WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bodegas Vega Sicilia, S.A. v. www.portaldedominios.com
Case No. D2000-1026
1. The Parties
The Complainant is BODEGAS VEGA SICILIA, S.A. a company incorporated in Spain and seated in Finca Vega Sicilia, Carretera Nacional 122, Km. 323, Valbuena de Duero, Spain. Its representatives are Mr. Antonio Creus, Esq. and Mr. Albert Agustinoy, Esq., of Cuatrecasas Abogados, Madrid, Spain.
The Respondent is "www.portaldedominios.com", an entity of an unknown legal nature, with address at Palacio Valdés 9, Oviedo, Spain.
2. Domain Name and Registrar
The domain name at issue is "vega-sicilia.com", registered with ENOM, INC., of Redmond, Washington 98052, United States of America.
3. Procedural History
On September 19, 2000, the Center received both by e-mail and facsimile a Complaint 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 October 3, 2000, the Center sent to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding.
At the Center’s request, on November 2, 2000, the Registrar ENOM, INC. confirmed to the Center that the domain name at issue is registered with it, that the Respondent is the registrant, as well as the technical, administrative and billing contact, and that the domain name is in "registrar-lock" status.
On October 21, 2000, the Respondent submitted, and the Center received, the Response by e-mail and facsimile. On October 24, 2000, the Center acknowledged receipt of the Response.
After having received Roberto A. Bianchi´s Statement of Acceptance and Declaration of Impartiality and Independence, on October 31, 2000, the Center appointed him as a Sole Panelist. The decision date was scheduled for November 14, 2000. Thus, the Administrative Panel finds that it has been properly constituted.
The Panel sharing the Center’s assessment, 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.
There were no other submissions, nor were extensions granted or orders issued.
The registration agreement for the domain name at issue has been done and executed in English by Respondent-Registrant and the Registrar ENOM, INC. The Parties’ submissions have been made in English, except for some exhibits of the Complaint and the Response, which are in Spanish. There is no need of translation thereof because the Panelist’s mother language is Spanish, and both Parties are resident in Spain. Seeing the Panel no special circumstances to determine otherwise, as provided in Rules, Paragraph 11 the language of this proceeding is English.
4. Factual Background
The following facts, extracted from the Parties’ submissions and undisputed, are established:
BODEGAS VEGA SICILIA, S.A. is a Spanish most reputed wine producer, with a long tradition in the production of extremely prestigious wines that covers almost one century and a half. The Vega Sicilia property’s was established in 1864 by Mr. Eloy Lecanda. At present, the Vega Sicilia’s 250 acre vineyard is exploited by the Complainant, that continues with the traditional blend of 60 % of Tempranillo grape, 25 % of Cabernet Sauvignon grape, 10 % of Merlot grape, 4 % of Marlet grape and 1 % Albillo grape. The average age of the vines is greater than 40 years, with some 80 years old, and the yield is quite small. The property is placed at the Western part of the Ribera del Duero region, in North-Central Spain, in Castilla-León. This is considered as one of the fastest growing wine region in Spain. The Ribera del Duero wine producers grow highly concentrated grapes. The obtained wine is aged for ten years in cask and sometimes longer in bottle before releasing very appreciated wines that can still benefit from cellar aging.
The winemaking procedure used by BODEGAS VEGA SICILIA, S.A. remains completely traditional and the steps taken to insure quality are very strict. Upon arrival at the bodega, a rigorous selection of grapes is made, and only free run juice is used. No wine from the press is incorporated. After a few months in American oak vats, the wines are transferred to a combination of small American and French oak barrels and aged longer than any of the world’s great wines.
The winery produces mainly two wines: UNICO and VALBUENA. UNICO is the Complainant’s most appreciated wine, being generally released only ten years after harvest, spending much of that time spent maturing in oak casks. The production of Unico is currently limited to 8,000 cases. At present, the 1986, vintage is the last one issued for sale, priced for about $ 150 per bottle. VALBUENA is a red wine younger than Unico, that is also extremely appreciated by the specialists. Its production is also limited, being issued about 12,000 cases per vintage.
