WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NUTREXPA, S.A. v. Juan Silher
Case No. D2000-1386
1. The Parties
The Complainant is NUTREXPA, S.A., a company sited in Barcelona, Spain, with its legal Head Office in Calle Lepanto, 410-414, Barcelona Ė 08025, Spain (hereinafter, the Complainant). The Respondent is Mr. Juan SILHER, domiciled in Avda. San Luis, 146, Madrid, Spain (hereinafter, the Respondent).
2. Domain Name and Registrar
The domain name at issue is "colacao.net". The Registrar is Network Solutions, Inc. (hereinafter, the Registrar) with domicile in 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (hereinafter, the Center) received the Complaint of the Complainant by e-mail on October 13 and in hardcopy on October 16, 2000.
The Complainant made the required fee payment.
On October 18, 2000, the Center sent the corresponding request to the Registrar for the verification of the particulars of the challenged domain name, which was answered on October 29, 2000. The Registrar confirmed that the domain name in dispute had been registered through the Registrar, as well as the current registration of the domain name in favour of the Respondent.
The Registrar also confirmed that the Network Solutions 5.0 Service Agreement is in effect.
The Registrar finally stated that the domain name is on "hold" status.
After verifying that the Complaint meets with the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (hereinafter, the Policy), the Rules and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, "the Rules" and "the Supplemental Rules" respectively), the Center sent the Respondent a notification under Paragraph 2 (a) of the Rules together with copies of the Complaint on October 31, 2000.
The Respondent did not answer the Complaint and accordingly the Center sent the parties the Notification of the Respondentís Default on November 22, 2000.
On December 6, 2000, after receiving his completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed Mr. Jose Carlos Erdozain as the single member of the Administrative Panel (hereinafter, the Panelist). At the same date, the Center notified both the Complainant and the Respondent of the appointment of the Panelist.
The date scheduled for the issuance of the Panelís decision is December 19, 2000.
The language of the proceeding is English.
4. Factual Background
The trademark upon which the Complaint is based is COLACAO. The Complaint is the owner of various trademarks which have been registered in several countries of the world from 1970 up to 1996. These trademark registrations are proved by attaching certificates of the relevant national bodies in charge of the registration of industrial property rights. Specifically, the Complainant proves to have registered as trademark COLACAO in Spain, Cameroon, Mexico, Peru, Iran, India, Abu-Dhabi, USA, Chile, Canada, Brazil, Argentina, Saudi Arabia and before the WIPO.
These certificates are attached as Annexes 3 and 5.
All of these trademarks have been registered either in Class 30, Class 29, Class 32 or in Class 33.
The above constitutes evidence that the Complainantís trademark is a both national and international well-known trademark associated with a specific cocoa beverage or product.
Likewise, the Complainant is not only registrant of the domain name "colacao.org", but also appears as registrant of the domain name "colacao.es", as it is proved in Annex 4, 6 and 7 of the Complaint.
5. Partiesí Contentions
5.1 Complainant contends that:
a) The domain name <colacao.net> is identical and therefore confusingly similar to the trademark "COLACAO" which is registered in favour of the Complainant.
b) The Respondent does not have any right or legitimate interest in the domain name at issue due to the following:
i) The Respondent has neither used nor made serious or demonstrable preparations to use the domain name "colacao.net" in connection with a bona fide offering of goods or services.
ii) The Respondent has not been known by the domain name nor by any other related name to such a domain name.
iii) The absence of any commercial activity of the Respondent connected with the name COLACAO.
c) The domain name <colacao.net> has been registered and is being used in bad faith, due to:
i) The notorious and well-known character of the trademark "COLACAO" in Spain and the fact that the Respondent is Spaniard.
ii) The lack of any content within the Web Site corresponding to the domain name at issue, which prevents the Claimant from making legitimate use of such a domain name.
5.2. Respondent did not answer to the Complaint
Duly notified of the Complaint, the Respondent did not answer it.
