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Arbitration and Mediation Center
Freixenet SA v. Bernward Averwald
Case No. D2003-0840
1. The Parties
The Complainant in this administrative proceeding is Freixenet SA ("Complainant"), Barcelona, Spain. Complainant’s authorized representative is Ramón a. Ponz Corella (UBILIBET), Barcelona, Spain.
The Respondent in this administrative proceeding is Bernward Averwald ("Respondent"), Frankfurt, Germany.
2. The Domain Name and Registrar
The Domain Name at issue is <freixe.net> ("Domain Name"), registered with Network Solutions Inc. ("Registrar").
3. Procedural History
A complaint ("Complaint"), pursuant to the Uniform Domain Name Dispute Resolution Policy, implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy, implemented by ICANN on the same date ("Rules"), was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on October 22, 2003 by e-mail, and was received on October 24, 2003 in hardcopy.
The Acknowledgement of Receipt of Complaint was submitted to the Complainant by the WIPO Center on October 24, 2003.
On October 24, 2003, a Request for Registrar Verification was transmitted to the Registrar, which confirmed on October 28, 2003, with its Verification Response that the disputed Domain Names were registered with Network Solutions, and that Respondent is the current registrant of the disputed Domain Name.
A Notification of Complaint and Commencement of Administrative Proceeding ("Commencement Notification") was transmitted to the Respondent on November 3, 2003, setting a deadline of November 23, 2003, by which the Respondent could file a response to the Complaint.
On November 22, 2003, the assigned Case Manager received the Response to the Complaint. The Acknowledgement of Receipt of Response was submitted to the Respondent by the WIPO Center on November 24, 2003.
Both parties elected to have the dispute decided by a single member administrative
panel. The WIPO Center invited the undersigned to serve as Sole Panelist in
Case No. D2003-0840 and transmitted to him
a Statement of Acceptance and Request for Declaration of Impartiality and Independence
which was duly signed and returned to the WIPO Center on December 4, 2003.
The WIPO Center transmitted to the parties on December 8, 2003, a Notification of Appointment of Administrative Panel and Projected Decision Date as of December 22, 2003. The Administrative Panel finds that it was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.
4. Factual Background
The following facts and statements appear from the Complaint and its annexed documents as well as from the Response and its enclosed documents:
Complainant Freixenet SA is a sparkling wines company established in 1914 in Sant Sadurni d’Anoia, Spain. Currently, it has offices in more than 15 countries and its principal trademark and denomination, "FREIXENET," is present in every world market. The Freixenet Group includes several production centers based in the most well-known wine-making regions. The group-owned network of distribution and sales companies has been consolidated and Complainant has become a multinational group bringing together wine producers and distribution companies in more than 120 countries across five continents.
The Freixenet mark is well known worldwide in connection with sparkling wines and wine-related products. The Complainant has notorious trademarks that are very well known on the international market. This popularity is also great in the German market, the Respondent’s place of residence, where Freixenet has achieved a large market share. In Germany, Freixenet advertises in the press, on the radio, and on television. Furthermore, it also sponsors cultural and sporting organizations and events.
Complainant has owned registrations for the trademark "FREIXENET" since 1922 in many countries around the world. The Complainant’s rights in several of the "freixe" and "freixenet" trademarks include, among others, the following:
Mark Country Class Registration No. Registration Date
FREIXENET WIPO 33 358.237 July 9, 1969
FREIXENET OHIM 33 32.557 March 19, 1998
FREIXENET Germany 33 98 50 55 May 8, 1978
FREIXENET Germany 33 397 62 340 December 31, 1997
FREIXENET Germany 33 397 62 341 December 31, 1997
FREIXENET Germany 33 397 62 339 December 31, 1997
FREIXENET Germany 33 397 62 342 December 31, 1997
FREIXE Spain 33 1.126.445 March 5, 1987
FREIXE Spain 33 2.478.721 November 5, 2002
FREIXEN Spain 8 475.128 February 15, 1966
FREIXENE Spain 8 475.129 February 15, 1966
FREIXENET Spain 8 37.925 June 24, 1922
FREIXENET Spain 8 475.130 February 15, 1966
FREIXENET Spain 33 594.888 March 14, 1973
The Complainant has also protected its trademarks internationally. "FREIXENET" registrations also exist in Argentina, Australia, Austria, Belgium, Brazil, Canada, Chile, China, Colombia, Costa Rica, Cuba, Denmark, Ecuador, Finland, Georgia, Greece, Guatemala, Honduras, Israel, Italy, Jamaica, Japan, Latvia, Lithuania, Luxembourg, Moldavia, Mexico, Netherlands, New Zealand, Nigeria, Panama, Paraguay, Peru, Poland, Portugal, South Africa, Sweden, Switzerland, Taiwan, Uruguay, the United Kingdom, the United States and Venezuela.