Vega Sicilia’s wines have been awarded the Bronze Medal at the International Industrial Exposition of 1892, the Gold Medal and the Great Diploma of Honour at the Christmas Exposition held in Madrid in 1927, the Gold Medal and the Great Diploma at the Barcelona International Exposition held in 1927, the Gold Medal and the Great Diploma at the Barcelona International Exposition held in 1929, the 1996 Red Wine World Championship awarded by the Beverage Testing Institute for the 1983 Vega Sicilia Unico.
Vega Sicilia’s wines have also been acclaimed by the wine specialists as one of the best red wines in the world. "Time" included Vega Sicilia Unico in the list of the 12 best wines of the world. The "Guía del Gourmet" called Vega Sicilia Unico as a "unique pearl". In the Wines Pocket Guide by Hugh Johnson Vega Sicilia Unico was awarded with the maximal qualification (4 stars).
80% of the Complainant’s production is marketed in Spain, being the resting 20% exported. Nevertheless, wine-testing sessions of Vega Sicilia’s products are held in many countries, such as United States, United Kingdom, Hong Kong, Japan or Puerto Rico.
BODEGAS VEGA SICILIA, S.A. has not made advertising campaigns.
VEGA SICILIA, S.A. is the owner of at least 41 registrations of the VEGA SICILIA trademark with the Spanish Oficina Española de Patentes y Marcas (OEPM).
VEGA SICILIA, S.A. is the owner of VEGA SICILIA marks in Thailand, Denmark, Gibraltar, Andorra, Bulgaria, Nicaragua, Peru, Dominican Republic, Panama, Guatemala, Greece, Finland, Ireland, Norway, New Zealand, Sweden, Uruguay, Switzerland, Canada, Mexico, Chile, Australia, China, Taiwan, United Kingdom, United States, Japan and Germany. BODEGAS VEGA SICILIA, S.A. has applied for registration of its VEGA SICILIA trademark in India, France, Argentina, Colombia and Brazil. The Complainant has also registered before the World Intellectual Property Organisation the international trademarks "VEGA SICILIA" registered on December 22, 1982, covering Algeria, Germany, Austria, Benelux, Egypt, France, Hungary, Italy, Liechtenstein, Morocco, Portugal, Rumania, Saint-Marino, Switzerland, Cheque Republic, Tunisia, Soviet Union and Yugoslavia with registration number 473474. "BODEGAS Y VIÑEDOS VEGA SICILIA" was registered on August 2, 1991, as a Class 33 trademark, covering Algeria, Germany, Austria, Benelux, Bulgaria, China, Cuba, France, Hungary, Italy, Liechtenstein, Morocco, Monaco, Portugal, Rumania, Saint-Marino, Switzerland, Czech Republic, Soviet Union and Yugoslavia, with registration number 574348. "VEGA SICILIA" registered on January 29, 1992, as a Class 33 trademark, covering China, Cuba and Ruse Federation, with registration number 583120.
The Respondent registered "vega-sicilia.com" with ENOM, INC.
5. Parties’ Contentions
A) The Complainant contends:
"vega-sicilia.com" is totally identical to the trademark "VEGA SICILIA". The disputed domain name was registered by a third party that has no relationship at all with the legitimate owner of the rights related to the "VEGA SICILIA" trademarks. The registration by the Respondent of "vega-sicilia.com" was not guided by a legitimate purpose, as it could be the use of the domain names for the development of the commercial activities linked to a trademark owned by the Registrant. None of the other domain names registered by the Respondent corresponding to third parties’ trademarks are not used either. Respondent has never had any right on the trademarks referred to the name "VEGA SICILIA". BODEGAS VEGA SICILIA, S.A. is the only holder of the rights related to the "VEGA SICILIA" trademark, without any participation by the Respondent or any third party in such rights. Respondent does not have a fair interest or right on the "VEGA SICILIA" trademark and, thus, has no legitimacy for using such a trademark. Consequently, the Respondent has no right at all to the "vega-sicilia.com" domain names. Respondent registered the disputed domain name for the purpose of impeding BODEGAS VEGA SICILIA, S.A.’s use of the disputed domain names, since it looks like the Respondent has no legitimate right on the trademarks corresponding to the name "VEGA SICILIA" and it is not using at all the disputed domain name.