6. Discussion and Findings
The Policy sets forth in Paragraph 4 (a) the cumulative elements that the Complainant shall prove in order to succeed in an administrative proceeding for abusive domain name registration and use. I shall examine each one of these elements in the following items:
"4.a.(i) Identity or Confusing Similarity"
The generic TLD ".net" cannot be taken into consideration in the present comparison. As it has been clearly stated in The Forward Association, Inc., v. Enterprises Unlimited (NAF case FA0008000095491, October 3, 2000):
"It should be noted that when a trademark is composed in whole or in part of a domain name, neither the beginning of the URL, nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address".
On the other hand, there is a significant difference in using the name "COLA" and "CAO" as one or as two separate words. On the contrary, the name "COLA-CAO" only becomes distinctive when it is used as a single word, since otherwise the word "COLA-CAO", used as two different words, loses its intrinsecal capacity of distinctiveness in the market.
On the grounds of the above-mentioned premises, it is beyond question that the trademark "COLACAO", duly registered by the Complainant, is identical to the domain name <colacao.net>.
In conclusion, the requirement of Paragraph 4.a.(i) is met.
"4.a.(ii) Absence of Respondent Rights or Legitimate Interest in the Domain Name COLACAO.NET"
The domain name at issue does not coincide with the whole or either part of the Respondentís name.
In addition, although the Respondent did have the chance to, the Respondent did not answer the Complaint. Accordingly, the Respondent did miss the opportunity to submit any evidence of legitimate interest or right in the domain name <colacao.net>, if there were any. In other words, if having any legitimate interest or right in the words forming the domain name <colacao.net>, the Respondent should have had an active disposition in order to defend such interest or right. Since this is not the case and the Complainant has proved more than sufficiently that it has registered the trademark "COLACAO" in different countries of the world, the Panelist must conclude that the Respondent has not any legitimate interest in the domain name <colacao.net>.
On the other hand, in order to declare that the Respondent has no legitimate interest or right whatsoever in the domain name at issue, it would not even be necessary to emphasize the subjective purposes of the Respondent about serious plans to undertake commercial activities through the Web Site corresponding to the domain name <colacao.net> . Once the Complainant has proved sufficiently and reasonably to be owner of the trademark rights "COLACAO", it is the Respondentís burden to submit any evidence of its interest or right, if any.
Finally, it should be stressed that the Complainant clearly states that the Respondent is not duly authorised, on the grounds of a licence, agreement or any other sort of right or entitlement, to fairly use the name "COLACAO".
Therefore, the requirement of Paragraph 4.a.(ii) is met.
"4.a.(iii) Respondentís Registration and Use of the Domain Name in Bad Faith"
As to the bad faith requirement, the Panelist must firstly take into consideration that the Complainant holds several trademark registrations as it has been proved in Annexes 3 and 5 of the Complaint.
Due to the fact of the above-mentioned registrations, the notorious and well-known name of the Complainantís trademarks, not only along the Spanish market, but also worldwide, and also since the Respondent is Spaniard, it is inconceivable that the Respondent did not know the name or trademarks "COLACAO".
As a result, the Panelist must come to the logical conclusion that the Respondent was completely aware that the registration of the domain name <colacao.net>, on which the Respondent does not have any right or interest, was something deliberate that caused a damage to and collides with the rights and legitimate interests of the Complainant.
In the Complainantís opinion, according to previous decisions of the Center, which are quoted in the Complaint (see Decisions D2000-0222 and D2000-0239, inter alia), the use in bad faith of the Domain Name may be declared even if it has not been used at all, nor there are serious purposes thereto.
Accordingly, the Panelist does agree with the argument that the Registrant is also using the domain name in bad faith by just using it in a passive way, that is, by not including any contents whatsoever within the Web Site corresponding to the domain name at issue, since this sort of use eventually prevents the Complainant from making a legitimate use of it.
Therefore, the domain name <colacao.net>" was registered and used in bad faith.
The Complainant has proved that the domain name is identical to its trademark, that the Respondent has no rights or legitimate interest in the domain name at issue, and that the Respondent did register and use the domain name in bad faith. Therefore, according to Paragraphs 4.(i) of the Policy and 15 of the Rules, the Panel requires the registration of the domain name <colacao.net> to be transferred to the Complainant.
Jose Carlos Erdozain
Dated: December 19, 2000