WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ibersecurities, Agencia de Valores y Bolsa, S.A. v. Iberica Segurança, Eloy Lacasta

Case No. D2000-0738

 

1. The Parties

Complainant is Ibersecurities, Agencia de Valores y Bolsa, S.A., a corporation duly organized and existing under the laws of Spain, with its principal place of business located at Paseo de la Castellana, 144, 28046, Madrid, Spain.

Respondent is Iberica Segurança, Eloy Lacasta, with its principal place of business located at Rua Vicente Leite (Aldeota), Fortaleza, CE, Brasil. 

 

2. The Domain Name and Registrar

The domain name under dispute is "ibersecurities.net" (the "Domain Name").

The registrar of the domain name under dispute is Register.com, Inc. ("the Registrar"), with business address in New York, New York, USA.

 

3. Procedural History

On July 5, 2000, and July 7, 2000, Complainant submitted its Complaint through e-mail and hardcopy, respectively, with the required filing fee for a single-member Panel, to the World Intellectual Property Organization ("WIPO") Arbitration and Mediation Center (the "WIPO Center"), in accordance with the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy (the " Rules"), and WIPOís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("WIPOís Supplemental Rules).

An Acknowledgment of the Receipt of Complaint was sent to Complainant by the WIPO on July 14, 2000.

On July 28, 2000, WIPO sent a "Request for Registrar Verification" via email to Register.com, Inc. (the "Registrar"). On August 3, 2000 the Registrar by mistake confirmed WIPO that they were not the Registrar for "ibersecurities.com" (instead of for the ".net" as was requested). On August 8, 2000 WIPO made such clarification and requested new confirmation to the Registrar and sent a new "Request for Registrar Verification". The Registrar acknowledged such communication on August 8, 2000, and on the same date confirmed that Eloy Lacasta of Iberica Segurança (sic) as the current registrant of the "ibersecurities.net" domain name, although indicated that they had not received a copy of the complaint. Evidence of such delivery is later reconfirmed by a communication sent by WIPO on October 6, 2000. Furthermore, such Registrar enclosed its WHOIS database confirming as Registrant and as Administrative contact: Iberica Segurança, Eloy lacasta; Registrer.com as the Technical contact: and DNS23.REGISTER.COM, and DNS23.REGISTER.COM as the Domain servers, with a record created and last updated on July 24, 2000, and effective until July 24, 2001, and that such domain name is in "active" status, and the Uniform Dispute Resolution Policy is applicable to the "ibersecurities.net" domain name.

On September 11, 2000, after WIPO performed a verification of "Formal Requirements Compliance" to the Complaint, its sent a notification to Complainant via email, confirming that the "ibersecurities.net" domain name was registered in favor of Iberica Segurança with Register.com, Inc.

On September 20, 2000, and September 22, 2000, Complainant submitted its corrected Complaint through e-mail and hardcopy, respectively, to the WIPO Center, which was received in hardcopy on September 22, 2000. The current Registrar and Registrant of the "ibersecurities.net" domain name was also confirmed by evidence submitted by the Complainant as documents marked 19 and 22 of his Complaint.

On September 27, 2000, Complainant sent an email to the WIPO Center designating the Courts of New York, USA where the "ibersecurities.net" domain name was registered, as the Judicial Authority competent in case of any objection to a resolution under this domain name dispute administrative proceeding which may deny the transfer of the domain name as requested.

On October 6, 2000, WIPO properly sent via e-mail and hardcopy through express mail to Respondent and to the ICANN and to the Registrar a "Notification of Complaint and Commencement of Administrative Proceedings" enclosing copy of Complainantís complaint, and confirming the formal initiation of this proceedings as of such date, and granting a term for providing a response no latter that October 25, 2000. Furthermore, hardcopy and e-mail of such Complaint as confirmed by Complainant was also previously sent by Complainant to Respondent on September 15, 2000.

On October 24, 2000, Respondent submitted response to the Complaint. An Acknowledgment of the Receipt of Response was sent by the WIPO to Respondent, with copy to the Complainant, on October 27, 2000.

On November 24, 2000, the undersigned received an invitation to participate as Panelist in the referred to domain name dispute proceeding. On November 24, 2000, the undersigned signed and sent to WIPO, a Statement of Acceptance to participate as Single Member Panelist and a Declaration of Impartiality and Independence.

On November 29, 2000, WIPO sent to Complainant and Respondent a "Notification of Appointment of Administrative Panel and Projected Decision Date", appointing Pedro W. Buchanan as Sole Panelist and scheduling December 13, 2000, as the date for issuance for the Panelís decision, notifying the above pursuant to paragraphs 6 (f) and 15 (b) of the Rules. On the same date, WIPO transferred the case file to the Sole Panelist.

