WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FRAVEGA S.A. v. Alejandro Razzotti
Case No. D2000-1268
1. The Parties
The complainant is FRAVEGA S.A., a company incorporated and doing business in Valentín Gómez 2813, (1191) Buenos Aires, Argentina (the "Complainant"), represented in this proceeding by Mr. Pablo Schmukler and Mr. Adrián Zapatero, Av. de Mayo 633 piso 5, Buenos Aires, Argentina.
The respondent is Mr. Alejandro Razzotti, an individual person with an address at Neuquen 940, Buenos Aires 1405, Argentina (the "Respondent").
2. Domain Name and Registrar
The domain name at issue is <fravega.com>, registered with REGISTER.COM
Domain Registrar, 575 8th. Avenue – 11th. Floor, New York, NY 10018, United States of America.
3. Procedural History
On September 26, 2000, the Center received by e-mail 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 September 28, 2000 the Center acknowledged receipt of the Complaint. On October 2, 2000 the Complaint was received in hardcopy.
On October 27, 2000, the Center sent via FedEx to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding.
At the Center’s request of October 19, 2000, the registrar REGISTER.COM confirmed on October 26, 2000 to the Center that the domain name at issue is registered with it, that the registrant and administrative contact is Mr. Alejandro Razzotti, that the Policy is applicable to the domain name at issue, and that the domain name is active.
On November 15, 2000, the Center received the Response by e-mail. On November 20, 2000, the Response was received by the Center in hardcopy.
After having received Roberto A. Bianchi´s Statement of Acceptance and Declaration of Impartiality and Independence, on November 23, 2000, the Center appointed him as a Sole Panelist. The decision date was scheduled for December 6, 2000. Thus, the Administrative Panel finds that it has been properly constituted.
The Panel sharing the Center’s assessment of October 26, 2000, 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. In particular, and
despite Respondent´s contention, the Panel finds that Complainant has made sufficiently clear in its Complaint, chapter VI, that it requests the remedy of transfer of the domain name at issue, in compliance with Policy, Paragraph 4(i) and Rules, Paragraph 3(b)(x).
There were no other submissions of the Parties, 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. The Parties’ submissions have been made in English. The Panel considers that there are 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 their enclosed documents, and undisputed, are established:
FRAVEGA S.A. is a 90 years old company with 62 branches all over Argentina: BUENOS AIRES (35), CORDOBA, MENDOZA, LAFERRERE, BAHIA BLANCA, MAR DEL PLATA, ROSARIO, SANTA FE, TUCUMAN, SALTA, PARANA, NEUQUEN, FRANCISCO SOLANO, RESISTENCIA, SAN JUAN, RIO CUARTO, SANTIAGO DEL ESTERO, JOSE C PAZ, BAHIA BLANCA, FLORIDA, MENDOZA (2), SALTA.
On September 9, 1993, the following FRAVEGA trademark registrations were granted to the Complainant in Argentina: class 7, 1469379; class 9, 1469380; class 11, 1469381; class 1, 1469382; class 2, 1469383; class 3 1469384; class 4, 1469385; class 5, 1469386; class 6, 1469387; class 7, 1469388; class 8, 1469389; class 9, 1469390; class 10, 1469391; class 11, 1469392; class 12, 1469393, class 13, 1469394; class 14, 1469395; class 15, 1469396; class 16, 1469397; class 17, 1469398; class 18, 1469399; class 19, 1469400; class 20, 1469401; class 21, 1469402, class 22, 1469403; class 23, 1469404; class 24, 1469405; class 25, 1469406; class 26, 1469407: class 27, 1469408; class 28, 1469409; class 29, 1469410; class 30, 1469411; class 31, 1469412; class 32, 1469413; class 33, 1469414; class 34, 1469415; class 36, 1469416; class 37, 1469417; class 38, 1469418; class 39, 1469419; class 40, 1469420; class 41, 1469421; class 42, 1469422. On June 6, 1993 the following FRAVEGA trademark registrations were granted to the Complainant: class 42, 1452486; class 35, 1449830; class 36, 1449831; class 37, 1449832; class 38, 1449833; class 39, 1449834; class 40, 1449835; class 41, 1449836. On November 30, 1993 the FRAVEGA trademark registration was granted: to the Complainant: class 35, 1483885. Several others trademark registrations containing the expression "FRAVEGA" were also granted in Argentina to the Complainant . The FRAVEGA trademark was granted to the Complainant in Brazil (Class: 9/50, 16495815), Chile (Class: 9, 406307), and Uruguay (Classes: 12, 7, 9, 11 and 14, 143364; Classes 7, 9, 11, 14, 294171).