Respondent, "www.portaldedominios.com", is a web site dedicated to the sale, rent and auctions of domain names corresponding to Spanish prominent trademarks as well as to geographical zones and domain names that can somehow be attractive to buy. The registry of those domain names covers a wide range of sectors and trademarks, such as football teams (alaves.org), television programs (lluviadeestrellas.com) beverages (pacharan.net), city names (madrid-online.com, barcelona-online.com), region names (illes-balears.net), country names (ucrania.org, kazajstan.com, kirguistan.com, paisesbajos.org) gastronomic products (aceitedegirasol.org, aceitunas.org, embutidoiberico.com), etc. Actually, "www.portaldedominios.com" is even offering for sale its own domain name (portaldedominios.com). At the time of registering the disputed domain names, the Respondent was basing its behaviour on criteria completely opposed to good faith, as such a registration corresponded to an evident "cybersquatting" strategy. From the moment the respondent registered the disputed domain name, it has not included any content on the corresponding web page. Indeed, the web page linked to the disputed domain name offers no content at all. Regarding the use of the disputed domain name, bad faith has been given in two senses: the purchase of the disputed domain name by a company dedicated to the sale and auctions of domain names, and its lack of use since the registration. Although at the date of filing the present complaint Respondent has not offered the domain name for sale or in an online auction, taking into account what the business of the Respondent is, Respondent has sought to profit from the mere registration as a domain name of a well-known trademark. Its sole purchase by a web site dedicated to sale and auction of domain names constitutes an evidence of a bad faith offer. Indeed, there is no evidence that the Respondent had a purpose for registering the disputed domain name other than for the purpose of selling it for a price in excess of its out-of-pocket costs directly related to the name, which determines such registration and use to be in bad faith. Respondent is specialized in that kind of transactions, taking into account that in the "portaldedominios.com" web page it includes concrete instructions for the development of online auctions referred to domain names, as well as instructions for renting a domain name. Previous decisions have clearly established that such a behaviour constitutes "bad faith" in the sense foreseen by the Policy. By registering "vega-sicilia.com", the Respondent was aiming to sell, rent or transfer it to the Complainant or to a third person for a valuable consideration in excess of out of pocket expenses. Respondent behaved in bad faith by trying to sell the disputed domain name on a public Internet auction. The Respondent has adopted a passive attitude regarding the web pages linked to the disputed domain names. The Respondent has never included any content linked to the disputed domain name. Concerning such type of behaviour, the decisions adopted in accordance with the Policy have considered that for such an evaluation, all the circumstances referring to the Respondent’s behaviour must be taken into account. It may be considered that the Respondent has behaved in bad faith if circumstances show that the passive tenancy of a domain name has implied a use in bad faith.
In support of its request of transfer of the domain name registration, Complainant cites the following sources to the Panel: Case D2000-0018, Article 1282 of the Spanish Civil Code, Case D2000-0277, Case D2000-0020, Case D2000-0239, etc.
B) Respondent alleges:
Warehouses Vega Sicilia are one of the thousands of warehouses that exist in Spain. Vega Sicilia bottles wine of the region called Ribera del Duero. One of the wines that it bottles has a price of $150 the bottle. According to campaigns declares in the demand: "has never neither made advertising campaigns". All the wine that is bottled in Spain with denomination of origin, only a 3.5% comes from the Ribera del Duero, (and this between all the warehouses that these work productos) as opposed to 35% coming from the Rioja, 11% of Valdepeñas 8.9% of Penedes 8.5% of Navarra the 6.3 of Jumilla and the 4.1 of La Mancha (too in Spain are more wine without denomination origin).