The undersigned Panel has independently determined and agrees with WIPOís assessment that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy (the " Policy"), the Rules, and WIPOís Supplemental Rules.

This Panel considers that the complaint was properly notified to the registered domain-name holder, as it achieved actual notice, as provided for in paragraph 2 (a) of the Rules, as it may be evidenced by its response to the same.

Respondent failed to elect whether the dispute be decided by a single-member or by a three-member, and therefore a single panelist was appointed as proposed by the Complainant, as may be evidenced from section 3 of Complainantís complaint.

On November 24, 2000, the undersigned received an invitation to participate as Panelist in the referred to domain name dispute proceeding. On November 24, 2000, the undersigned signed and sent to WIPO, a Statement of Acceptance to participate as Single Member Panelist and a Declaration of Impartiality and Independence.

On November 29, 2000, WIPO sent to Complainant and Respondent a "Notification of Appointment of Administrative Panel and Projected Decision Date", appointing Pedro W. Buchanan as Sole Panelist and scheduling December 13, 2000, as the date for issuance for the Panelís decision, notifying the above pursuant to paragraphs 6 (f) and 15 of the Rules. On the same date, WIPO transferred the case file to the undersigned Panelist.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information, statements or documents from the parties, nor the need as an exceptional matter, to hold any in-person hearings as necessary for deciding the complaint, as provided for in paragraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of domain name dispute proceedings.

The language of the proceeding is English, as being the language of the domain Registration Agreement (as it was made through the Registrar Register.com, Inc.), and in view that there is no express agreement to the contrary by the parties, pursuant to paragraph 11(a) of the Rules (incorporated by reference in paragraph 3 of the Registration Agreement). This consideration is also given by the Panelist having regard to the circumstances of this administrative proceeding. Furthermore, in order to procure for the parties a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases, and that the both parties be treated with equality in these administrative proceedings, the Panelist has agreed to receive and consider documents submitted also in the Spanish language, under the authority granted in the terms of paragraph 11(a) of the Rules.

 

4. Factual Background

The Complainant, Ibersecurities, Agencia de Valores y Bolsa, S.A., has as corporate purpose the rendering of intermediation financial and monetary services. Complainant has used the trademark Ibersecurities, as evidenced from related publications between July, 1998 and April, 2000. Complainant has made investments on various types of advertising and publications involving such mark. Complainant has an active presence on the Internet and the trademark Ibersecurities has also been marketed and promoted on the Internet and in various other media (particularly on its website at "http://www.ibersecurities.com", and site www.ibersecurities.es which evidences its presence on the Internet and the availability of on line intermediation services.

A Register.comí WHOIS database search indicates that the record of registration of Complainantís Domain Name under the top level domain "dot com" designation, this is, "ibersecurities.com" was created on October 10, 1998, and operates a legitimate commercial activity in the Internet since such year, prior to Respondentís registration of the domain name "ibersecurities.net" which was created for Iberica Segurança through Register.com on July 24, 2000 and in the past registered through Network, Solutions, Inc. to a certain Fernando Labadia Pardo on December 11, 1999.

In support of its Complaint, Complainant submitted copies of the following Trademark Registrations:

a) Federal Trademark Ibersecurities Valores y Bolsa and design, registered in Spain in the General Office of Spanish Bureau of Trademarks and Patents under registration Number 2191301, issued on March 03, 1999, on class 36 (with evidence of payment for Title Concession and for rights maintenance for the first five years) covering for financial and monetary services, insurance contracts services, money exchange services, compensation services, credit institutions services, holding companies services, stockbroker services, issuance of traveler's check and letters of credit services, real state administration services, real state rental services,, with application date on October 23, 1998, with Ibersecurities Agencia de Valores, S.A., as the sole and exclusive listed owner;

b) International Trademark Ibersecurities and design, registered before the World Intellectual Property Organization on March 18, 1999, on class 27.5 and 29.1 under registration Number 710 444, as per registration certificate issued on May 6, 1999, for, among others, financial and monetary services; services rendered regarding insurance contracts; services from exchange houses and compensation services; with Ibersecurities Agencia de Valores y Bolsa, S.A., as the sole and exclusive listed owner;

c) Federal Trademark Ibersecurities Valores y Bolsa and design, registered in Spain in the General Office of Spanish Bureau of Trademarks and Patents under registration Number 2191299, issued on April 05, 1999, on class 35 (with evidence of payment of registration rate) covering for advertisement, commercial business management and office work commercial administration, with application date on October 23, 1998, with Ibersecurities Agencia de Valores, S.A., as the sole and exclusive listed owner;

