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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mota-Engil, Engenharia e Construção, S.A. v. Servicios de Lexicografia. S.A.

Case No. D2009-0658

1. The Parties

The Complainant is Mota-Engil, Engenharia e Construção, S.A., Linda-a-Velha, Portugal, represented by Alexandra Romão, Portugal.

The Respondent is Servicios de Lexicografia. S.A., Senhora da Hora, Portugal, represented by Rojas Espinoza, Portugal.

2. The Domain Name and Registrar

The disputed domain name <mota-engil.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 18, 2009. On May 18, 2009, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain name. On May 18, 2009, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2009. The Response was filed with the Center on June 8, 2009.

The Center appointed Nuno Cruz as the sole panelist in this matter on June 16, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

4.1 The Respondent`s defense was based essentially on a different interpretation of most of the same facts as the ones presented in the Complaint and on other facts alleged in the Response. Above all, the defense was based on the refutation of the contentions of the Complainant.

4.2 It may be added that some of the facts alleged in the Complaint are even well known, in the sense that they are facts that are of common knowledge among the Portuguese population. They are facts which under Portuguese law are defined in article 514-1 of our Civil Procedure Code, which stipulates that "Well-known facts do not have to be proven or alleged, and facts which shall be considered as such are those which are of common knowledge".

This is particularly the case of some facts alleged in these proceedings relating to the nature of the economic group of the Complainant, its activity and the well-known character of its name "Mota-Engil". This well-known nature of these facts is clearly confirmed in various statements made in the Response itself, which will be mentioned further below in this decision.

4.3 Therefore, with relevance to the decision in this case, the Panel has considered that the following facts have been proved:

- The Complainant is a company incorporated in June 26, 2003, in accordance with the Portuguese Law, whose core business is the execution of public and private construction works.

- The Complainant also runs its business in several other continents besides Europe, namely Africa and America.

- The Complainant is integrated in a Portuguese holding designated "Mota-Engil S.G.P.S., S.A.". Besides the Complainant, the holding has the following companies with the name "Mota_Engil": Meits – Mota-Engil ImobiliГЎrio e Turismo, S.A.; Mesp – Mota-Engil Serviços Partilhados Administrativos e de Gestão, S.A., Mota-Engil II, Gestão, Ambiente, Energia e ConcessГµes de Serviços, S.A.; Mota-Engil, Ambiente e Serviços, S.G.P.S., S.A.; Mota-Engil, Betão e Pré-Fabricados, Sociedade Unipessoal, Lda.; Mota-Engil – ConcessГµes de Transportes, S.G.P.S.; MOTA-ENGIL, Manvia – DiagnГіsticos Eléctricos, ACE; Mota-Engil, PavimentaçГµes, S.A.; Mota-Engil, Soares da Costa, Monteadriano – Matosinhos, ACE and Mota-Engil, Tecnologia de Informação, S.A.

- The Complainant is the owner of Portuguese trademark registration no. 383.666, Mota-Engil, Engenharia e Construção, S.A., applied for in August 3, 2004 and granted in January 4, 2005.

- The goods or services within the referred trademark are construction, repairing and installation services according to number 37 of the Nice Classification.

- The Complainant is the owner of Portuguese logotype registration no. 12.716, MOTA-ENGIL/PAVIMENTAÇÕES (and device), applied for in June 19, 2008 and granted in September 19, 2008.

- The Complainant also has several trademark registered at the World Intellectual Property Organization (WIPO).

- Besides the Complainant, the abovementioned holding Mota-Engil, S.G.P.S., S.A. also has other companies registered with the name "Mota-Engil".

- The site "www.mota-engil.com" is identical to the trademark MOTA-ENGIL registered in the name of the Complainant.

- The Complainant owns also the following Top Level Domains: <mota-engil.eu> and <mota-engil.net> and the following Country Level Domains: <mota-engil.pt>, <mota-engil.com.br>, <mota-engil.st>, <mota-engil.pl>, <mota-engil.co.ao>, <mota-engil.ro>, <mota-engil.cz>, <mota-engil.sk>, <mota-engilmw.com>.

- The Complainant is only known internationally by "Mota-Engil" and the registration in its name of the correspondent Top Level Domain .com could increase its capacity of international expansion.