The wines which these warehouses mainly sell are " Unico " and " Balbuena " (these brands have never registered their dominions), which are not sold in regular stores, but only in specialized shops which sell gourmet products of very high price, available only to a small part of the population. The wines sold by Warehouses Vega Sicily are not found in the Spanish bars and restaurants; only in very high-class locations where prices are very expensive. As much the activity of the Warehouses Vega Sicily like their products is unknown for majority of the Spaniards and also for majority of the rest of the world in which they operate the dominions of Internet.
"portaldedominios.com" is a commercial name used by responding, and "naranco.com" (registered in 1996, and with the same direction) is too one commercial name, both pertaining ones to Informatica Uria S.A.,(INUSA) a informatica society of Oviedo (Spain). This company belongs to a group of companies of different activity (commercial, investing, advisor, construction). One of the activities is the creation and development of Web sites, either by order, or by own initiative:
"www.naranco.com/fundoma", "www.naranco.com/salamurillo", "www.alcotan.com" "www.kobrither.com", "www.inamania.com", "www.vega-sicilia.com" (under construction) etc…
Another activity is the legal transaction and rent of domains
We have never registered the domain of a brand (since 1996). We have never had claims, and we have registered, for different uses, (sale, development, investment, rent) more than 1,000 domains.
Vega and Sicilia are two common words in every Spanish dictionary. The meaning of VEGA is fertile valley. The meaning of VEGA-SICILIA is fertile valley of Sicily. The dominion was registered lawfully with the purpose of developing a Web of entertainment. Vega-Sicilia.com is the same as the brand Vega Sicilia, but they are two words of the common Spanish and Italian language, and the brand "Vega Sicilia" is not a well-known one for the population like "Coke" or "Ford". The brand "Vega Sicilia" is only known by people who drink very expensive wine, which is not advertised. The Respondent registers on September 7, 2000, a free dominion, for a legitimate use. The respondent did not register the dominion in bad faith, but in good faith and with the intention of giving a concrete use to it.
Referring to the affirmation of the plaintiff: We have not registered, and we have not announced in our Web (not all the domains which appear on it belong to us) dominions which can arouse any conflict with any trademark."alaves.org" Definition of the Spanish dictionary of Alaves "Of Alava " (Alava is a city from Spain). "lluviadeestrellas.com" (StarRain) Attached texts of the famous and multiple known stellar events anywhere in the world as star rain. "pacharan.net" Attached definition in the dictionary of this drink (" Licor of endrinas macerated in brandy ") "madrid-online.com" The registry of this domain is not only totally legal (that’s why we have allowed it to be announced in our Web), but it does not even belong to us, like some other dominions which the Plaintiff mentions and which are totally legal, formed by very common words. It is evident that Respondent is very careful about nod damaging other people’s rights. It is evident the non-existence of bad faith. In the demand, the Plaintiff affirms:
"In the present case, from the moment the respondent registered the disputed domain name, it has not included any content" y "Regarding the use of the disputed domain name, bad faith has been given in two senses: the purchase of the disputed domain name by a company dedicated to the sale and auctions of domain names, and its lack of use since the registration".
We registered the domain "Vega-Siclia.com" on September 7, 2000. The representative of the plaintiff seny (sic) us on September 19, 2000, one mail with the demand. It is evident that since September 7, 2000, to the day September 19, 2000, there was not given enough time to make a Web. The page that appears is put by "www.enom.com" (the register) to all the dominions registered.
