate intellectual property right of the Respondent to
those marks, and proof of the Respondent’s bad faith in registering and using
the domain name (paragraph 3(c) of the Policy). Complainant argued that from
consulting the Spanish Trademark Office or the Business Registration Office,
it could not be obtained that nobody, excepting the Complainant itself, holds
rights over the domain name. In addition, it purported that from the unsolicited
offer to sell received from the former holder of the domain name, Respondent
acted in bad faith.
• The original registrant
resides in Spain and is most probably a Spanish citizen. Therefore, he is a
resident within the geographical area where VISTOBUENO products are sold and
publicized in the media. Said products can be obtained indeed, in the province
and place of residence (in Seville, there are located at least four stores selling
the products).
• The former owner transferred
the domain name after the Complaint was filed. This could not be inferred as
a coincidence and can be contended as a fraud.
• That the Complaint had
to be modified as it was originally entertained against Mr. Acuña.
The foregoing was made due to the fraudulent transfer of the domain name to
Respondent made shortly after the filing of the Complaint. Likewise, it was
in bad faith that Mr. Acuña sent a new offer one day after the Complaint
was filed, knowing to this fact, and then changed the information about the
holder.
• The Complainant requests
the Administrative Panel to issue a decision that the contested domain name
must be transferred to the Complainant.
• The Complainant agrees,
with respect to any action that Respondent may bring against decisions of the
Administrative Panel that it would stick to the jurisdiction of the courts in
Spain.
5.2 Respondent
The Respondent has not
submitted a response, and therefore is in default. After the Notification of
Respondent Default, it has not made any submissions whatsoever.
6. Discussion and Findings
6.1 Effects of Respondent
Default
Respondent was required
to give an answer to the Complaint as filed by the Complainant. According with
Rules, paragraph 5(b)(i) "(t) he response shall (...) (r) espond
specifically to the statements and allegations contained in the complaint and
include any and all bases for the Respondent (domain-name holder) to retain
registration and use of the disputed domain name (...)."
Under the Rules, and in
particular 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."
In line with the foregoing,
any defaulting response would indicate that the assertions that the Complainant
raised would give sufficient grounds to a default decision in the favor of this
latter. However, under the Policy the defaulting response still needs to be
qualified, because "the complainant must prove that each of these three
elements are present." Policy, paragraph 4(a) in fine.
6.2 Independent Connection
with the Website of Respondent
As concluded in Case D2000-0076, the
Panel considers that under Paragraph 10(a) of the Rules, the Panel has
the power to independently search over the Internet, in order to obtain as much
information as required to render a decision.
The Panel visited the "www.vistobueno.com"
website of the Respondent. The address did not lead to an active website.
6.3 Identity or Confusing
Similarity
The Panel has carefully
considered the allegation that the Complainant has made that the domain name
is identical to the registered trademark VISTOBUENO. On the other hand, the
Panel could not analyze any arguments from Respondent contesting to the foregoing,
due to the fact that it defaulted to give an answer to the Complaint.
The Panel has anyway made
its own comparison of the domain name at issue vis-a-vis the Complainant’s trademarks
VISTOBUENO, and finds that that the second level domain name vistobueno,
is identical letter-by-letter to the Complainant trademarks, and that the addition
of ".com" –a generic top level domain intended for commercial organizations-
makes it rather difficult not to hold it to be confusingly similar to said trademark.
6.4 Rights and Legitimate
Interests in the Domain Name
The Panel has carefully
considered the allegation of the Complainant as to the lack of rights or legitimate
interests of the Respondent in respect of the domain name. In particular, the
Panel has noted the argument that the Respondent lacks of any legitimate trademark
or other intellectual property right in the domain name. The Panel would again
state that Respondent did not bring any defensive statement or arguments against
the Complaint.