- The Respondent has not registered in its name any trademark or service mark comprising the expression "Mota-Engil".

- The site in relation to the domain name is not operating or functioning, and, since the registration of the site (for more than 9 years), the phrase "Pages under Construction" is being exhibit with no utilization by the Respondent.

- Besides the domain name that is the subject of the Complaint, the Respondent is, at the present time, owner of several other domains, including the domains <caixagest.com> and <caima.com>.

- Before filing the present Complaint, the Complainant tried to purchase the domain name and contacted the Respondent for that purpose, offering the amount of Euro 300,00.

- The offer of Euro 300,00 for the domain name was considered too low by the Respondent.

- The Respondent proposed to the Complainant to lease the domain in exchange for a support to their charity program or in contracting their services of translations.

5. Parties` Contentions

A. Complainant

(1) The domain name is identical to a trademark and service mark in which the Complainant has rights.

(2) The Respondent has no rights or legitimate interest in respect of the domain name that is the subject of the Complaint.

(3) The site in relation to the domain name is not operating or functioning since its registration, i.e. for more than (9) nine years. Basically the registration of the domain name in question by the Respondent is blocking a possible international projection of the Complaint`s activity.

(4) The domain name in question was registered and is being used in bad faith. Indeed, the conduct of the Respondent reveals that he has the purpose of selling or renting the domain name registration for valuable consideration in excess of its out-of-pocket costs directly related to the domain name.

(5) It is evident that the domain name was registered in order to prevent the Complainant from reflecting its trademark MOTA-ENGIL in the correspondent domain name.

B. Respondent

The Respondent has refuted the Complainant`s contentions, in what concerns the relevance of their trademark rights in the present case, the alleged lack of interests in respect of the domain name and of the bad faith on the registration and use of the same.

The Respondent`s contentions will be analyzed below, in point 6, A, B and C.

6. Discussion and Findings

The Complaint

The Complaint was duly drawn up in accordance with the procedural requirements stipulated in paragraph 3 of the Rules, and it was documented with various elements (Annexes I to VII).

The Complainant, by means of this Complaint, seeks to obtain remedies in respect of the domain name in question, i.e. either the transfer of that domain in its name or the cancelation of the same.

The Response

The Respondent filed his Response within the time period stipulated in Paragraph 5(a) of the Rules.

According to Paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, The Complainant must prove that:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the domain name <mota-engil.com> is identical to Complainant`s trade and service marks MOTA-ENGIL.

In what concerns to the Complainant`s trademark rights, the Respondent raised the issue that it had registered the Top Level Domain <mota-engil.com> on July 3, 2000, i.e. before the filing of Portuguese trademark application no. 383.663 MOTA-ENGIL, SGPS, S.A., which happened on August 3, 2004. Moreover, the registration of the domain name in question is earlier than the incorporation of the complainant company, which derived from the merger on June 26, 2003 of three companies, including Mota & Companhia, S.A. and Engil-Sociedade de Construção Civil, S.A.

The Panel finds these facts to be true, and must therefore be duly analyzed and taken into consideration in the present decision.

The Panel considers it undeniable that in July 2000, when the registration of the disputed domain name was applied for, the Respondent had in mind the occurrence of the abovementioned merger MOTA-ENGIL which, as referred to in the Response, had (already) "become an interesting subject in Portugal". This fact, openly admitted by the Respondent, is obviously relevant as regards assessment of its motivation to obtain the registration of the domain name in question, and will be resumed later on in paragraphs B and C below.

Nevertheless, does the Complainant have legal grounds for the purpose of the Paragraph 4(a)(i) of the Policy, when the trademark registrations specifically invoked therein are later than the registration of the domain name in question?

The Panel believes so, for two reasons.

Firstly, on the present date the Complainant remains as being the single Party with trademark rights (registrations) in the expression "Mota-Engil". This aspect is very relevant, especially in the jurisdictions where the ownership of and the right in the exclusive use of a trademark can only be obtained through its registration, as is the case of Portugal, where this basic principle is currently established in article 224 of the Industrial Property Code (previously in article 167 of the Industrial Property Code of 1995, which was in force on the date when the domain in question was registered).