Complainant has registered the domain name FRAVEGA.COM.AR and has an active web site thereunder, where home appliances are being marketed.
The Respondent registered <fravega.com> with REGISTER.COM on March 26, 2000.
The Policy is in effect for the registrar and the registrant-Respondent, and may therefore be invoked by Complainant.
5. Parties’ Contentions
A. The Complainant contends
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.
In accordance with a private investigation carried out by the Complainant the Respondent has no commercial activity neither in Argentina nor in any other country related with fravega.com. In fact, if this domain name is typed the REGISTER.COM home page is showed because no web site is related with this domain name. Therefore he has no legitimate interest in respect to fravega.com domain name. Considering that FRAVEGA is a famous trademark in Argentina and that the Respondent is also an Argentine citizen, it seems to be a "miraculous" coincidence between the domain name chosen and the name of our company. Bad faith seems to be the explanation of this choice.
Fravega is a 90-years old company with 62 branches all over Argentina. FRAVEGA S.A. has branches in following places in Argentina: BUENOS AIRES (35 branches), CORDOBA, MENDOZA, LAFERRERE, BAHIA BLANCA, MAR DEL PLATA, ROSARIO, SANTA FE, TUCUMAN, SALTA, PARANA, NEUQUEN, FRANCISCO SOLANO, RESISTENCIA, SAN JUAN, RIO CUARTO, SANTIAGO DEL ESTERO, JOSE C PAZ, BAHIA BLANCA, FLORIDA, MENDOZA (2 branches), SALTA.
The Complainant has registered fravega.com.ar and there is an important web page with this domain name operating for selling home products like refrigerators, TV sets, ovens, etc., at NIC Argentina but .COM domain names are the most valuable and easy-to-remember domain names and we can not use it because of the Respondent’s registration.
It is obvious that the Complainant has legitimate interest and good faith for acquiring fravega.com domain name and even when Complainant tried to contact the Respondent to reach to an agreement no reply was obtained
B. Respondent contends:
The store called Fravega might be known in Argentina, or more specifically in those places where the store has branches, but that is not the case in the United States, where the FraVeGa project is planned to take place. On the contrary, in the United States, the name FraVeGa is completely unknown.
Fravega is an Argentine domestic store with no international business whatsoever. It has not been evidenced, either that the Complainant is taking or planning to take any action to set stores out of Argentina and more importantly, in the United States. Therefore, the current "fravega.com.ar" web site is perfectly serving the store’s scope of domestic clients. As a matter of fact, the domain name, was registered in July 24, 1997, as can be evidence in the copy of NIC-Argentina database, attached as Annex 1, and up-to-date there has not been any interest on behalf of the Complainant in obtaining a Fravega domain name other than the one it currently has, notwithstanding the fact that, as the Complainant itself states, the ".com domain names are the most valuable and easy to remember domain names." In conclusion, the FraVeGa.com domain name, is not identical or confusingly similar to any trademark or service mark in the United States to which the Complainant may have any right. ICANN Rule 3(b)(ix)(1) ICANN Policy 4(a)(i)
It is the position of this Respondent that we have full and lawful title to the FraVeGa.com domain name. In fact, in March 26, 2000, when FraVeGa.com was registered through Register.com, this Respondent fully complied with all the requirements set forth by the registering organization. Moreover, up to date, at has been stated in the Complaint, this Respondent has not carried out any commercial activity neither in Argentina nor in any other country related to the Complainant or in violation of any law or legal statute. The Respondent is involved in a different market, different scope and different jurisdiction to the Complainant and does not expect any conflict of interests within our respective commercial activities and therefore, it can not be validly held that the Respondent is utilizing the FraVeGa.com domain name for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. As complete ratification of our statement, it should be noticed that the Complainant has not argued in any manner whatsoever against it.
In connection with our legitimate interest in having the FraVeGa.com domain name, while filing the FraVeGa.com registration form there was no requirement of registering our domain name within a certain commercial activity, and we fully complied with all the required steps imposed by Register.com, one of them, was of course not been in conflict with an identical domain name. Although not the only applicable rule, within the Internet registration process, as it happens in many other registration processes of the world, such as the real state registrations, the old Roman law principle, prior in tempore, potior in ure, first in time, first in law, should fully apply to this case. Again, this has never been contested by the Complainant in full consent it. ICANN Rule 3(b)(ix)(2) ICANN Policy 4(a)(ii) ICANN Policy 4(c).