In the present default
proceeding there is no contention on record, made by the Respondent or that
anyhow the Panel could rely on, to conclude that it might have trademark or
other intellectual property rights or in general, legitimate interests in the
domain name. Nothing can be evidenced reasonably leading to infer to the foregoing
fact, pursuant to the Policy, paragraph 4(c). This is not to accept that Complainant
did much to prove that Respondent did not have legitimate interests over the
domain name. Complainant has argued "neither the Spanish Bureau of Patents
and Trademarks nor the Business Registration Office shows (sic) any holder other
that (sic) the Complainant holding rights on that name." However, that
assertion was not supported on any evidence whatsoever. Likewise, Complainant
did not realize that Respondent might not had a legitimate interest over the
domain name as a trademark right only, but that an interest could have accrued
somehow, in virtue of any business made from the use of the domain name in itself
or other possibilities.
Notwithstanding the foregoing,
from the inquiries that the Panel made, it was possible to obtain that Respondent
or the previous owner of the domain name, did not do anything that could have
triggered a legitimate interest on the same. As it has been discussed above,
there is nothing on record giving the slightest clue that the domain name is
in use or that there have been preparations for being used, in connection with
a business or any activity in general. This panel gives particular weight to
the fact that Respondent defaulted. It can be inferred that by defaulting Respondent
showed nothing else but an absolute lack of interest on the domain name. And
in the absence of a response, it is truly hard to conclude about the legitimate
interest of the Respondent, on at least some sort of plan or intention to start
using the domain name. The Panel disagrees with the simplistic statement of
Complainant but understands the difficulty that it has faced to show what is
actually in the mind of Respondent. Proving negative facts is not particularly
an easy task. For that reason, Rule 4(a)(ii) binds the Complainant making a
prima facie case. The foregoing represents that the burden of proving
rests initially on this party. However, the burden cannot go as far as to overwhelm.
It is incumbent on Respondent to contribute to the fact-finding and if contrary
to that, it rather incurs in default, there is nothing that the Panel could
do to discuss in its benefit.
Therefore, the Panel finds
that the Respondent has no rights to or legitimate interests on the domain name
at issue.
6.5 Registration and
Use in Bad Faith
6.5.1 Preliminary Remarks
The initial holder of the
domain name, Mr. Antonio Acuña, resides in Spain and is most
probably a Spanish citizen. Spain is also within the geographical area where
trademark VISTOBUENO has been registered and where it has been used. This was
asserted by Complainant and ran undisputed by Respondent. It is most likely
that Mr. Acuña was aware of the products and trademark of the Complainant.
In registering the domain
name, the former holder intended reselling it to Complainant. As a matter of
fact, it can be regarded a clear cut and thus indisputable fact that Mr. Antonio Acuña
himself or someone related to him or acting under instructions or request, sent
an e-mail to Complainant, with a transfer offer referring to the domain name
"at a very competitive price." The refusal of Complainant to enter
into a negotiation, lead Mr. Acuña to respond, suggesting certain
variations to the original offer, in order to either sell the domain name to
Complainant or get the four other vistobueno domain names pertaining to this
latter. From its statement, it can be obtained that Mr. Acuña recognized
to the value of the vistobueno domain name family that he knew, and to the convenience
having them under one single ownership and source. The Panel would consider
that Mr. Acuña could have very well made the second offer for inducing
Complainant to believe that it was acting in good faith when it was not, or
for preparing a defense in a UDRP. What is definitively most surprising are
the sudden reactions of Mr. Acuña to the submission of the Complaint.
He first contacted the Complainant again, one day after the Complaint was filed
and shortly thereafter, he proceed making the transfer of the domain name to
an entity whose data were false, in accordance with information submitted to
the Registrar. Namebay.com the former registrant, may have contributed to all
this movements by having waited to acknowledge receipt to the Center’s notification
and, during that time, accepted or tolerated that the original registrant made
the transfer. It cannot be told from records whether namebay.com contributed
to that actively or passively, but what it did was very suspicious.
Mr. Antonio Acuña
knew that Complainant was the holder of the four-vistobueno domain names. He
contacted Complainant who was the trademark rights holder of the same name.
It would have been difficult to believe that Mr. Acuña could have
come to the Complainant by coincidence or by chance. If he made the approach
and later discussed about the four domains, he necessarily would have had investigated
Complainant. There can be no doubt that Mr. Acuña acted in bad faith
when registering the domain name.