Secondly, it happens that in July 2000, when the disputed domain name was registered, the trademarks MOTA and ENGIL were already protected in Portugal, separately, in the name of the companies which were involved in the abovementioned merger. In fact, on the one hand there was Portuguese trademark registration no. 267.654 MOTA & COMPANHIA (and device) for services in class 37, applied for on September 27, 1990 and granted on December 28, 1992, belonging to the company Mota & Companhia, S.A. On the other hand there was Portuguese trademark registration no. 319.579 ENGIL (and device) for services in classes 36 and 37, applied for on October 7, 1996 and granted on June 17, 1997, initially belonging to the company Engil-Engenharia e Construção, S.A. and currently recorded in the name of the Complainant. Both these trademark registrations remain formally valid on this date.

The above details may be verified on the website of the Portuguese Institute of Industrial Property, at "www.inpi.pt".

According to the understanding of the Panel, the fact that Portuguese trademark registration Nos. 267.654 and 319.579 were not invoked in the Complaint does not mean that they cannot now be taken into consideration for the purpose of this decision. In fact, the existence of these trademark registrations was the subject of official publication, which is actually a legal requirement for the recognition and enforcement "erga omnes" thereof. Therefore, the existence of these registrations can also be taken into account and invoked by this Panel in the grounds for this decision – namely in view of the abovementioned principle and legal provision which enables this Panel to consider as relevant all facts that are public and well-known.

The Panel thus finds to be met the requirement that the domain name in question is identical or confusingly similar to the trademarks of the Complainant.

B. Rights or Legitimate Interests

As a result of the facts considered by the Panel as proven, it is deemed that the Respondent is not the owner of any trademark rights or other rights of any nature in the expression "Mota-Engil". Furthermore, this is apparently not a name either used by the Respondent or by which the Respondent appears to be commonly known in the marketplace. It has also been proved that the Respondent neither uses nor intends to use the domain name in question in connection with the offering of goods or services. All these aspects have in fact been admitted by the Respondent itself.

The Respondent sustains its legitimate interest in the domain name <mota-engil.com> on the allegation that it "has intellectual and sufficient interest in studying Mota-Engil" and that its "primary purpose for the domain" is "to publish independent studies, commentaries, opinions and other materials". In other words, the Respondent is sustaining that it is making or intends to make a "legitimate noncommercial use of the domain name", as stated in Paragraph 4(c)(iii) of the Policy as an example of indication of legitimate interest for the relevant purpose.

With all due respect, first of all the explanation provided by the Respondent as to the use that it makes or intends to make of the domain is simply not convincing to the Panel based on ordinary experience. In any case, even if this explanation were plausible in itself, in the understanding of the Panel it would be neither sufficient nor appropriate for justifying a legitimate interest in the domain name in question.

Before pursuing this aspect of the findings, the Panel notes that the Respondent itself recognizes that the Complainant "Mota-Engil is a large corporate group and its commercial interest in this domain has a higher monetary value than (its) intellectual or scientific interest in the Mota-Engil group". Therefore, although not decisive per se under the Policy, it is notable that the Respondent itself acknowledges the fact that the Complainant has a pertinent interest – monetarily more valuable than its own – in the gTLD .com suffix, even though the Complainant is already the owner of other mota-engil domains (e.g., .eu, .net, .pt, .com.br, etc.).

Concerning the noncommercial purpose described by the Respondent, no allegation was made in the Response (much less was any proof filed) that the Respondent is actually issuing or issued in the past any "publication of studies, commentaries, opinions and other materials" on the "Mota-Engil" group or any other entity. In this respect, the only allegation in support of the above explanation set forth by the Respondent is that its group "includes a Portuguese economist […] who was paid for several jobs, including to study Mota-Engil", for which "in the last 3 years he was paid 9,700 euros each year", but not even in respect of this alleged fact was any evidence submitted in the Response.

The above statement affects the credibility of the argument presented by the Respondent. In any case, as previously mentioned, the Panel considers that this argument would not be sufficient of itself on the present record to justify a legitimate interest with regard to the domain name at issue.

First of all, on the basis of the circumstance indicated in Paragraph 4(c)(iii) of the Policy, it would need to be shown by the Respondent that it is " (actually) making" a legitimate noncommercial or fair use of the domain name. In other words, in respect of this matter, the Policy refers to a use that is in fact being made and not merely intended or planned – much less set forth in such vague terms, as happens in the Response. The Respondent has failed to establish any such actual use.

