WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sara Lee Southern Europe, S.L. v. S.L. Protección de Dominios
Case No. D2000-1690
1. The Parties
1.1. The Complainant is Sara Lee Southern Europe, S.L. incorporated in Mollet del Vallés, Barcelona, Spain.
1.2. The Respondent is S.L, PROTECCION DE DOMINIOS, Madrid, Spain.
2 The Domain Name and Registrar
2.1 The domain name subject-matter of this Complaint is <cafemarcilla.com>.
2.2 The Registrar of this domain name is Network Solutions, Inc of Herndon, Virginia, USA ("Registrar").
3 Procedural History
3.1 The Complainant submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") a Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, ("Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Rules"). The copy of the Complaint submitted by e-mail was received by the WIPO Center on December 5, 2000, and the hardcopy of the Complaint submitted by courier was received by the WIPO Center on December 6, 2000. An Acknowledgment of Receipt dated December 6, 2000, was sent by e-mail by the WIPO Center to the Complainant.
3.2 A Request for Registrar Verification was dispatched by the WIPO Center to the Registrar by e-mail on December 7, 2000. The Registrar responded by e-mail to the WIPO Center on December 12, 2000.
3.3 Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the WIPO Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent on December 15, 2000.
3.4 No Response was filed by the Respondent. The WIPO Center proceeded to notify the respondent default on January 4, 2001.
3.5 Subsequent to the notification of respondent default, and in accordance with the request in the Complaint, the WIPO Center proceeded to appoint an Administrative Panel composed of a single Panelist, inviting Mario A. Sol Muntañola to act as such on January 17, 2001. Therefrom, a decision shall be provided by this Administrative Panel, absent exceptional circumstances, by January 30, 2001.
3.6 The case before this Administrative Panel is being conducted in the English language in accordance with the registration agreement. Therefore the language of the decision shall be in English.
4 Factual Background
4.1 The Complainant, "Sara Lee Southern Europe, S.L.", is registered owner of various trademarks and trademark applications in Spain, consisting of or incorporating the words CAFE MARCILLA. This trademark has been extensively used in Spain by the Complainant in respect of coffee for many years.
4.2 The Respondent owns the domain name <cafemarcilla.com>, registered through Network Solutions, Inc.
5 Parties’ Contentions
5.1. The Complaint
5.1.1 Among other trademarks the Complainant contends to own 13 trademarks with the word MARCILLA, MARCILLA COFFEE O CAFE MARCILLA, all of them in class 30 of the International Nomenclator and the oldest with a priority since 1925.
5.1.2 The Complainant contends that the domain name is nearly identical to the Complainant’s trademark. The Respondent, by including the word "café" in the domain name is making a clear reference to coffee products.
5.1.3 The Complainant contends that the Respondent being of Spanish Nationality, he is from the same country where the Complainant is using his trademark MARCILLA.
5.1.4 The Complainant contends that the Respondent does not have a legitimate interest and seems to have registered the domain name only for selling, letting or transferring it to the trademark owner or to a competitor for a considerable value.
5.1.5 Thus, the purpose of the Respondent by registering the domain name was to attract Internet users to its website or other on-line location for commercial gain, and therefore, impeding the use of the disputed domain by the Complainant.
5.2. The Response
The Respondent did not answer the Complaint within the deadline nor afterwards.
6. Discussion and Findings
6.1 Applicable rules
According to Paragraph 15 a) of the Rules, the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Due to both parties being located in Spain, the principles and laws of the Spanish State shall be taken into account (WIPO Cases D2000-0001 Robert Ellenbogen v. Mike Pearson, D2000-0239 J. García Carrión, S.A. v. Maria José Catalán Frias or D2000-0691 Seur, S.A. v. Antonio Llanos).
6.2 Fulfilment of the requirements according to the Policy, Paragraph 4 a) of the Policy:
6.2.1 Domain name identical or confusingly similar to the trademark
a) The identity between the trademarks of the Complainant and the disputed domain name is confusingly similar, generating a clear risk of confusion.
b) The trademarks of the Complainant are very well known in the Spanish market sector where it undertakes its activity.
6.2.2 Respondent’s rights or legitimate interests in the Domain Name
a) This panel has visited the site "www.cafemarcilla.com" and found it does not exist. Therefore, the domain name is not in use.
b) The Respondent has not justified any legitimate interest on the disputed domain nor fair use of it.
c) The Respondent has not been known before for the use of such name, and has no authorisation or license from the legitimate rights holder of such denomination.
6.2.3 Domain Name registered and used in bad faith
a) To any person residing in Spain or undertaking any business there, it is clear that the disputed domain name can only refer to the Complainant. The registration of this domain name by someone with no connection with the Complainant, suggests opportunistic bad faith if no legitimate interest is clearly proven (WIPO Case D2000-0163, Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.).
b) The Respondent has not justified registering such domain name similar to well-known trademarks of Complainant. Therefore, the Panel concludes that the domain name has been registered and is being used to create likelihood of confusion with Complainant’s trademarks as to the source, sponsorship affiliation, or endorsement of the registrant’s web site or location or of a product or service on his web site or location. (WIPO Cases D2000-0049 Tata sons v. The Advanced Information Technology Association and D2000-0137 Expedia v. European Travel Network).
c) By registering the domain name, the Respondent prevents the Complainant from reflecting its trademark in the corresponding generic top level domain, impedes it to fully position itself on Internet, blocks its possibility of a complete development on the net disturbing its activity, puts its trademarks in serious risk of dilution, generates competitive advantages for a domain name that will benefit from the investments and projection of the MARCILLA trademarks in prejudice of their holder, and confuses other companies and consumers.
In view of the above circumstances and facts, the Panel decides that the domain name <cafemarcilla.com> registered by the Respondent is confusingly similar to the Complainant's trademarks, that the Respondent has no right or legitimate interest in respect of the domain name, and that the Respondent's domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name "cafemarcilla.com" be transferred to Complainant.
Mario A. Sol Muntañola
Dated: January 30, 2001