Furthermore, Mr. Antonio Acuña
has lost at least one domain name registration, <cajamediterraneo.com>,
under very similar circumstances as the present one. In that occasion, Mr. Acuña
sent a communication to the trademark owner under identical terms as those of
the present matter. The Panel deciding over that controversy considered the
offer of Mr. Acuña as a "speculative intention" (intención
especulativa), and the registration made in bad faith as a result.
Notwithstanding the above,
Mr. Antonio Acuña transferred to Respondent any interest that
he could have held on the domain name. As a result of that he cannot be called
or referenced as a Respondent to this proceeding. The facts that the Complainant
narrates illustrate about the multiple wrongs that Mr. Acuña perpetrated
by registering and using the domain name. The Panel shares the views of Complainant
as to the allegations raised against the original registrant –although Complainant
is wrong to call or refer Mr. Acuña as the Respondent- and is even
annoyed by the possibility that namebay.com could have co-participated in the
assignment process or that at least was so permissive. If namebay.com would
have given prompt response to the Center’s notification, the Domain name would
have been put on hold before the time that Mr. Acuña made the transfer.
The Panel is troubled that
Mr. Antonio Acuña cannot attend the current proceeding as a
defendant or in any other capacity and that instead, all what he did can only
be referential to the present analysis and discussion. The Panel will not make
a particular pronouncement on that regard, but will anyway state that the original
registrant could have likely attempted against section 8(a) of the Policy, by
having transferred the domain name when there was a pending administrative proceeding.
Article 3(a) of the Rules could be interpreted as to support that the proceeding
starts or "initiates" when the complaint has been filed. There is
however, a specific provision of the Rules indicating that the proceeding shall
initiate until the Center has notified the Respondent, and that appears to dictate
the norm. The former holder was clever enough to escape from being called to
the proceeding taking advantage of loopholes and thus, saving the domain name
by putting it under the name of a "good faith" assignee. As a result
of that, the course of the proceeding has been shifted, requiring that the analysis
of factors of paragraph 4 of the policy, is made as applied to Respondent.
Paragraph 4(b) of
the Policy refers to certain factors which, if found to be present, shall constitute
evidence of registration and use of a domain name in bad faith. The category
is not exhaustive, but include:
"(i) circumstances
indicating that you (the Respondent) 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, or valuable consideration in excess of your documented out-of-pocket costs
directly related to the domain name; or
"(ii) you have registered
the domain name in order to prevent the owner of the trademark or service mark
from reflecting the mark in a corresponding domain name, provided that you have
engaged in a pattern of such conduct; or
"(iii) you have registered
the domain name primarily for the purpose of disrupting the business of a competitor;
"(iv) by using the
domain name, you have intentionally attempted to attack, for commercial gain,
Internet users to your website 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 website or location or of a product or service on your
website or location."
From paragraph 4(a)(iii)
of the Policy, it can be noted that the bad name factor has to be present in
both the registration and use of a domain name. From the provision quoted above,
that is, Rule 4(b), it can be obtained that paragraphs or sections (i)
to (iii) relate to the question of registration of a domain name in bad faith,
while (iv) specifies the use after acquisition through registration has been
made. The Panel will proceed the discussion of the registration and use factors,
based upon the methodology set by Rule 4(b), but at the same time, bringing
whatever additional analysis considered in precedents or other forms that are
accepted in UDRP.
6.5.2 Registration in
Bad Faith
In the present proceeding, the Respondent, Getdomains Ishowflat Limited, did
not itself register the domain name and is rather a transferee. That is the
reason why the doctrine of "extension" can be invoked here. That argument
is supported on paragraph 4(b)(i) of the Rules and of various precedents,
as it would be cases number D2000-0861,
D2000-0079 and D2000-1406.