d) Federal Trademark Ibersecurities Valores y Bolsa and design, registered in Spain in the General Office of Spanish Bureau of Trademarks and Patents under registration Number 2191300, issued on April 05, 1999, on class 38 (with evidence of payment of registration rate) covering for telecommunications and radio and television program promotional services, with application date on October 23, 1998, with Ibersecurities Agencia de Valores, S.A., as the sole and exclusive listed owner;

e) Federal Trademark Ibersecurities Valores y Bolsa and design, registered in Spain in the General Office of Spanish Bureau of Trademarks and Patents under registration Number 2191302, issued on April 05, 1999, on class 42 (with evidence of payment of registration rate) covering among other activities, legal services and server programming, with application date on October 23, 1998, with Ibersecurities Agencia de Valores, S.A., as the sole and exclusive listed owner;

f) Federal Trademark Ibersecurities Valores y Bolsa and design, registered in Spain in the General Office of Spanish Bureau of Trademarks and Patents under registration Number 2191303, issued on March 22, 1999, on class 16 (with evidence of payment for Title Concession and for rights maintenance for the first five years) covering for publishing, books and magazines, and teaching or instruction materials, with Ibersecurities Agencia de Valores, S.A., as the sole and exclusive listed owner;

g) Federal Trademark Ibersecurities Valores y Bolsa and design, registered in Spain in the General Office of Spanish Bureau of Trademarks and Patents under registration Number 2191304, issued on March 22, 1999, on class 9 (with evidence of payment for Title Concession and for rights maintenance for the first five years) covering equipment for treatment of information and servers, with application date on October 23, 1998, with Ibersecurities Agencia de Valores, S.A., as the sole and exclusive listed owner

h) Federal Trademark Ibersecurities Valores y Bolsa and design, registered in Spain in the General Office of Spanish Bureau of Trademarks and Patents under registration Number 219351, issued on June 7, 1999, on class 36 (with evidence of payment for registration rate) covering for purchase and sale of moveable securities, with application date on October 23, 1998, with Ibersecurities Agencia de Valores, S.A., as the sole and exclusive listed owner;

 

5. Partiesí Contentions

A. Complainant

The Complainant alleged that the domain name "ibersecurities.net", used and registered by Respondent, is identical to the corporate name and international trademark of Ibersecurities, S.A. That it questions the real identity of the holder of such domain name under dispute, as the same has been subject to questionable previous transactions.

That the adoption of a domain name identical to a well known trademark, must be considered as an unfair competition practice, contrary to good faith, generating confusion, constituting imitation and presuming the exploitation of another party reputation. That Respondent pretends to use through the Internet Complainantís trademark which is currently being publicly used by this latter party in the Internet. That Respondent has neither right nor legitimate interest nor registered trademark under the domain name. That Respondent has not used or prepared to use the "ibersecurities.net" domain name in connection with any bona fide offering of goods or services. That such web site is still under construction. That as has been considered in previous domain name dispute proceedings, the sole registration of a domain name does not generate per se a legitimate interest. That the registration was made in bath faith as it was made knowledgeable of the existence of a very well known trademark in the financial markets and with the purpose of obtaining an economic offer for it. That Respondent should have checked who had registered the "dot.com" domain name. That the lack of use of a domain name when registered is and has been considered in other domain name dispute proceedings as abusive domain name registration, and bath faith domain name use and registration.

Lastly, Complainant has requested that the Panel appointed in this proceeding issue a decision ordering that the contested domain name be transferred to the Complainant.

B. Respondent

Respondent replied, that they had registered the trademark Iberica Segurança (sic) in Brazil for the last five years 5 years ago at Brazil and that it has within its corporate purpose the security at condominiums, commercial centers, public places, among and others. That in Brazil there is no ibersecurities trademark and therefore there should be no reason for a conflict. That such trademark is not registered in the United Sates of America. That it is their intended purpose to develop a web page placing their services with an attractive name in English, without using the "ç". That to their understanding, a company does not need all top level domain designations, but should have only one. That this would be against the ICANN policies. Respondent clarifies that they did not acquire the domain name but instead that they registered the "ibersecurities.net" as it was available with Register.com on July 24, 2000.

 

6. Discussion and Findings

The Panel considers that the Respondent by registering the contested domain name with an ICANN accredited domain name registrar, it agreed to be bound by all terms and conditions of the Registrar Service and Registration Agreement, and any pertinent rule or policy, and particularly agreed to be bound by the Policy (incorporated and made a part of the Service Agreement by reference), which policies request that proceedings be conducted according to the Rules and the selected administrative-dispute-resolution service provider's supplemental rules, in the present case being the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. Therefore, the dispute subject matter of this proceeding is within the scope of the above mentioned agreements and policy, and this Panel has jurisdiction to decide this dispute.