As it has been clearly stated at the Complaint, "…even when we (the Complainant) tried to contact the Respondent to reach an agreement no reply was obtained"(sic). The previously described statement clearly demonstrates that it has never been in the Respondents´ purpose to sell, rent, or otherwise transfer the domain name registration to the Complainant. ICANN Rule 3(b)(ix)(3) ICANN Policy 4(a)(iii) ICANN Policy 4(b)(i).
It has never been in the Respondents’ intention to prevent the Complainant store from reflecting its trademark in its corresponding domain name, which has been since July, 1997, fravega.com.ar. As was previously stated, the Respondent business will be launched in a market and a jurisdiction alien to the one of the Complainant; with no goals of reaching the Argentine market, the only market developed by the latter. In conclusion, there is no evidence which might support that the domain name in question, has been registered to prevent owner of the trademark from reflecting the mark in a corresponding domain name. ICANN Rule 3(b)(ix)(3) ICANN Policy 4(a)(iii) ICANN Policy 4(b)(ii).
There are no indications in the Complaint that the Respondent has registered the domain name in dispute for the purpose of disrupting the business of a competitor. As has been previously stated, our businesses do not conflict in any manner with Argentine stores in general and with the Complainants’ store in particular. ICANN Rule 3(b)(ix)(3) ICANN Policy 4(a)(iii) ICANN Policy 4(b)(iii)
Under no circumstance the activities carried out by neither the Respondent nor the application of the FraVeGa.com domain name can be argued to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s web site or other on-line locations. Since the Respondent’s web-site is currently being designed, the only place where the users can access at the present is the Register.com web site, and therefore it can not be evidenced that any activity carried out by the Respondent may have possibly attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line locations. Furthermore, no market share or similar evidence has been submitted by the Complainant in this aspect. In summary, it can not be validly considered the Respondent’s activities as intentionally attempting to attract, for commercial gain, Internet users to Respondent’s web site or other on-line locations. ICANN Rule 3(b)(ix)(3) ICANN Policy 4(a)(iii) ICANN Policy 4(b)(iv).
As provided by ICANN Policy 4(a), "…In the administrative proceeding, the complainant must prove that each of these three elements are present", and none, or at least not the three of them are present in the Complaint, the Respondent requests the Panel to fully reject the Complainant’s petition and respect the Respondent’s lawful right to hold the FraVeGa.com domain name.
Since there is no remedy requested by the Complainant (see Complaint, part VI, p. 13) the Respondent requests the Panel to fully reject the Complaint and decides for the Respondent’s petition to continue lawfully holding the FraVeGa.com domain name. ICANN Policy 4(a) ICANN Policy 5(b)(i) ICANN Policy 7.
6. Discussion and Findings
Identity of Confusing Similarity
Although Complainant has not presented any trademark registration certificates, Complainant has submitted a detailed list of registration numbers, countries, classes and registration dates of the FRAVEGA trademark. See 4 above. Respondent has not contested the fact that Complainant FRAVEGA S.A. is the owner of the FRAVEGA trademark. FRAVEGA is not a generic or common-use expression. In fact "Fravega" is an Italian family name. The Panel cannot afford any weight to Respondent´s contention that FRAVEGA is not known outside Argentina or in the USA, because Respondent has not evidenced that he is really a resident in USA, or that he is not an Argentine citizen, or that he has not really an address in Argentina, or that Respondent does not know the trademark FRAVEGA.
A simple comparison of the domain name and the FRAVEGA trademark leads the Panel to find that the domain name <fravega.com> is identical or, having in mind the inclusion of the ".com" gTLD in the domain name registration, at least confusingly similar to the FRAVEGA trademark.
The Complainant has met its burden under Policy, Paragraph 4(a)(i).
Lack of Rights and Legitimate Interests
The Complainant has specifically denied that the Respondent has any right or legitimate interest in the domain name. According to 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, for instance, refer to Policy, Paragraph 4(c).
Respondent has referred to an alleged "FraVeGa project" in following terms:
"In fact, the name and registration of FraVeGa.com started as the combination of the first letters of the people’s names involved in the project. The idea was taking advantage of the electoral process in the U.S. to launch a site about politics and policy made by young people from different countries (even an Argentine person) concerned on civic participation. Although the project was not ready at the time we planned, essentially because financial reasons, we still believe that Internet is a major tool to increase people’s interest in the common good. My own personal experience of studying and working in the U.S., mainly in Washington D.C., convinced me about that." Response, 3(a).