Complainant has extended its concern to protect its denominations and marks to the Internet and, in that regard, it owns more than 100 Domain Names such as <freixe.com>, <freixenet.com>, <grupofreixenet.com>, <webfreixenet.com>, <freixenet.de>, <freixenet.es>, and <freixenetusa.net>.
As part of its trademark enforcement program, Complainant discovered that the Respondent, Bernward Averwald, registered the Domain Name at issue and that said Domain Name had not been in use since its registration on October 23, 1996.
Respondent’s original contact details of Network Solutions show the Domain Name registrant as follows: Free Unix Internet Service (See Annex 5 to Response). This changed as Respondent went through the process of account consolidation with the Registrar.
Respondent explains that the term "FREiXe" is an acronym for "Free Unixes" or in German language "Freie Unixe." iX is a general accepted abbreviation for "Unix," a popular operating system like Linux, which falls in the same category. The letter "e" indicates the plural in German.
At no time was a web server active for <freixe.net>. Respondent’s only use until today is for e-mail purposes.
5. Parties’ Contentions
Complainant contends that:
- the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the Domain Name; and
- the Domain Name was registered and is being used in bad faith; and
- the Domain Name <freixe.net> should be transferred to the Complainant.
Additional respective contentions of the Complainant are contained in the following discussions and findings.
Respondent disputes the above contentions. As a result, the Domain Name <freixe.net> should remain with the Respondent.
Additional contentions of the Respondent may be contained in the following discussions and findings.
6. Discussion and Findings
Paragraph 4(a) of the policy directs that the Complainant must prove each of the following:
"(i) that the Domain Name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
"(ii) that the respondent has no rights or legitimate interests in respect of the Domain Name; and
"(iii) that the Domain Name has been registered and is being used in bad faith."
Identical or confusingly similar Domain Name: Policy 4(a)(i)
The Domain Name at issue is <freixe.net>. Complainant is the holder of the world wide registered trademark "FREIXENET," and in Spain the trademark "FREIXE." The suffix ".net" – a generic top level domain – and the root "freixe" form together – when read – Complainant’s trademark "FREIXENET." It is likely that Internet users may understand it as a Domain Name from Complainant, especially as the word "freixe" has no obvious meaning in and of itself.
Despite Respondent’s allegations that the root "freixe" is not a well known trademark, and that ".net" is a generally accepted suffix for organisations related to the internet infrastructure, such as internet service providers, it cannot be denied that it is likely that internet users may read the Domain Name at issue as a whole and hence may be lead to the assumption to deal with Complainant.
Additionally, the contested Domain Name is clearly identical to Complainant’s spanish trademark "FREIXE" and the addition of ".net" also makes the Domain Name confusingly similar to Complainant’s world wide trademark "FREIXENET."
Therefore the Panel holds that the Complainant has met the burden of proof as established by subparagraph (i) of the Policy’s paragraph 4(a).
Respondent’s Rights or Legitimate Interests in the Domain Name: Policy 4(a)(ii)
It is first convenient to recall that, according to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
"(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
"(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
Complainant contends that Respondent has not been engaged in any activities
with the Domain Name since its registration in 1996 and that this was clear
proof that he doesn’t have any legitimate interest in said Domain Name and that
he has no intention of using it. Indeed, a passive holding of this nature has
been viewed in this light in situations similar to the present case, for example
in Educational Tertiary Service v. TOEFL, WIPO
Respondent’s "www.freixe.net" website is not currently active; thus, it seems clear that Respondent is not presently using the Domain Name in connection with the bona fide offering of goods or services. Respondent also failed to provide evidence that he is commonly known by the Domain Name. But he claims that his current use for the Domain Name is noncommercial and fair as he is using the Domain Name only for non-commercial e-mail purposes. Respondent explains that the term "FREiXe" is an acronym for "Free Unixes" or in German language "Freie Unixe," iX being a general accepted abbreviation for "Unix," a popular operating system (see Annex 6-9 to Response). The letter "e" is an indication of a plural in German.