Furthermore, the Panel considers that in the same manner by entering into the above mentioned Service and Registration Agreement, the Respondent agreed and warranted that neither the registration of its domain name nor the manner in which it may intend to use such domain name will directly or indirectly infringe the legal rights of a third party, and that in order to resolve a dispute under the Policy, Respondentís domain name registration services may be suspended, cancelled or transferred.

The Panel also particularly considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met.

Such requirements include that the parties and particularly the Respondent in this case be given adequate notice of proceedings initiated against them; that the parties may have a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases; that the composition of this Panel be properly made and the parties be notified of the appointment of this Panel; and, that both parties be treated with equality in these administrative proceedings.

In the case subject matter of this proceedings, the Panel is satisfied that these proceedings have been carried out by complying with such elemental due diligence requirements, and particularly contemplating the notification of the filing of the Complaint and the initiation of these proceedings giving the Respondent a right to respond. That there is sufficient and adequate evidence confirming the above.

Paragraph 4 (a) of the Policy directs that the Complainant must prove the presence of each of the following elements: (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.

This Panel finds that Respondentís Domain Name is identical to Complainantís Ibersecurities trademark.

Furthermore, this Panel finds that there is no indication that, nor the Respondent provided any evidence to the contrary, confirming that the Respondent has any rights or legitimate interests in respect of the domain name as it has not used or prepared to use the "ibersecurities.net" domain name in connection with any bona fide offering of goods or services as contemplated under Paragraph 4 (c) (i) of the Policy; nor that the Respondent is commonly known by the domain name as contemplated under Paragraph 4 (c) (ii) of the Policy; nor that the Respondent is 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 as contemplated under Paragraph 4 (c) (iii) of the Policy. Furthermore, Respondent did not provided evidence nor submitted reasonable argumentation supporting any related or possible legitimate use of such ibersecurities domain name.

The Panel also finds that Respondent has registered and used the Domain Name in bad faith, in particular but without limitation, pursuant to Paragraph 4(b) (iv) of the Policy, in view that Respondent should have been familiar with Complainantsí well known domain name, trademark and activities, and further considers that by Respondent registering and using the domain name under dispute was intentionally attempting to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainantís mark.

This Panel in analyzing this case has found questionable the acquisition of the domain name under dispute by Respondent.

This Panel personally considers that the acquisition or registration of a domain name under a top level domain designation, in a level different to an already registered "dot com", and particularly where there is no previous or preliminary fair use or legitimate interest to an identical or confusingly similar, related trademark, commercial name or domain name, and where there is no clear intention to use such top level domain name under their former intentional entity, organization or institutional purpose, is definitively a questionable acquisition or registration, and most likely subject to generate future domain name or trademark contentions. The acquisition of a top level domain designation, different to an already registered "dot com", presumes the preliminary investigation or view of the applicable "dot com" internet site or page, and therefore presumes the personal knowledge of such "dot com" previous activities, possibly linked to a notorious or well known trademark. Furthermore, upon the occurrence of the above, such acquisition or registration shall be clearly contrary to good faith, and it may potentially be contested as an undue and unfair competition practice, created with the intention to generate confusion by attempting to attract Internet users to such identical or confusingly similar website, or simply to disrupt or compete with such web site in any other manner.

In summary, this Panel considers that Complainant submitted substantial information and documentation supporting its allegations and its legal rights to the domain name under dispute, while Respondent submitted very limited and unsupported allegations.

Lastly, it is hereby noted that no settlement has been reached by the Parties and made known to this Panel prior to the rendering of this Panelís decision, which may eventually affect or give ground for termination of this administrative proceedings as provided for under paragraph 17(a) of the Rules, nor is this Panel aware of the existence or initiation of any other type of legal proceedings before a court of competent jurisdiction for independent resolution, regarding the domain name dispute as contemplated under paragraph 4 (k) of the Policy.

 

7. Decision

Therefore, and in consideration to the Complaintís compliance with the formal requirements for this domain dispute proceeding, to the factual evidence and legal contentions that were submitted, to the conclusive confirmation of the presence of each of the elements contemplated in Paragraph 4 (a) (i), (ii), and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15(a) of the Rules, this Panel decides:

(1) that the Domain Name registered by Respondent is identical to Complainantís trademark "ibersecurities.net";

(2) that Respondent has no rights or legitimate interests in respect of the "ibersecurities.net" Domain Name; and

(3) that the "ibersecurities.net" Domain Name has been registered and is being used in bad faith by the Respondent.

Therefore, the Panel requires, pursuant to what is provided for under Paragraphs 3(c) and 4 (i) of the Policy, that the domain name "ibersecurities.net" be transferred to Ibersecurities, Agencia de Valores y Bolsa, S.A., Complainant.

 


 

Pedro W. Buchanan
Sole Panelist

Dated: December 20th, 2000