Respondent has not presented any evidence of such allegation. It particular, it has not stated the first letters of the names or nicknames of the persons allegedly combined to shape the word "FraVeGa", nor it has presented any evidence of such an assertion. This lack of any precision does not favor Respondent, as it has not denied Complainant´s assertion that he is an Argentine citizen, who in principle could not ignore the fact that FRAVEGA is a most renowned trademark in Argentina. Furthermore, according with the REGISTER.COM registrar´s records Respondent has its address in Buenos Aires.
In the absence of any evidence, the Panel concludes that Respondent´s allegations on a projected development of a web site are of an ad hoc and baseless nature.
The Panel considers that mere registration cannot be the sole basis for establishing rights or legitimate interests in a domain name. The Panel accepts in this respect the reasoning by the learned panelist in WIPO Case D2000-0044 Educational Testing Service v. TOEFL (page 6):
"If mere registration of the domain name were sufficient to establish rights or legitimate interests for the purposes of Paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no Complainant could succeed on a claim of abusive registration. Construing the Policy so as to avoid an illogical result, the Panel concludes that mere registration does not establish rights or legitimate interests in a domain name so as to avoid the application of Paragraph 4(a)(ii) of the Policy".
The Panel considers that Respondent´s allegation on its preparations to develop a web site are unsubstantial. Policy, Paragraph 4(c)(i) requires that in order for such preparations to be afforded any credibility they must be demonstrable ("before any notice to you 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"). Nor has Respondent evidenced that it is currently known by the expression "FraVeGa", or by the domain name, or that it is fairly using the domain name.
On November 28, 2000 the Panel has independently confirmed that a connection to the web site www.fravega.com is automatically re-directed by the registrar REGISTER.COM to its http://futuresite.register.com/future.shtml web page, whose text is: "Coming soon! We recently registered our domain name at ... register.com". Thus, the domain name at issue lacks any use, apart from the fact of its mere registration.
The Panel finds that the Complainant has met its burden under Policy, Paragraph 4(a)(ii).
Bad Faith Registration
Respondent has denied that it is trying to sell the domain name at issue. Complainant has not contended that Respondent had such a purpose at the moment of the domain name registration or thereafter.
However it is clear the Respondent could not ignore the existence of the renowned FRAVEGA trademark of the Complainant at the time of the domain name registration. Respondent is most likely an Argentine citizen - it has not denied such a fact - and has given an address in Buenos Aires, Argentina in the registration form with REGISTER.COM. Respondent has failed in establishing any rights or legitimate interests in the domain name. See above. This means that Respondent has - at least partially - incurred in the circumstance of bad faith registration described in the Policy, Paragraph 4(b)(ii), which reads:
"(...) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct;"
There is no evidence that Respondent has engaged "in a pattern of such conduct" (i.e. the registration of other domain names which correspond to third parties' trademarks other than Complainant´s ). However, by its registration of the domain name at issue, Respondent is preventing the Complainant from reflecting its trademark FRAVEGA in the corresponding domain name under the ".com" gTLD.
An independent search of the WHOIS database conducted by the Panel on November 28, 2000 showed that the Respondent Mr. Alejandro Razzotti is also the registrant of the <fravega.net> domain name with the same address in Buenos Aires as provided in the <fravega.com> registration. A connection by the Panel conducted on the same day to the www.fravega.net web site of the Respondent had the same result as the connection to the www.fravega.com web site. Whether or not Mr. Razzotti is engaging in a "pattern of such conduct", Respondent is most effectively preventing Complainant from reflecting its FRAVEGA trademark in the corresponding ".com" gTLD and in the corresponding ".net" gTLD.
The Panel thus finds that the Complainant has met its burden under Policy, Paragraph 4(a)(iii), in that the domain name was registered in bad faith.
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 addressed this very 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) Respondent has not shown any convincing proof that it is using or preparing to use the domain name at issue for any legitimate purpose. Respondent has presented an insubstantial and unproven allegation about its preparations to use the domain name.
b) Respondent has not denied that he is an Argentine citizen, or that the Complainant´s mark is widely known in Argentina. It has certainly not denied that Respondent knew the FRAVEGA trademark of the Complainant at the time of the domain name registration. Respondent has only stated that the mark is not known in the USA, but it has failed to demonstrate any credible preparations to use the domain name.
c) The permanence of the present domain name registration, together with the registration by Respondent of the <fravega.net> domain name equals to prevent the Complainant from reflecting its well known trademark FRAVEGA in any corresponding domain names under gTLDs with commercial value (".com" or ".net"), and to conduct business on the Internet thereunder.
d) The present inactivity of the web site under the domain name at issue leads to possible confusion among Internet users - including present or eventual customers of the Complainant - who may be looking for the web site of the Complainant by using any current browser. The inactivity of the web sites both under the ".com" as well as under the ".net" gTLDs may lead Net surfers to believe that the Complainant does not own a web site, or that it is unable to have one.