Secondly, the registration of the domain name in question does not appear to the Panel to be necessary for the Respondent to pursue any studies that it may intend to carry out concerning the "Mota-Engil" group. Furthermore, it appears to have no additional utility for the intellectual and scientific purpose announced.

In view of the considerations set forth above in this item B., the Panel finds that the Respondent has not been able to demonstrate any rights or legitimate interests in the domain name in question.

C. Registered and Used in Bad Faith

Concerning the issue of bad faith and the allegations set forth in this respect in the Complaint, the Respondent presented the following arguments:

- They never offered to sell the domain "www.mota-engil.com" and they never had any benefit from owing that domain name.

- The domain name was not registered to prevent the Complainant from reflecting their mark in a corresponding domain name, nor is the Respondent engaged in a pattern of such conduct.

- The Parties are not competitors and the domain name was not registered by the Respondent to disrupt the Complainant`s business.

The first aspect to be taken into account for the analysis of the requirement of bad faith is one that has already been focused on hereinabove, i.e. that since its registration (more than nine years ago) the domain name remains unused. In fact, not only does the Respondent itself claim that this domain name has no commercial aim (offering goods or services), but also the alleged noncommercial purpose that it has described (intellectual and scientific) has never been verified.

The Respondent states that the domain name was not registered for the purpose of being sold to the Complainant or any other entity. However, this statement seems to be belied by other arguments invoked in the Response itself. In fact, the Respondent expressly states that the offer made by the Complainant in April 2009 "to buy the domain for 300 euros was considered too low", which in the opinion of the Panel seems to clearly imply that the Respondent would be willing to sell the domain for a higher price.

In this regard, it seems relevant to point out in this decision that in addition to the domain name <mota-engil.com>, the Respondent has registered other domain names which include other well-known trademarks or names in Portugal. In fact, although these domain names are not indicated in the list filed as Annex 7 with the Response, the Panel has verified that the Respondent has registered the domain names <caixagest.com>, which is identical to the trademark CAIXAGEST (registration no. 378.457), in the name of "Caixa Geral de Depósitos" (one of the most important banks in Portugal – if not the most important) and also <caima.com>, which in turn refers to the company "Caima" (one of the most important cellulose manufacturers in Portugal).

Although it may be debatable whether the abovementioned cases are sufficient for concluding that the Respondent is indeed "engaged in a pattern of conduct" of registering well-known names and trademarks as domains, it can be verified that it has obtained at least the registrations for three domains in the same conditions.

Finally, there is a circumstance which, in the opinion of the Panel, is in itself decisive for concluding that the requirement of bad faith is met in this case, in accordance with Paragraph 4(b)(i) of the Policy. Once again, this circumstance derives from the statements made by the Respondent itself in these proceedings.

The Respondent sustains that it did not register the domain with the purpose of selling it to the Complainant (although, as mentioned above, this seems to have happened only because the price offered by the Complainant "was considered too low"). However, it is obvious that the sale of a domain name ("for a lump-sum of money", as set forth in the Response) is in no way the only means of obtaining profit or an illegitimate material advantage at the expense of a trademark that is identical or confusingly similar to that domain name.

It should be noted that, as the Respondent stated in its brief, "We (they) offered to make a deal with Mota-Engil regarding the domain www.mota-engil.com, but not for a lump-sum of money. We (they) proposed to lease the domain in exchange for a support to our charity program (2 minimum wages per month [1 minimum wage = 450 euros] for donations to single mothers in Portugal and other charitable activities we have in Portugal and Latin America) or up to 70% of this amount in services of our group [translations])".

In other words, as the Respondent itself admitted, it imposed on the Complainant as a condition for assigning the domain name the donation of money for its "charity program" or for procuring its translation services. For all intents and purposes, this corresponds to imposing on the Complainant a financial provision in exchange for the domain name, in a manner essentially equivalent to a pure and simple sale, for the purposes of the Policy.

In view of the above, the Panel finds to be met the requirement provided for in Paragraph 4(a)(iii) of the Policy and thus considers that the domain name in question has been registered and is being used by the Respondent in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <mota-engil.com> be transferred to the Complainant.

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Nuno Cruz
Sole Panelist

Date: July 1, 2009