For "extension" of a registration it is understood that the corresponding
term "extends beyond the original act of registration and covers subsequent
acquisitions of the domain name." Dixons Group Plc v. Mr. Abu Abdullaah,
D2000-1406. The bad faith of Respondent
consists on a number of factors, triggering from what the original registrant
made to put the domain name save from possible attacks. Under a scenario as
afore-mentioned, the former registrant could have certainly created or used
Respondent to complete the circle. From the findings made and the information
contained in the records of the case, this Panel believes that it is possible
inferring the existence of a relation between Respondent and its predecessor
in title Mr. Acuña.
A further element of bad faith would derive from the false information that
Registrant furnished to the Registrar. As mentioned above, the search that the
Panel made unveiled that irregularity, which is in breach of paragraph 2(a)
of the Policy, relating to the veracity of the information provided in the registration
agreement, and is also embraced by WIPO cases as D2001-0001
and D2001-1105. The cited cases determine
that "the registration of a domain name under a false identity is an element
proving that the domain name was registered or maintained in bad faith within
the meaning of section 4(a)(iii) of the Policy." In addition to the
foregoing, someone intervening in the proceeding to ask for the translation
of the Complaint and then not showing up to respond, is definitively not acting
in good faith.
The circumstances above
described satisfy the Panel to conclude that, for the purposes of Paragraph 4(a)(iii)
of the Policy, the Domain name was registered in bad faith.
6.5.3 Use in Bad Faith
Concerning the use in bad faith, the Panel finds that no access can be made
to any website, when selecting <vistobueno.com>. The foregoing drives
to the conclusion that the domain name is not in use. However, the Panel notes
that "being used in bad faith is not limited to positive action;
inaction is within the concept" (WIPO
Case No.D2000-0003). Instead, in view of the Panel, Registrant has made
a passive holding of the domain name. In accordance with that theory, use of
a domain name in bad faith can be found when there are circumstances leading
to passive holding; among those circumstances amounting to the use in bad faith,
the Panel notes "when it appears that there is no way in which such name
could ever be used legitimately in relation to a business or offering of goods
or services and the identity of Registrant remains unknown" (Kyobo Life
Insurance Co., Ltd. v. Max, D2003-0008) or
when the Respondent has provided false contact details to the Registrar. In
addition, being consistent with precedents like D2000-0869,
D2000-0615 and D2003-0008,
the Panel would extend the scope of paragraphs 4(b)(i)-(iii), to the use
in bad faith of the domain name when the use is made "with one of the purposes
outlined in those paragraphs." The panel feels comfortable in concluding
that the two angles that were described apply to the particular matter.
As to the question whether
VISTOBUENO is a famous or well-known mark in Spain, the Panel cannot draw such
conclusion from the information submitted with the Complaint. The trademark
at issue is VISTOBUENO and not EROSKI. Perhaps, there would be no doubt that
EROSKI can be regarded as a well-known trademark, but Complainant did not clearly
show the same for VISTOBUENO. Accordingly, the Panel believes that VISTOBUENO
cannot benefit from the rights contained in the international treaties that
the Complainant has invoked and most particularly, from the WIPO "Joint
Recommendation Concerning Rules on the Protection of Well Known Trademarks."
The foregoing means that,
in this particular case, the bad faith issue would not be resolved on the basis
of what the WIPO Recommendations have established, that is, that registration
or use of the domain name was made in bad faith just by the fact that it reproduces
or imitates a well known mark. However, this is not to say that bad faith cannot
be found in a case in which the mark has not been regarded to be well-known.
In the instant matter, from what it has been discussed above at length, it is
possible to conclude that the domain name was registered and used in bad faith,
in full compliance with paragraph 4(a)(iii) of the Policy.
7. Decision
The Panel has found that
the domain name <vistobueno.com> is identical or confusingly similar
to the trademarks of the Complainant, 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 has been
and is being used in bad faith.
Therefore, pursuant to
Paragraphs 4(a)(i), (ii) and (iii) of the Policy and 15 of the Rules, the Administrative
Panel decides to request that the domain name <vistobueno.com>
be transferred to the Complainant Eroski, S. Coop.
Luis C. Schmidt
Sole Panelist
Dated: July 28, 2003