Referring to the preparations to make the Web. We have already prepared the ip, the dns server and the space for "www.Vega-Sicilia.com". And it also seems evident that the Plaintiff is making affirmations in bad faith, because he must necessarily know that it is almost impossible to launch a Web in a few days. (We can question him for example how much time it took since the registry of the "www.cuatrecasas.com" Web till its launch. It is evident that the brand Vega Sicilia" and the domain "Vega-Sicilia.com" are almost identicos but The respondent do not have knowledge of the brand Vega Sicilia. The brand Vega Sicilia" is not a sufficiently well known brand (it has never neither made any advertising campaigns, it is elitist etc...)The respondent has a legitimate interest in the "vega-Siclia.com" dominion for developing a Web. The respondent has never registered dominions of trademarks- The respondent has registered dominions from 1996. The respondent registers the domain "vega-sicilia.com" in good faith on September 7, 2000, (on September 17, 2000, it receives the demand by e-mail).
The respondent registers the domain in good faith. It is evident that the dominion name was not registered for the purpose of selling, renting, or otherwise transferring the dominion name registration to Complainant
6. Discussion and Findings
Identity of Confusing Similarity
Beyond any doubt, the Panel finds that the domain name "vega-sicilia.com" is almost identical or, having in mind the inclusion of a hyphen and the ".com" gTLD, at least confusingly similar to the trademark VEGA SICILIA of the Complainant. As alleged by Respondent, VEGA means in Spanish a wet or flat land. SICILIA is Sicily, the name of the Italian island in the Mediterranean. However the combination both words constitutes the trademark of the Complainant. As a result of this combined use the expression "VEGA SICILIA" is distinctive, it has been registered as a trademark, and it has not been alleged by the Respondent to be any other thing but the trademark of the Complainant.
The numerous VEGA SICILIA trademark registrations by the Complainant, both in Spain and in many other countries, totally outweigh the allegations by the Respondent, that the VEGA SICILIA trademark is not known by the general public. It is evident that the VEGA SICILIA wines are expensive products, but the same could be said of many trademarks that are well known and even famous within a very specialized market. In any case the numerous Spanish registrations of the VEGA SICILIA trademark by Complainant do not allow any person resident in Spain as the Respondent to contend in these proceedings that it did not know the existence of the registered trademark at the moment of the domain name registration.
The Panel thus finds that the Complainant has met its burden under Policy, Paragraph 4(a)(i).
Lack of Rights and Legitimate Interests
The Complainant has denied very specifically that the Respondent has any right or legitimate interest in the domain name. According with Rules, Paragraph 5(b)(i) and 5(b)(ix) Respondent generally carries the burden to specifically respond to the Complaint, and to present any documents in its favor. In order to prove rights and legitimate interests in the domain name Respondent may refer to Policy, Paragraph 4(c).
In the instant case Respondent preferred not to make any specific allegation, except – in fact too vaguely- that it plans to develop a web site at "www.vega-sicilia.com".
In particular, Respondent has not claimed to be currently known by the domain name, or that it has used or demonstrably prepared to use the domain name in a bona fide offering of products or services, or that Respondent is fairly using the domain name.
It is true that the time period between the domain name registration and the receipt of the complaint by the Respondent has been very short. However, under Policy, Paragraph 4 (c)(i), Respondent could have alleged – if present – any "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". Under the present circumstances, the choice by Respondent of a domain name which is almost identical to another person’s famous or well known trademark, and where both Parties are resident in Spain, the lack of any credible explanation as to such preparations leads the Panel to infer that they do not exist.
The fact that Respondent is in the business of registering and selling domain names does not allow in itself to find anything in favor of the Respondent. To the contrary, the lack of any active use of, or any demonstrable preparation to use the domain name, allows to infer that the domain at issue is to be subject to the same practice by Respondent. As seen above, in the instant case the domain name at issue is not a generic word or expression such as many other domain names registered and offered for sale by Respondent.
The Respondent expressly admits that the web site corresponding to the domain name is "under construction".
The Panel finds that the Complainant has met its burden under Policy, Paragraph 4(a)(ii).