e) Respondent has stated in the Response that its contact address is at 1008 Massachusetts Ave., Apt. #402, Cambridge, MA 02138, USA despite the fact that the domain name registration record states that its address is in Buenos Aires. Under this circumstance Respondent should have shown more convincingly that he is a permanent resident in the USA, and not in Argentina, as indicated on the domain name registration record. However the Notification of Complaint and Commencement of the Administrative Proceeding, with the hardcopy of the Complaint, was sent by the Center via courier to the Respondent at its address of Neuquen 940, Buenos Aires 1405, Argentina. According with the Tracking Report corresponding to Airbill Number 821390263349 the FedEx package was in fact received on October 31, 2000 at 2:21 p.m. at such address by a person who signed "M. Razzoti". This means that, contrary to Respondent´s contention, it keeps its address in Buenos Aires, Argentina as it stands on the record of the registrar. In fact, the Panel considers that Respondent is most likely attempting in this proceeding to divert the Panel´s attention from the fact that its most likely place of permanent residence is Buenos Aires, Argentina, and not the USA. This attempt was probably directed at supporting Respondent´s assertion that the FRAVEGA trademark is not known in the USA, or to afford some credibility to the insubstantial allegation about a so called "FraVeGa project" to be conducted in the USA, which suggests bad faith on the part of the Respondent.
f) Both parties are resident in Argentina. It is generally accepted by WIPO Panels that when the Parties are residents of the same country, panels may look to the law of such country, as deemed applicable by the panel, and to judicial decisions thereunder. See WIPO Case D99-0001 World Wrestling Federation and many others accepting its reasoning.
Federal Courts in Argentina have decided several cases where trademark owners and even tradename holders were granted preliminary injunctions prohibiting the registrant-defendant to use a domain name identical to the trademark under the ccTLD ".ar" managed by NIC ARGENTINA, and even ordering the registrar to provisionally transfer the domain name registration to the plaintiff (the trademark owner). See Cases "Heladerías Freddo s/ medidas cautelares", Buenos Aires, November 26, 1997, Juzgado de 1ra. Instancia en lo Civil y Comercial Federal Nº 7, Secretaría Nº 13, and "Pugliese", Cámara Nacional de Apelaciones en lo Civil y Comercial Federal, Sala II, Buenos Aires, December 30, 1999. Federal Courts in Argentina are likely to order a provisional transfer of the domain name to the trademark owner when fumus boni juris and periculum in mora have been evidenced. The trademark owner is sometimes required to deposit a real warranty deemed sufficient by the court. Other times a personal warranty has sufficed. The legal basis for injunctions in those cases has been Article 232 of the Civil and Commercial Procedural Code and Article 50.2 of TRIPS. In order to provisionally enjoin that a domain name be transferred, a Court in Argentina does not need to examine if bad faith use of the mark has effectively taken place.
Having in mind those precedents this Panel believes that were the domain name registered under the ".ar" ccTLD and had the facts and evidence of the instant case been the subject of a proceeding under Argentina´s substantive and procedural rules, a federal Court in Argentina would have most likely issued a provisional injunction for transfer of the domain name to Complainant. It is the Panel´s belief that nothing would prevent an Argentine federal court to apply the same principles in case of a ".com" gTLD domain name registration, and even to find, with an argument similar to the one included in Article 24 b) of the Argentine Trademark Act No. 22.362, that the domain name registration is void and without any legal effect because the domain name registrant "knew or should know" that the well known and registered trademark belonged to a third party. Thus, a finding of bad faith registration and use could have been reached by a domestic court. Alternatively, Art. 953 of the Argentine Civil Code could have been applicable, in that it is generally understood that it prohibits unfair competition or, generally, bad faith.
These circumstances together lead the Panel to conclude that the Complainant has met its burden under Policy, Paragraph 4(a)(iii), in that the domain name is being used in bad faith.
The Panel has found that the domain name <fravega.com> is identical or at least confusingly similar to the FRAVEGA trademarks of the Complainant, and that the Respondent has no rights to, or legitimate interests in said domain name. The Panel has further found that the domain name has been registered in bad faith, and that it is being used in bad faith.
Therefore, pursuant to Policy, Paragraph 4(i), and Rules, Paragraph 15, the Administrative Panel requires that the registration of the domain name <fravega.com> be transferred to the Complainant FRAVEGA S.A.
Roberto A. Bianchi
Dated: December 6, 2000