Respondent’s arguments are not convincing. By stating his intention to use the Domain Name only for non-commercial e-mail purposes, he in essence confirms that there is no bona fide offering of goods or services planned with the Domain Name. Respondent also fails to provide any indication for having been commonly known by the Domain Name. His explanations of how and why he came to choose the Domain Name seems to have a certain logic. But, without proper explanation, even professional computer users and insiders can not possibly understand the Domain Name to mean what Respondent contends it to mean. If Respondent is using the Domain Name for sending e-mails only, he never gets a chance to explain his logic to a greater public and the Domain Name will not be recognized in the way alleged by Respondent.
Respondent furthermore even fails to provide a proper e-mail address running under the Domain Name. The only e-mail address submitted in evidence by Respondent is email@example.com, the default e-mail address automatically generated in connection with every Domain Name registration for the purpose of corresponding with the Registrar. Thus, this Panel beliefs that Respondent is not commonly known by the disputed Domain Name, not individually, nor as regards any business or organization that he may have launched or in which he may have been involved. A search by Complainant in Germany for companies, entities, individuals or organizations bearing the denomination at issue turned out to be negative (see Annex 11 to Complaint), and Respondent himself failed to provide adequate proof.
In the eyes of this Panel, Respondent, therefore, has not shown sufficient grounds to assume his legitimate rights or interests in the sense of the Policy, and he has not shown any other circumstances reflecting rights or legitimate interests in the disputed Domain Name.
Hence, the Panel finds that Complainant has fulfilled its burden of proof under paragraph 4(a)(ii) of the Policy.
Domain Name Registered and Used in Bad Faith: Policy 4(a)(iii)
The third element to be established by Complainant is that the Domain Name has been registered and used in bad faith.
Paragraph 4(b) states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name:
"(i) circumstances indicating that you [Respondent] have registered or you [Respondent] 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
"(ii) you [Respondent] 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 [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
"(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, 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 your location."
Complainant alleges that Respondent registered and intends to use the Domain Name in bad faith.
Complainant holds that there is no way that Respondent was not aware of the
trademarks and trade name of Complainant, and therefore registration may only
have occurred in bad faith. When it may be presumed that "the Respondent
(…) knew of the renown of the Complainant’s trademarks," a finding of "opportunistic
bad faith" is in order, Banca Sella S.p.A. v. Mr. Paolo Parente,
WIPO Case No. D2000-1157. Respondent is
located in Germany, a main market for Complainant’s products. As has been pointed
out in the discussion above, the "freixenet" denomination and marks
have been used extensively throughout the world for 80 years and Complainant’s
trademarks are famous and valuable. Therefore Respondent could not conceivably
have ignored Complainant’s rights.
The fact that Respondent, for seven years, has held the Domain Name passively
and failed, throughout this time span, to set up a webpage or to generate genuine
e-mail traffic over the Domain Name, reveals that there was no real intention
of use. A significant number of WIPO rulings have held that the passive holding
of a Domain Name, in conjunction with other circumstances that are also present
in the instant case, reveals bad faith. See CBS Broadcasting Inc. v. Edward
Enterprises, WIPO Case No. D2000-0242
for a partial listing of those decisions in 2000. It was in Telstra Corporation
Limited v. Nuclear Marshmallows, WIPO
Case No. D2000-0003 where the further principle was established that a finding
of bad faith does not always require positive actions such as the redirections
of users or offers to sell.
In an overall assessment of the contentions and the facts mentioned above, the Panel concludes that the requirements of paragraph 4(a)(i)+(iii) of the Policy have been sufficiently made out by the Complainant, and that Respondent’s bad faith registration of the Domain Name has been proven.
In view of the circumstances and facts discussed above, the Panelist decides that the disputed Domain Name is confusingly similar or even identical to the registered trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent’s Domain Name has been registered in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panelist requires that the disputed Domain Name, <freixe.net>, shall be transferred to the Complainant.
Bernhard F. Meyer-Hauser
Dated: December 22, 2003