Bad Faith Registration
Complainant contends that the only goal of the registration of the domain name at issue was "to impede the use of the disputed domain name by VEGA SICILIA, S.A. The lack of use of the disputed domain name, appears to show that the Respondent, when registering the disputed domain names, was not aiming at using them for any kind of professional or private activities. It looks as if the Respondent was only intending to impede the registration of the disputed domain names by the legitimate owner of the "VEGA SICILIA" trademarks, aiming at further reselling it whether to the Complainant, whether to any other third party interested on it."
Respondent asserts that it registered the domain "in good faith. It is evident that the dominion (sic) name was not registered for the purpose of selling, renting, or otherwise transferring the dominion name registration to Complainant".
The Panel believes that assessing a subjective state of mind such as the registrant’s purpose at the moment of the registration would be an almost impossible task if it could not be undertaken through inferences drawn from real conduct. Complainant’s business is registering and selling domain names for a profit. It seems evident that the price for such sales must necessarily be higher than out-of-pocket expenses related to the domain name registration; otherwise it could not be said to be a "business".
The domain name at issue almost slavishly copies the Complainant’s trademark VEGA SICILIA, which is not of a generic or common-use nature. The Respondent has not submitted any credible explanation as to its choice of such a domain name. Therefore the Panel finds that Respondent registered the domain name at issue with the primary purpose of selling it to the Complainant for a sum higher than effective registration costs, that is, at an unfair profit. This is a bad faith registration circumstance under Policy, Paragraph 4(b)(i).
The Panel finds that the Complainant has met its burden under Policy, Paragraph 4(a)(iii).
Use in Bad Faith
For all practical purposes, the web site corresponding to the domain name is inactive, which has been accepted by Respondent. This does not mean that there is no use of the domain name. Many decisions in WIPO cases have precisely addressed this issue. In particular Case D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows established a sound criterion where inactivity and relevant circumstances, if present, allow a finding of bad faith use. In the instant case the Panel considers the following relevant circumstances:
a) As contended by the Respondent itself, its business is registering and selling domain names since 1996. There is no guarantee that the "vega-sicilia.com" domain name is not to be subject to this business. In fact Respondent has not shown any convincing proof that it is using or preparing to use the domain name at issue for any other purpose than selling it at a profit.
b) The permanence of the present domain name registration equals to prevent the Complainant to reflect its well known trademark VEGA SICILIA in the corresponding domain name, and to undertake business on the Internet thereunder.
c) The present inactivity of the domain name leads to possible confusion among Internet users - including present or eventual customers of the Complainant - who are looking for the web site of the Complainant by using any current browser. The lack of any activity of the domain name may lead them to conclude that the Complainant does not own a web site or that it is unable to have one.
d) Both parties are resident in Spain. Under similar circumstances Spanish Courts have granted preliminary injunctions against the domain name holders of "nocilla.com" and "metacampus.net" based on the Spanish Trademark Act of 1988, and the Unfair Competition Act of 1991, in cases where the plaintiffs were the owners of trademarks to which the challenged domain name registrations were identical or confusingly similar. See WIPO Cases D2000-0163 Raimat, S.A., D2000-0219 Uralita, S.A., D2000-0467 METRO BILBAO, S.A., D2000-0592 Canonais, S.A. and D2000-0883 Antena 3 de Televisión, S.A.
These circumstances together lead the Panel to a finding of bad faith use of the domain name, and to conclude that the Complainant has met its burden under Policy, Paragraph 4(a)(iii).
The Panel has found that the domain name "vega-sicilia.com" is almost identical or at least confusingly similar to the VEGA SICILIA trademarks of the Complainant, and that the Respondent have 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 is being used in bad faith.
Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel requires that the registration of the domain name "vega-sicilia.com" be transferred to the Complainant, BODEGAS VEGA SICILIA, S.A..
Roberto A. Bianchi
Dated: November 14, 2000